Kinon Surface Design, Inc. v. dongboyin / changzhouyikeruisizhuangs
Claim Number: FA1602001659612
Complainant is Kinon Surface Design, Inc. (“Complainant”), represented by Joel B. Rothman of Schneider Rothman Intellectual Property Law Group, PLLC, Florida, USA. Respondent is dongboyin / changzhouyikeruisizhuangs (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinons.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2016; the Forum received payment on February 4, 2016. The Complaint was received in both Chinese and English.
On February 5, 2016, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <kinons.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 February 12, 2016, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of March 3, 2016 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@kinons.com. Also on February 12, 2016, the Chinese 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the KINON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,409,441, registered on Nov. 28, 2000). Complainant uses the KINON mark in connection with its business manufacturing, distributing, and selling decorative resin lacquer surfaces for ceilings, desks, wall panels, and countertops. Respondent’s <kinons.com> is confusingly similar to the KINON mark because it entirely contains the mark, while adding an “s” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in respect of the <kinons.com> domain name per Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii) because it is neither indicated in the WHOIS to be so, nor has Respondent submitted information to the record which would support rights under this prong. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the resolving website offers resin lacquer surfaces in competition with those of Complainant.
Respondent registered and uses the <kinons.com> domain name in bad faith because its competitive offerings constitute a disruption of Complainant’s business as well as a use intended to attract Internet users seeking Complainant in order to profit commercially. Further, Respondent had actual knowledge of Complainant’s rights in the KINON mark evidenced by Respondent having taken imagery and specification sheets directly from Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of manufacturing, distributing, and selling decorative resin lacquer surfaces.
2. Complainant has rights in the KINON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,409,441, registered on Nov. 28, 2000).
3. Respondent registered the disputed domain name on August 21, 2014.
4. The website to which the disputed domain name resolves offers resin lacquer surfaces in competition with those of Complainant.
LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the KINON mark in connection with its business manufacturing, distributing, and selling decorative resin lacquer surfaces for ceilings, desks, wall panels, and countertops. Complainant alleges it has rights in the KINON mark through its registration with the USPTO (e.g., Reg. No. 2,409,441, registered on Nov. 28, 2000). Complainant has provided documentation of this registration in Exhibit 4a. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i) regardless of whether Respondent operates in the country of registration. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the KINON mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <kinons.com> domain name is identical or confusingly similar to Complainant’s KINON mark. Complainant maintains that Respondent’s <kinons.com> domain name is confusingly similar to the KINON mark because it entirely contains the mark, while adding an “s” and the gTLD “.com.” Previous panels have held that the addition of an “s” and a gTLD to a mark is insufficient in overcoming a finding of confusing similarity. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <kinons.com> domain name is confusingly similar to Complainant’s KINON mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KINON mark and to use it in its domain name and has merely added the letter “s” which does not detract from the confusing similarity that is clearly;
(b) Respondent registered the disputed domain name on August 21, 2014;
(c) The domain name resolves to a website that offers resin lacquer surfaces in competition with those of Complainant.
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant alleges that Respondent is not commonly known by the <kinons.com> domain name because the record is devoid of any evidence to that end. The Panel notes that the WHOIS information lists “dongboyin / changzhouyikeruisizhuangs” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <kinons.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent offers resin surface products that compete with those of Complainant. Complainant has provided a side by side comparison of its product and respondent’s, in Exhibit 8, in order to demonstrate this competitive use. Past panels have found competing use to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). As the Panel finds Respondent uses the <kinons.com> domain name to compete with Complainant, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent uses the <kinons.com> domain name for the purpose of disrupting Complainant’s business operations because Respondent uses the resolving website to offer resin surface products in competition with Complainant. The Panel notes the side by side comparison Complainant provided in Exhibit 8. Past panels have found similar competitive use to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). As the Panel finds such use here, the Panel finds that Respondent has registered and used the <kinons.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant alleges that Respondent uses its resolving website to take advantage of potentially confused Internet users and thereby profit by using the <kinons.com> domain name in the disruptive manner described above. Complainant urges that Respondent’s intent is to lure Internet users who seek Complainant to Respondent’s website so that Respondent may profit by selling them Respondent’s own similar products. Complainant has provided screenshots of Respondent’s website, in Exhibits 6 and 8, in order to demonstrate this use. Past panels have found similar circumstances sufficient to show bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). As the Panel finds such behavior by Respondent here, the Panel finds that Respondent registered and uses the <kinons.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the KINON mark. Complainant argues that Respondent's use of Complainant’s product imagery and specification sheets indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <kinons.com> domain name using the KINON mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinons.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 11, 2016
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