John S. and James L. Knight Foundation, Inc. d/b/a Knight Foundation a/k/a KF v. Matthias Felger
Claim Number: FA1709001749586
Complainant is John S. and James L. Knight Foundation, Inc. d/b/a Knight Foundation a/k/a KF (“Complainant”), represented by Glenn Burhans of Stearns Weaver Miller, Florida, USA. Respondent is Matthias Felger (“Respondent”), represented by Peter Müller, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kf.org>, registered with PSI-USA, Inc. dba Domain Robot.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Paul
M. DeCicco, Esq.
Honorable John J. Upchurch (Ret.)
The Honourable Neil Anthony Brown QC (Presiding Panelist) as Panelists.
Complainant submitted a Complaint to the Forum electronically on September 18, 2017; the Forum received payment on September 18, 2017.
On September 21, 2017, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <kf.org> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 October 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@kf.org. Also on October 2, 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 October 20, 2017.
On
October 27, 2017, pursuant to Complainant's request to have the dispute
decided by a three-member Panel, the Forum
appointed Paul M. DeCicco , Esq., Honorable John J. Upchurch (Ret.)
and The Honourable Neil Anthony Brown QC (Presiding Panelist) as Panelists
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, John S. and James L. Knight Foundation, Inc., is a non-profit foundation devoted to philanthropic work which includes providing and operating websites containing educational material, conducting educational seminars, investing in start-up mission-related media companies, and providing those companies with services necessary to implement Complainant-supported projects. In connection with this business, Complainant uses the KNIGHT FOUNDATION mark—abbreviated as KF—to operate and provide its services. Complainant has rights in the KNIGHT FOUNDATION mark based upon registration with the United States Patent and Trademark Office (“USPTO”), but asserts common law rights in the KF mark for the purposes of this Complaint. Respondent’s <kf.org> is identical to Complainant’s KF mark, as the domain name consists entirely of the mark, and merely adds the generic top-level domain (“gTLD”) “.org.” Alternatively, the disputed domain name is confusingly similar to Complainant’s KNIGHT FOUNDATION mark, as the domain name consists of the common abbreviation for the mark (KF) and the “.org” gTLD.
Respondent has no rights or legitimate interests in the <kf.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the KF mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name is being passively held.
Respondent has registered and used the <kf.org> domain name in bad faith. Respondent has made an offer of sale to Complainant far in excess of out-of-pocket costs, demonstrating Policy ¶ 4(b)(i) bad faith.
B. Respondent
Respondent made the following contentions
Respondent, Matthias Felger, registered the <kf.org> domain name on September 2, 1997 to reflect its personal nickname. Respondent contests Complainant’s assertion of common law rights in the KF mark. The advertisements and promotional material provided as Exhibit 3 to the Complaint postdate Respondent’s registration of <kf.org> by years. Similarly, the rest of the evidence Complainant provided as evidence of common law rights in the KF mark are undated or postdate Respondent’s registration. Further, Respondent denies that Complainant is “well-known and favorably known throughout the world,” as Complainant—at its own website, <knightfoundation.org>—refers to itself as “a national foundation with strong local roots.”
Respondent has rights or legitimate interests in the <kf.org> domain name. Respondent is commonly known by the disputed domain name, having been known by the nickname “KF” to friends and family for years. See Resp., Attached Annexes 2, 5. Respondent has used the domain name for legitimate private purposes since registration of the name in 1997. For example, the domain name has been used to host a private blog, and to provide an email and calendar server. Furthermore, the registration and use of short domain names can give rise to a presumption of rights or legitimate interests due to their inherent market value. Finally, Complainant has acknowledged Respondent’s rights and legitimate interests in the domain name through its offer to purchase the name for $20,000.
Respondent did not acquire the <kf.org> domain name for the purpose of selling it, and merely responded to Complainant’s inquiry with the offer to sell for $150,000. Respondent refused Complainant’s offer to purchase the name for $20,000. Respondent claims it did not and could not have known of Complainant in September of 1997 when it registered the <kf.org> domain name, and therefore did not register the name in bad faith.
The Doctrine of Laches should apply to this case. Complainant waited 20 years to complain about Respondent’s use of the <kf.org> domain name. Complainant has offered no explanation for the delay, and the fact that Complainant waited so long indicates that there has been no business disruption or confusion suffered by Complainant as a result of Respondent’s registration of the name.
Further, Complainant has engaged in Reverse Domain Name Hijacking, as Respondent’s use of the domain name cannot—under any fair interpretation of the facts—have constituted bad faith. Complainant’s own evidence indicates Complainant made an offer to purchase the <kf.org> domain name then deliberately postponed and delayed the answer to the counter-offer. It is clear Complainant filed this frivolous case as a “Plan B” in case it could not purchase the domain name on its own terms.
