DECISION
Robert F. Lopez, Ana M. Lopez and Christina L. Ruiz v. Shurhold
Industries, Inc./Key West Sandal Factory
Claim Number:
FA0501000399602
Complainants
are Robert F. Lopez, Ana M. Lopez and
Christina L. Ruiz (collectively,
“Complainant”), represented by Erica
Hughes, of Spottswood, Spottswood
and Spottswood, PO Box 1900, 800 Fleming Street, Key West, FL
33041-1900. Respondent is Shurhold Industries, Inc./Key West Sandal
Factory (“Respondent”), represented by Cynthia
B. Stevens, of Wildman, Harrold,
Allen & Dixon, LLP, 225 West Wacker Drive, Chicago, IL 60606-1229.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <kinosandal.com>
and <kinosandals.com>, registered with Bulkregister, Llc.
PANEL
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.
Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainants
submitted a complaint to the National Arbitration forum electronically on
January 10, 2005; the National Arbitration Forum received a hard copy of the
Complainant on January 13, 2005.
On
January 11, 2005, Bulkregister, Llc. confirmed
by e-mail to the National Arbitration Forum that the domain names <kinosandal.com> and <kinosandals.com> are registered with Bulkregister, Llc. and that the Respondent is the current
registrant of the name. Bulkregister, Llc.
has verified that Respondent is bound by the Bulkregister, Llc. registration
agreement and that 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
January 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 8, 2005 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@kinosandal.com postmaster@kinosandals.com
by e-mail.
A
Response was received and determined to be complete on February 10, 2005.
Although the Response was complete as it was received in both hard copy and
electronic format, it was deficient as it was untimely and received after the
Response deadline.
Complainant
sent an Additional Submission, however it was received after the deadline and
therefore failed to comply with Supplemental Rule 7. Because the Panel has
decided to give some weight to Respondent’s late response, Complainant’s
Additional Submission has been given comparable treatment.
On
February 15, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
makes the following assertions:
1. Complainant owns and operates a sandal
manufacturing business in Key West, Florida through its wholly-owned
corporation Kino Sandals, Inc.
2. Complainant began the sandal making
business in Key West in 1966 and has continuously operated that business since
that time, during which period it has also used the KINO and KINO SANDALS
trademarks.
3. Complainant secured state registrations
for the KINO (1992) and KINO SANDAL (2002) marks. Based on the long-standing usage of the KINO mark in connection
with sandals manufactured by Complainant, the KINO and KINO SANDAL marks are
widely known throughout Key West, Florida and the United States.
4. Respondent’s <kinosandal.com> and <kinosandals.com>
domain names are identical
and therefore confusingly similar to Complainant’s KINO and KINO SANDAL
registered marks.
5. Respondent is using its website to
advertise Complainant’s products and Respondent’s domain names are not being
used for legitimate noncommercial or fair use purposes but instead evidence an
intent to misleadingly divert consumers or to tarnish Complainant’s trademarks.
6. Respondent’s domain names should be
considered as having been registered and used in bad faith.
B.
Respondent
Respondent
makes the following assertions:
1. Respondent obtained the <kinosandal.com> and <kinosandals.com> domain names in
2000 for the sole purpose of selling KINO brand sandals and not to divert
consumers or tarnish the trademark at issue.
2. Respondent is a reseller of KINO “brand”
sandals, therefore Respondent has a legitimate purpose for using the <kinosandal.com> and <kinosandals.com> domain names.
3. Respondent clearly states on its website
that “KINO is a registered trademark of Kino Sandals of Key West, Florida and
is not affiliated with Key West Sandal Factory.”
4. Respondent has a good faith interest in
using the domain names to resell the KINO “brand” sandals. The site does not falsely suggest that it is
Complainant’s official site or misstate the relationship between Respondent and
Complainant.
5. Respondent has used the domain names for
approximately five years, and has not received any complaints or inquiries from
users which indicate such users believe that Respondent is associated with
Complainant.
