Daedong-USA, Inc., Kioti Tractor Division
v. O'Bryan Implement Sales
Claim
Number: FA0311000210302
Complainant is Daedong-USA, Inc., Kioti Tractor Division,
Wilson, NC (“Complainant”) represented by Cheryl
A. Marteney, of Ward and Smith, P.A., P.O. Box 867, New Bern, NC 28563-0867. Respondent is O'Bryan Implement Sales, 2000 West Fifth Street, Owensboro, KY
42301 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <kioti.com>, registered with Domaindiscover.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 13, 2003; the Forum received a hard copy of the
Complaint on November 19, 2003.
On
November 14, 2003, Domaindiscover confirmed by e-mail to the Forum that the
domain name <kioti.com> is registered with Domaindiscover and that
Respondent is the current registrant of the name. Domaindiscover has verified
that Respondent is bound by the Domaindiscover registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
November 20, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 10, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@kioti.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 22, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."
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 makes the following assertions:
1. Respondent’s <kioti.com>
domain name is identical to Complainant’s KIOTI mark.
2. Respondent does not have any rights or
legitimate interests in the <kioti.com> domain name.
3. Respondent registered and used the <kioti.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant-Daedong-USA, Inc. registered the KIOTI
mark with the United States Patent and Trademark Office (“USPTO”) on January
30, 1996 (Reg. No. 1953100).
Complainant-Kioti Tractor Division is contractually bound, pursuant to a
licensing agreement, to protect the trademark rights in the KIOTI mark within
the U.S. Complainant uses the KIOTI
mark in connection with the manufacturing, marketing, and selling of KIOTI
tractors, related attachments, and repair parts.
Respondent
registered <kioti.com> on March 12, 1998. Complainant entered into a Dealer Sales and
Service agreement with Respondent in 1999, in which Respondent is authorized to
deal in Complainant’s products.
However, the agreement prohibits Respondent from using Complainant’s
trademarks unless authorized in writing.
Complainant has not authorized such use. Respondent uses the disputed domain name to sell KIOTI products,
as well as other products.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 has
established rights in the KIOTI mark through registration with the USPTO and
continuous use in commerce since 1993. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
Respondent’s
domain name, <kioti.com>, is identical to Complainant’s KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the top-level domain “.com” after the name POMELLATO is not
relevant); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may accept all
reasonable inferences of fact in the allegations of Complainant, without the
benefit of a Response. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see
also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be deemed
true); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Additionally,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). The
WHOIS registration information fails to imply that Respondent is commonly known
by the name. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating, “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Panels have held that even licensed resellers of goods lack rights and
legitimate interests in domain names that encompass another’s mark. See Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v.
Aebersold, FA 113316
(Nat. Arb. Forum July 10, 2002) (“Respondent cannot use Complainant’s trademark
in a domain name when the Respondent, even though selling Complainant’s goods,
has no permission to use the trademark as the domain name”); see also Ullfrotté AB v. Bollnas Imp., D2000-1176
(WIPO Oct. 23, 2000) (finding that although Respondent legitimately sells goods
originating from Complainant, this does not give him the right to register and
the use the mark as a domain name without the consent of the holder of the
trademark).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
At the time
Respondent registered the disputed domain name, a licensing agreement had yet
to be formed. Nonetheless, the fact
that Respondent registered the KIOTI mark within a domain name, and later
became a licensed reseller of KIOTI products evidences Respondent’s knowledge
of Complainant’s rights in the KIOTI mark.
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“there is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively”); see also Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072).
Respondent used
the disputed domain name in bad faith because under its licensing agreement,
Respondent was forbidden to use the KIOTI mark without express authorization
from Complainant. See
Hewlett-Packard Co. v. OfficeOnWeb Ltd., FA 151537 (Nat. Arb. Forum May 21,
2003) (holding that Respondent’s unauthorized use of the LASERJET mark to
operate as a reseller of Complainant’s products constituted bad faith use and
registration pursuant to Policy ¶ 4(b)(iv)); see also Heel Quik! Inc. v.
Goldman, FA 92527 (Nat. Arb. Forum Mar. 1, 2000) (holding that the
registration of a domain name in violation of a license agreement is evidence
that the domain name was registered and used in bad faith).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <kioti.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
December 29, 2003
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