1. Complainant is a non-profit foundation devoted to philanthropic work which includes providing and operating websites containing educational material, conducting educational seminars, investing in start-up mission-related media companies, and providing those companies with services necessary to implement Complainant-supported projects.
2. Complainant has rights in the KNIGHT FOUNDATION mark based upon registration with the United States Patent and Trademark Office (“USPTO”), but fails to demonstrate that it has any rights in the KF mark for the purposes of this Complaint.
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.
The first issue that arises is whether Complainant has a trademark or service mark on which it may rely. Complainant submits that it has two trademarks that are relevant in this proceeding. The first is a trademark for KNIGHT FOUNDATION which Complainant submits was registered in 2015 with the United States Patent and Trademark Office (“USPTO”) in various specified classes. Beyond that limited statement, however, Complainant has provided none of the usual and desirable evidence of its registered trademark such as its registered number and its date of registration and in particular it has not adduced in evidence a copy of the registration certificate of the trademark which is the proper evidence that should be adduced to prove a trademark.
As Complainant has raised the issue of the registration of the trademark with the USPTO and as the USPTO is a public record, the Panel has deemed it appropriate to examine the record. Having done so, the PANEL notes that Complainant has several registered trademarks for KNIGHT FOUNDATION which are as follows:
(a) trademark for KNIGHT FOUNDATION , Registered number 4811091, registered on September 15, 2015;
(b) trademark for KNIGHT FOUNDATION, registered number 4734438, registered on May 12, 2015, although not in the classes specified in the Complaint;
(c) trademark for KNIGHT FOUNDATION, registered number 4811090, registered on September 15, 2015, although not in the classes specified in the Complaint
(d) Trademark for KNIGHT FOUNDATION, registered number 4819270, registered on September 22, 2015, although not in the classes specified in the Complaint.
The Panel is therefore in some doubt as to the trademark on which Complainant is relying. It appears, however, that Complainant is submitting that it relies on a registered trademark for KNIGHT FOUNDATION and on the basis of the search made by the Panel, the Panel finds that Complainant is the owner of the several registered trademarks referred to above which are to that effect ( “ the KNIGHT FOUNDATION trademarks”).
However, Complainant clearly bases its case more on a common law or unregistered trademark for KF which it maintains it has established progressively “at least” since 1993. It will be recalled that the disputed domain name was registered on September 2, 1997.
Complainant’s case for the unregistered or common law trademark is that KF has been its “source identifier” since 1993 and that this came about because the expression acquired a secondary meaning among the relevant audience or market, namely “a source identifier in connection with its philanthropic services…”.
In support of its case, Complainant has adduced various pieces of evidence. These items are, first, a sheet of Complainant’s logos that have been used over the years designed to show the use that it has made of the letters KF. It is true that the document shows that fact and that Complainant has used the two letters as a logo, from the early days and until 2000, with a dot or period between the two letters and from about 2000 without it. The most prominent feature of this sheet of logos, however, is that KF is used in conjunction with and as part of the expression “K F Knight Foundation”. It is not evidence to show that KF has itself been used in such a way as to have the effect that it promotes Complainant’s goods and services. Indeed, the Panel has examined the sheet of logos closely and cannot find a single instance where the two letters have appeared alone[1]. It is certainly not true that the logos identify the letters KF by themselves as a sign or symbol of Complainant when standing alone.
The sheet of logos is accompanied by the front cover of several Annual Reports of Complainant. From 1993 until 1999, the report uses the letters KF, again with the period or dot between the two letters, but always in conjunction with the full name of the Foundation. In the year 2000 the same letters appear without the period or dot. In that year, the letters KF appear by themselves, but the top of the page carries the inscription John S. Knight and James L Knight Foundation, although it appears that in this year there is an attempt to separate the full name of the foundation from the letters.
Complainant also adduces some promotional material used in some of its programs, but this is of limited evidentiary value as it seems to emanate only from 2016 and in any event, as with the logos, it is invariably marked KF Knight Foundation.