C.
Additional Submissions
Complainants
make the following additional assertions:
1. Respondent is not an authorized reseller
of KINO brand sandals.
2. Complainant has gone to great lengths to
limit sales of its sandals in an effort to ensure that Respondent does not, and
cannot, obtain KINO brand sandals for resale, including the stoppage of bulk
sales and mail order sales.
3. Respondent has now (more than five years
after acquiring the domain names) added a disclaimer to its website.
FINDINGS
Complainants
are related family members who have operated a sandal manufacturing business in
Key West, Florida through their wholly owned corporation, Kino Sandals,
Inc. Complainant began the business in
1966 and has operated continuously since that time. In 1992, Complainant secured a state trademark registration (Fla.
Reg. No. T02000000914) for the KINO mark and in 2002, the same year it renewed
KINO, Complainant also secured a state registration for the KINO SANDAL mark
(Fla. Reg. No. T16190).
Complainant
has also applied for a federal registration with respect to the KINO mark,
which application is pending with the Unites States Patent and Trademark Office
as Application No. 781399566.
Complainant is the exclusive owner of the KINO mark and has the
exclusive right to use and license the KINO mark.
Respondent,
Shurhold Industries, Inc./Key West Sandal Factory, is a business entity
established at an unknown time, with a mailing address in Palm City, Florida,
approximately 180 miles north of Key West, Florida. Respondent obtained the <kinosandal.com> and <kinosandals.com> domain names in
2000 for the purpose of selling or reselling the KINO brand sandals.
Respondent
purchases the KINO brand sandals from Complainant and then offers the products
for sale on its website where it also provides a disclaimer of any affiliations
with Complainant and further offers a Q&A page where it indicates it sells
its products at a higher price than if bought directly from the manufacturer,
due to the costs associated with it being a reseller.
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
Identical and/or
Confusingly Similar
Complainant
has established rights in the KINO and KINO SANDAL marks through use and state
registrations of the marks. The KINO
and KINO SANDAL marks were registered with the Florida Department of State
(Doc. No. T16190 issued August 13, 1992; Doc. No.T02000000914 issued August 8,
2002, respectively), each registration indicating a date of first use as April
27, 1966. See Board of Regents of The University of Idaho v. Anti-Globalization
Domains, FA 205127 (Nat. Arb. Dec. 8, 2003) (“Registration with the State
of Idaho is sufficient to establish Complainant’s rights in a mark.”)
Respondent’s
<kinosandals.com> and <kinosandal.com> domain names are
confusingly similar to Complainant’s KINO and KINO SANDALS marks because the
domain names incorporate the marks in their entirety and merely add the terms
“sandal” and “sandals,” which describe Complainant’s business. See
Arthur Guinness Son and Co. (Dublin) Ltd. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term.); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has on obvious relationship to Complainant’s business); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level 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).
The
Respondent’s registration of the domain names did occur before the
Complainant’s state registration for the KINO SANDAL mark, however the panel
finds that the Complainant’s common law rights gained over a period of more
than 30 years predate Respondent’s registrations, and that fact, coupled with
Complainant’s earlier registration of the KINO mark for its Key West Sandal business
sufficiently evidence Complainant’s established rights in the marks. The domain names at issue are neither
adaptations of Complainant’s purely nominative marks nor are they descriptive
of Respondent’s business.
The
Panel finds that Complainant has proven the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate
Interests
Respondent’s
use of the <kinosandal.com>
and <kinosandals.com> domain names is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). The use of identical or
confusingly similar versions of Complainant’s marks by Respondent’s company,
named for Complainant’s business location, to engage in the unauthorized reselling
of Complainant’s products fails to meet the definition of bona fide. See
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no
“bona fide” offering of goods or services where Respondent used Complainant’s
mark without authorization to attract Internet users to its website, which
offered both Complainant’s products and those of Complainant’s competitors).
