Kathryn C. Kirk v. Robert Jackson
Claim Number: FA0509000568871
Complainant is Kathryn C. Kirk (“Complainant”), represented by James L. Lester, P.O. Box 2830, Greensboro, NC 27402. Respondent is Robert Jackson (“Respondent”), 5505 Old Still Road, Wake Forest, NC 27587.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kirkimports.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2005.
On September 29, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <kirkimports.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 September 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@kirkimports.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <kirkimports.com> domain name is identical to Complainant’s KIRK IMPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <kirkimports.com> domain name.
3. Respondent registered and used the <kirkimports.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kathryn C. Kirk, operates an importing business, which primarily handles furniture, accessories, and clothing. In connection with its business, Complainant has registered the KIRK IMPORTS mark (Reg. No. 2,736,992 issued April 22, 2003) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <kirkimports.com> domain name on October 23, 2004. Respondent’s domain name resolves to a website that features adult-oriented material. Furthermore, Respondent offered to sell the <kirkimports.com> domain name registration to Complainant for $800.
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. 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 (Nat. Arb. 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.”).
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 KIRK IMPORTS mark due to its registration with the USPTO. See 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 [or] have acquired secondary meaning”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <kirkimports.com> domain name is identical to Complainant’s registered mark. Respondent’s domain name features Complainant’s entire KIRK IMPORTS mark and merely removes the space separating the two terms while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the removal of a space from an established mark nor the addition of the gTLD “.com” is sufficient to distinguish Respondent’s <kirkimports.com> domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the burden of proof onto Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (stating that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Because Respondent failed to respond, the Panel infers that no rights or legitimate interests exist pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent is using the <kirkimports.com> domain name to link customers to a website featuring adult-oriented content. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii). See Am. Eagle Outfitters, Inc. v. Zuccarini, FA 155178 (Nat. Arb. Forum June 10, 2003) (finding that the respondent’s use of a domain name that was a misspelling of the complainant’s mark to redirect Internet users to an adult-oriented website was not a bona fide offering of goods or services); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. 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”).
Complainant contends that Respondent attempted to sell the disputed domain name registration to Complainant for $800. The Panel finds such conduct to be further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Furthermore, no affirmative evidence has been set
forth showing that Respondent is either commonly known by the <kirkimports.com>
domain name or authorized to register domain names featuring Complainant’s
mark. As a result, Respondent has
failed to establish rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant contends that Respondent offered to sell the
disputed domain name registration to Complainant for $800. The Panel finds that the registration of a
domain name identical or confusingly similar to an established mark for the
purpose of selling it to the mark holder for an amount in excess of
Respondent’s out-of-pocket costs is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated
bad faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name).
Furthermore,
Respondent’s use of the <kirkimports.com> domain name to
link Internet users to a website that features adult oriented material is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that
absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also Wells Fargo
& Co. v. Party Night Inc., FA 144647 (Nat. Arb. 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).
The Panel finds 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 <kirkimports.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 8, 2005
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