DECISION

 

The Aquarian Organization of Astrologers, Kansas City (AOA) v. Cindy McKeon / Cindy Mckean

Claim Number: FA1510001644490

PARTIES

Complainant is The Aquarian Organization of Astrologers, Kansas City (AOA) (“Complainant”), represented by Julia Purdy, Missouri, USA.  Respondent is Cindy McKeon / Cindy Mckean (“Respondent”), represented by Terence M. O’Malley, Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kansascityastrology.com> and <astrologykansascity.com>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dr. Katalin Szamosi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 29, 2015; the Forum received payment on October 29, 2015.

 

On November 3, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <kansascityastrology.com> and <astrologykansascity.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kansascityastrology.com, postmaster@astrologykansascity.com.  Also on November 4, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on November 23, 2015.

 

On November 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Katalin Szamosi as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant argues that Respondent’s <kansascityastrology.com> and <astrologykansascity.com> domain names are identical to Complainant’s mark, in support of this Complainant asserts that

·         Complainant has common law rights in the KANSAS CITY ASTROLOGY and ASTROLOGY KANSAS CITY marks;

·         Astrology Kansas City and Kansas City Astrology are registered with the State of Missouri as a fictitious business names; and

·         the domain names contain the entirety of the marks, less spaces, combined with the generic top-level domain (“gTLD”) “.com.”.

 

Complainant argues that Respondent has no rights and legitimate interests in the disputed domain names. In support of this Complainant asserts that

·         they are identical to Complainant’s registered business name;

·         <astrologykansascity.com> is rightfully owned by Complainant;, and

·          Respondent only has control over the domains because of a former association with Complainant.

 

Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that

·         Respondent used domain names in bad faith because Respondent acquired the domain names while associated with Complainant and refuses to return ownership to Complainant now that such association has ended.

 

 

B. Respondent

 

Respondent argues that Complainant lacks rights in the KANSAS CITY ASTROLOGY and ASTROLOGY KANSAS CITY marks because “Fictitious Names” do not confer rights.

 

Respondent allegesd that Complainant’s bylaws prohibit doing business under the marks as alternative names.

 

Respondent contendsed that the doman name regstrations predate the registration of the  fictitious business names.

 

Respondent allegsed that she uses the <kansascityastrology.com> domain name to operate a legitimate business that does not compete with Complainant

 

Respondent assertsed that she had previously been responsible for administration of the <astrologykansascity.com> domain name and has since ceased to perform these functions.

 

 

FINDINGS

 

Complainant has registered the fictitious names KANSAS CITY ASTROLOGY and ASTROLOGY KANSAS CITY with the State of Missouri on August 14, 2015.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Panel finds that Complainant lacks rights in the KANSAS CITY ASTROLOGY and ASTROLOGY KANSAS CITY marks because “Fictitious Names” do not confer rights. Respondent has provided information about “Fictitious Names” to indicate that such registrations neither grant rights nor protect such names from being used by other parties. The registration form for “Fictitious Names” (which was submitted by Respondent under Annex 1) expressly state the “This information is for the use of the public and gives no protection to the name being registered. There is no provision in this Chapter to keep another person or business entity from adopting and using the same name.”.

 

 

 

Furthermore, Panel notes that in order to have common law rights, a complainant must show that the mark has secondary meaning. However, Complainant did not submit any relevant evidence of secondary meaning such as longstanding continuous use.

 

Panel finds that Complainant has failed to establish rights in the KANSAS CITY ASTROLOGY and ASTROLOGY KANSAS CITY marks pursuant to Policy ¶ 4(a)(i).  See GLB Serviços Interactivos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (“[I]n the present case, there is insufficient evidence of a common law trademark even if common law trademarks are possible in a civil law country like Brazil.”); see also CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, although the respondent’s domain name <cyberimprints.com> was identical to the complainant’s incorporated business name, the complainant did not claim to hold any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was denied).

 

Since Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

 

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <kansascityastrology.com> and <astrologykansascity.com> domain names REMAIN WITH Respondent.

 

 

Dr. Katalin Szamosi, Panelist

Dated:  December 10, 2015