Nicole Mitchell / Kappa Epsilon Psi Military Sorority, Inc. v. Rochelle Wright / R Wright
Claim Number: FA1705001733575
Complainant is Nicole Mitchell / Kappa Epsilon Psi Military Sorority, Inc. (“Complainant”), represented by Nicole Mitchell, Michigan, USA. Respondent is Rochelle Wright / R Wright (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kappaepsilonpsi.org> and <kappaepsilonpsi.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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2017; the Forum received payment on May 30, 2017.
On May 31, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kappaepsilonpsi.org> and <kappaepsilonpsi.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@kappaepsilonpsi.org, and postmaster@kappaepsilonpsi.com. Also on June 7, 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.
A timely Response was received and determined to be complete on June 20, 2017.
On June 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1- Complainant, Nicole Mitchell / Kappa Epsilon Psi Military Sorority, Inc., is a sorority organization with headquarters based in Waterford, Michigan, USA, doing business as Kappa Epsilon Psi Military Sorority.
2- Complainant uses the κεψ (Kappa Epsilon Psi) mark to promote its goods and services.
3- Complainant has rights in the mark κεψ based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,488,144, registered Feb. 25, 2014).
4- Complainant has a pending application for KAPPA EPSILON PSI MILITARY SORORITY INC., US Serial Number 87143315 to protect “clothing, namely hats, scarves, gloves, shoes, belts”.
5- Respondent’s domain names are identical to KAPPA EPSILON PSI, a trademark in which Complainant argues to have rights to and the name of its organization, with the addition of the generic top-level-domain names (“gTLD”) “.org” and “.com.”
6- Respondent has no rights or legitimate interests in respect of the domain name. Complainant is doing business as Kappa Epsilon Psi Military Sorority, Incorporated and maintain the trademark for the Greek letters, Kappa Epsilon Psi.
7- Respondent’s uses of the domain names are non authorized uses and they are directly referencing Complaint’s name and trademark.
8- Domain names are being used in bad faith.
9- Respondent registered the disputed domain names utilizing a WHOIS privacy service.
10- Both disputed domain names resolve to the website of one of Complainant’s competitors.
11- Respondent offers the disputed domain names for sale in excess of out-of-pocket costs.
B. Respondent
1- Respondent contends its registration of <kappaepsilonpsi.org> and <kappaepsilonpsi.com> predates Complainant’s rights in the KAPPA EPSILON PSI mark. Domain names were acquired on September 2, 2015 and Complainant’s trademark was filed on August 18, 2016.
2- Respondent has not used the domain name to compete with Complainant.
3- Respondent has used the domain names to redirect Internet users to a legitimate URL which contains public information.
4- Respondent agrees to sell the domain names by negotiating a cost that is acceptable to both parties.
Complainant does business as Kappa Epsilon Psi Military Sorority, Incorporated since 2011 and has rights in the κεψ mark consists of Greek letters “KAPPA” “EPSILON” and “PSI”).
Respondent acquired the domain names <kappaepsilonpsi.org> and <kappaepsilonpsi.com> when she was still a member of Kappa Epsilon Psi Military Sorority. The domain names currently resolve to the website of one of Complainant’s competitors.
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.
Complainant claims rights in the κεψ mark based upon registration with the USPTO (Reg. No. 4,488,144, registered Feb. 25, 2014). The trademark is in the name of one of Kappa Epsilon Psi Military Sorority, Inc.’s founders. See Compl., at Attached Annex (registration indicates under “Description of Mark” that “The mark consists of Greek letters “KAPPA” “EPSILON” and “PSI”). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in said mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
KAPPA EPSILON PSI is also the name of Complainant’s organization which was incorporated in 2011. Complainant is doing business as Kappa Epsilon Psi Military Sorority, Incorporated since then.
In addition, Complainant has a pending application for KAPPA EPSILON PSI MILITARY SORORITY INC., US Serial Number 87143315 in which Complaint declares that the first use date is 2011.
The Panel finds that κεψ mark registration consists of Greek letters “KAPPA” “EPSILON” and “PSI” which are identical to the name of Complainant’s organization incorporated in 2011. Therefore, this Panel finds that Complainant has rights in the κεψ mark per Policy ¶ 4(a)(i) and in KAPPA EPSILON PSI based on the use of it since 2011.
Respondent’s domain names are identical as each contains the name of Complainant’s organization and its mark in its entirety with the addition of the gTLDs “.org” and “.com”. Sole addition of a gTLD to a complainant’s mark is insufficient to differentiate the disputed domain name from the mark. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”). When confusing similarity/identicality is asserted in foreign characters which, when transliterated, comprise the elements of a domain name, Policy ¶ 4(a)(i) has favored trademark holders. See The Lincoln Electric Company v. Victor Beschapochniy / TOVARISTVO Z OBMEZhENOJu ViDPOViDAL'NiSTJu TORGOVIJ DiM NiSA, FA1702337 (Forum Dec. 14, 2016) (“The domain name consists of the Cyrillic transliteration of LINCOLN ELECTRIC. This constitutes confusing similarity for UDRP purposes.”); see also See Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov, D2011-0100 (WIPO Apr. 8, 2011) (Holding <порше.com> as a Cyrillic translation of the PORSCHE mark and confusingly similar. The “Panel has inferred that an ordinary Internet user reading the domain name in Cyrillic, would be likely to associate it with the Complainant’s mark. The circumstances of this case therefore indicate that Internet users would be confused about the relationship between the disputed domain name and the Complainant’s mark. Ultimately, the focus of paragraph 4(a)(i) of the Policy relates to confusion over the association of the disputed domain name with the Complainant’s mark.”).
This Panel also finds that while the domain names constitute English transliterations of the Greek κεψ mark, and they are identical to name of Complainant’s organization, <kappaepsilonpsi.org> and <kappaepsilonpsi.com> are identical to the κεψ mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent has no rights or legitimate interests with respect to the domain names, and that Complainant is doing business as Kappa Epsilon Psi Military Sorority, Incorporated.
Complainant argues that the domain names have been privately registered. However, there is no evidence supporting this since the WHOIS’ information concerning <kappaepsilonpsi.org> and <kappaepsilonpsi.com> shows that the owner is Rochelle Wright. Therefore, this Panel finds that Respondent is not commonly known the disputed domain names.
See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (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); see also 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).
In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
In addition, Complainant argues the domain names currently resolve to the website Alpha Gamma Xi Military Sorority, which is Complainant’s competitor military organization, and that use would not be in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
This Panel finds that use of a disputed domain name to offer competing services is not emblematic of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
Thus, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain names.
Complainant offered Respondent $500 per domain name but contends Respondent countered with a $5,000 request. Even though there is no evidence about the offer, Respondent admits to be ready to sell the domain names for a price that Respondent considers a fair one.
The Panel finds that Respondent intended for such an offer when it registered the disputed domain names and finds bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000).
Complainant filed evidence about the Respondent’s resignation from Kappa Epsilon Psi Militarity Sorority, Inc. which proves Rochelle Wright was a member. This Panel finds the registration of <kappaepsilonpsi.org> and <kappaepsilonpsi.com> on her behalf when she was a member and the current redirection to a competitor’s website shows bad faith. See The Garrett Group, LLC v. Victor Frankl, FA1307001507941 (Nat. Arb. Forum Aug. 14, 2013) (Respondent was in fact the person serving as the monitor for Complainant’s website until the employer/employee relationship came to an end. This Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
This Panel finds bad faith under Policy ¶ 4(b)(i and iv) and that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kappaepsilonpsi.org> and <kappaepsilonpsi.com> domain names be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: July 7, 2017
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