Karen Koehler v. Hiroshi Ishiura / Lifestyle Design Inc.
Claim Number: FA1705001730673
Complainant is Karen Koehler (“Complainant”), represented by Syed Abedi of Seed Intellectual Property Law Group PLLC, Washington, U.S.A. Respondent is Hiroshi Ishiura / Lifestyle Design Inc. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karenkoehlerblog.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2017; the Forum received payment on May 8, 2017.
On May 9, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <karenkoehlerblog.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2017 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@karenkoehlerblog.com. Also on May 9, 2017, 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.
Respondent did not submit a formal response, but he did send some e-mails to the Forum, see below. Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that she is a nationally renowned trial attorney that has used the KAREN KOEHLER mark for blogging and publishing electronic media services dating back until at least 2010. Complainant has gained widespread media attention for her high profile legal work, has authored books, articles and published DVDs on legal topics. Complainant is a sought-after educator whose legal skills have been recognized in several publications. Complainant recently filed for a trademark application for the KAREN KOEHLER mark. Given Complainant’s notoriety, longstanding use of the KAREN KOEHLER mark in conjunction with her services and application for a trademark, Complainant has established rights in the KAREN KOEHLER mark. Complainant cites UDRP precedents to support her position.
According to Complainant, the disputed domain name is confusingly similar to her mark because the domain name incorporates the mark in its entirety and merely adds the term “blog”, which is descriptive of Complainant’s activities associated with the mark, and a generic top-level domain (“gTLD”), “.com”. Complainant cites UDRP precedents to support her position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is using the domain, which is confusingly similar to Complainant’s mark, to divert Internet users to a pornographic website, which tarnishes Complainant’s reputation by confusing users that the website is affiliated with Complainant. Complainant cites UDRP precedents to support her position.
Further, says Complainant, Respondent has registered and uses the disputed domain name in bad faith. Respondent attempts to capitalize on Complainant’s notoriety for commercial gain. Furthermore, Respondent is using the disputed domain name to link to a website containing pornographic material. Complainant cites UDRP precedents to support her position.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. His e-mails to the Forum do not contain any information relevant to the present proceedings.
Complainant owns the mark KAREN KOEHLER and uses it to market legal services.
Complainant’s rights in her mark date back to 2010.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use her mark.
The disputed domain name resolves to a pornographic web site.
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 (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.”).
Complainant alleges common law rights in the KAREN KOEHLER trademark. Complainants supports this contention by reference to her use of the mark for blogging and publishing electronic media services dating back until at least 2010, widespread media attention for her high profile legal work, her publications as KAREN KOEHLER, and her work as a highly sought-after educator. She provides evidence to support her contentions. A complainant need not register a trademark with a government authority in order to establish her rights in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
A mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”) . Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark. A personal name can create trademark rights for the purposes of the Policy, see Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO, May 29, 2000); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”). The Panel finds that Complainant has used the KAREN KOEHLER mark in connection with her services for a sufficient amount of time and has generated significant good will during that time. Consequently, the Panel finds that Complainant has established common-law rights in the KAREN KOEHLER mark.
The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and merely adds the descriptive term “blog,” along with the gTLD “.com”. The addition of the descriptive term “blog” and “.com” are not sufficient to distinguish the disputed domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to the KAREN KOEHLER mark in the sense of Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use her mark. Respondent is not commonly known by the disputed domain name. When a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Ivan Wong” as the domain name registrant and therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host a pornographic website. Such use does not constitute a bona fide offering of goods or services or legitimate non-commercial fair use. See Paws, Inc. v. Zuccarini, FA 125368 (Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). Therefore the Panel finds that Respondent fails to provide a bona fide offering of goods or services or legitimate non-commercial fair use in the sense of the Policy.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to resolve to a pornographic website, and presumably obtains a commercial benefit from that website. This constitutes bad faith use by creating a likelihood for confusion as to the affiliation of the disputed domain name to commercially benefit from the fame or notoriety of the mark. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that in absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith). Thus the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark by hosting a pornographic website in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <karenkoehlerblog.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 1, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page