There is no doubt at all, as Complainant submits, that it is sufficient to rely on an unregistered or common law trademark in UDRP proceedings. See Oculus VR, LLC v. Ivan Smirnov, FA1506001625898 (Forum July 27, 2015) (holding,
“A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a
Complainant may rely on common law or unregistered trademarks that it can make out.”). It is also clear that in many such proceedings not only are complainants obliged to rely on such trademarks, but they have been able to prove them by evidence showing that in the mind of the relevant audience the alleged trademark has taken on a secondary meaning that points to the complainant as the provider of the goods or services in question. That principle and an illustration of where, in the present case, Complainant’s evidence falls short are explained in one of the previous decisions in this field cited by Complainant itself. In Eskimos, Inc. v. William Phillips d/b/a ezcoldcash.com, FA0203000105950 (Forum, May 13, 2002 (finding the complainant established common law rights where the mark was “used on company letterhead, in advertisements, business cards, community service promotions, and promotional materials, including pens, calculators, calendars, work gloves, thermometers, and jackets.”). As Complainant asserts a common law trademark in KF and Respondent disputes this , the role of the Panel is to decide on the evidence whether Complainant has proved its point. Regrettably for Complainant there is no evidence at all of any company letterheads, in advertisements, business cards, community service promotions, and promotional materials, including pens, calculators, calendars, work gloves, thermometers, and jackets or anything else that shows the use of the expression KF standing alone .
Nor is there any evidence showing how the relevant market, which for present purposes the Panel will take to be the philanthropic sector and those sectors likely to apply for grants from Complainant, have come to accept KF as indicating Complainant, either exclusively or substantially. Normally, such evidence is given by means of sales figures, unsolicited media coverage and promotional efforts, using the same expression that is claimed as the trademark.
See also, Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). However, in the present case, the Panel finds that there is no such evidence and certainly no such evidence that shows on the balance of probabilities that KF is accepted and used anywhere as indicating Complainant as the source of its goods and services.
To this, Complainant in effect replies by pointing to the fame of the letters KF and it adduces several pieces of evidence to support its contention. The Panel has taken considerable time to examine the specific searches relied on by Complainant and finds them singularly unpersuasive. It is not necessary to dissect them in detail, but one illustration to show the Panel’s assessment of this evidence is the search result obtained from a Google search done by Complainant designed apparently to show how KF is widely understood to refer to the Knight Foundation, as the search produces results referring to Complainant and not to others. But it seems to the Panel to be of little use to search the expressions “ “knight foundation” “kf” “, which appears to have been done, as it will obviously produce the results obtained. The test should be how the market sees KF itself, standing alone, as that is the trademark claimed by Complainant, and when the same search is done of those letters together, it produces results that make no mention of Complainant but many references to parties other than Complainant. The Panel is therefore not satisfied that any of the evidence adduced helps Complainant to prove its case for a common law trademark.
Moreover, the burden on Complainant is substantial, as UDRP panels assessing this issue have taken the view that if the claimed trademark is an acronym, secondary meaning must be established in the acronym itself. See Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM, D2002-0707 (WIPO Oct. 1, 2002) (“As long as there is no registration of the letters KNSF as a company name or trademark, and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has been generally known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.”) That is the essential problem faced by Complainant in this case, namely that it has started in comparatively recent times, and certainly after the domain name was registered, to adopt an acronym of its name and to use it not as its identifying name in business or as its trade name, but simply as an abbreviation of its name, while still using its KNIGHT FOUNDATION as its principal name.
Complainant has thus failed to establish any trademark rights to the expression KF.
Accordingly, it may rely only in its registered trademark for KNIGHT FOUNDATION.
The next question that arises is whether the disputed domain name is identical or confusingly similar to that trademark. In making that comparison it is accepted by panelists that because of the way the UDRP is expressed only the terms of the trademark and the domain name may be considered and without reference to other matters such as the content of a website to which the domain name may resolve. Applying that principle, the two are clearly not identical. The Panel also finds that the domain name is not confusingly similar to the trademark. The trademark clearly identifies a defined entity that is described as a foundation and there is nothing in the domain name to suggest that the letters “kf”, which could be referring to anything or anyone, have any connection at all with Complainant or any other entity.
Complainant has thus not made out the first of the three elements it must establish under the UDRP.
Complainant therefore cannot succeed and in keeping with general principle, the Panel finds no need to examine the other two elements.
Laches and Reverse Domain Name Hijacking
Respondent submitted that the Panel should reject the Complaint on the ground of laches in view of the long delay by Complainant in asserting the rights that it now claims and that the Panel should also make a finding of Reverse Domain Name Hijacking against Complainant. The Panel has considered both of these submissions carefully but has decided that in all the circumstances it is not appropriate to make either of the findings requested by Respondent.
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 <kf.org> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Esq.
Honorable John J. Upchurch (Ret.)
The
Honourable Neil Anthony Brown QC (Presiding Panelist)
Dated: November 6, 2017
[1] Although there is an unidentified one from the year 2015 which is KF@knightfdn without any explanation as to what it is or what its currency has been..
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