Respondent
does not contest Complainant’s assertions that Complainant’s goods and marks
are well known throughout Florida and the United States. Nor does Respondent offer any evidence that
it is, or was, either commonly known by the disputed domain names or was
authorized to register domain names incorporating Complainant’s marks. Thus, Respondent has no rights or legitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name); see also Hewlett-Packard Co. v. Burgar,
FA 93564 (Nat. Arb. Forum Apr. 10, 2000) (finding that Respondent has no rights
or legitimate interest in the <hewlettpackard.com>
domain name, because Respondent is not a licensed dealer of Hewlett-Packard
products and has not demonstrated any right except to declare that he is
affiliated with a licensed reseller of Complainant’s products). In the instant case Respondent has not
received any authorization or license, nor has it affiliated with anyone who
has.
Although
Respondent did apply for the domain names before Complainant registered its
KINO SANDALS mark, Complainant’s KINO mark had been registered for more than a
decade prior to Respondent’s procurement of the domain names in dispute. Thus, Complainant had already established
rights in KINO as a mark identifying its goods which were sandals manufactured
by its factory in Key West, Florida.
Respondent’s provision of a disclaimer on its website only recently
occurred after Complainant threatened legal action. Furthermore, the provision of such a disclaimer, once parties
arrive at the website is an inadequate barrier to preventing prospective consumers
from initially visiting the website on belief that they are going to a website
provided or authorized by Complainant. See
Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)
(finding that since a disclaimer does not, and could not , accompany the domain
name, then the “domain name attracts the consumer’s initial interest and the
consumer is misdirected long before he/she has the opportunity to see the
disclaimer”); see also Ciccone v. Parisi
(Madonna.com), D2000-0847 (WIP Oct. 12, 2000) (“Respondent’s use of a
disclaimer on its website is insufficient to avoid a finding of bad faith.
First, the disclaimer may be ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion that is
inevitable from Respondent’s actions. Such confusion is a basis for finding a
violation of Complainant’s rights.”).
Although
some decisions have found use of a disclaimer to be sufficient, those matters
can be distinguished from the matter at hand by the fact that the domain names
in those cases were not identical, nor did they incorporate in full the
trademarks of the complaining parties in the manner of Respondent’s domain
names in this dispute.
The
Panel finds that Respondent lacks any rights or legitimate interest in the <kinosandal.com> and <kinosandals.com> domain names.
Therefore
the Panel finds that Complainant has established its burden set forth under the
Policy ¶ 4(a)(ii).
Registration and Use in
Bad Faith
Complainant
argues that Respondent’s use of the <kinosandal.com>
and <kinosandals.com> domain
names has blocked its attempts to secure and operate an Internet site bearing
its trademarks. Respondent’s domain
names, which both incorporate and/or are identical to Complainant’s trademarks,
were procured primarily to resell Complainant’s products, although they have
recently begun selling products of Complainant’s competitors. These actions by Respondent constitute
disruption of Complainant’s business and evidence that Respondent registered and
used the domain names in bad faith pursuant to Policy ¶4(b)(iii). See
C.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb.
Forum Oct. 16, 2002) (Unauthorized use of Complainant’s CELEBREX mark to sell
Complainant’s products represent bad faith use under Policy ¶4(b)(iii)); see also Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum February 23, 2000) (finding that Respondent acted in bad faith
by registering <fossi1watch.com>
domain name and using it to sell various watch brands where Respondent was not
authorized to sell Complainant’s goods).
Respondent does not indicate any authorization was ever granted to sell
or resell Complainant’s goods but instead argues that the domain names were
available for registration and that Complainant had no federal trademark rights
at the time of Respondent’s registration.
Neither of these factors are required for a party to have established
rights in a mark, nor does the failure of these events act as shield for a
finding of bad faith.
The
Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(iii),
thus Respondent’s registration and use is in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <kinosandal.com>
and <kinosandals.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Darryl. C Wilson, Panelist
Dated: March 1, 2005