Glenn Kaino v. Fix c/o Mike Patrick
Claim Number: FA0605000699578
Complainant is Glenn Kaino (“Complainant”), represented by David B. Oshinsky, of Cadence Law Group LLP, PO Box 351510, Los Angeles, CA 90035-1510. Respondent is Fix c/o Mike Patrick (“Respondent”), PO Box 480590, Los Angeles, CA 90048.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <glennkaino.com>, registered with Register.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2006.
On May 2, 2006, Register.com confirmed by e-mail to the National Arbitration Forum that the <glennkaino.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 May 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2006 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@glennkaino.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <glennkaino.com> domain name is identical to Complainant’s GLENN KAINO mark.
2. Respondent does not have any rights or legitimate interests in the <glennkaino.com> domain name.
3. Respondent registered and used the <glennkaino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Glenn Kaino, is an artist who has been successfully creating, exhibiting, and selling artwork since 1999. Complainant and Complainant’s artwork has been the subject of several articles and reviews in various national publications, including the Los Angeles Times, The New Yorker, and Newsweek.
Respondent registered the <glennkaino.com> domain name on January 4, 2002. Between 2000 and 2001, Respondent was employed as a consultant and reported indirectly to Complainant. Respondent’s employment with Complainant’s company was later terminated. Respondent’s disputed domain name resolves to a website featuring offensive statements regarding Complainant, as well as advertisements for websites unrelated to Complainant.
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.
The Panel finds that
Complainant has established common law rights in the GLENN KAINO mark pursuant to Policy ¶ 4(a)(i). An individual may acquire common law
trademark rights in his or her name by demonstrating secondary meaning for the
name with actual evidence. See
McCarthy on Trademarks and Unfair Competetition, § 13:1 “Personal Names as
Mark Introduction” (4th ed. 2002) (stating that the basic rules
pertaining to the protection of personal names require actual proof of
secondary meaning for protection); see also Marino v. Video Images
Prods., D2000-0598 (WIPO Aug. 2, 2000) (finding that evidence of Dan
Marino’s NFL career, sports commentary, and movie roles was sufficient to show
that Dan Marino’s name had secondary meaning and qualified as a common law
trademark). Complainant submitted
evidence that he has been creating and displaying artwork under the GLENN KAINO
mark since 1999, and that Complainant’s mark has been recognized as associated
with Complainant’s artwork by several publications in the national media.
Therefore, the Panel finds that Complainant has sufficiently demonstrated
secondary meaning in its GLENN KAINO mark, and thus has established common law
rights in the mark.
Furthermore, the Panel finds that Respondent’s <glennkaino.com> domain name is identical to Complainant’s GLENN KAINO mark under Policy ¶ 4(a)(i). The disputed domain name consists of Complainant’s GLENN KAINO mark in its entirety, with the omission of a space between the two words that constitute the mark, and the addition of the generic top-level domain “.com.” Prior panels have concluded that such alterations to a complainant’s mark render the domain name identical to the mark. In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel held that the omission of spaces between words in a mark and the addition of a generic top-level domain name did not avoid a finding that the <hannoverre.com> domain name was identical to the HANNOVER RE mark. Moreover, in Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001), the panel determined that the addition of the generic top-level domain name “.com” to the TERMQUOTE mark did not preclude a finding that the <termquote.com> domain name and the TERMQUOTE mark were identical. Thus, in the present case, the Panel finds that the alterations to Complainant’s GLENN KAINO mark inherent in the disputed domain name render the <glennkaino.com> domain name identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests with regard to the <glennkaino.com> domain name pursuant to Policy ¶ 4(c).
The Panel finds no evidence on record indicating that Respondent is commonly known by the <glennkaino.com> domain name. According to the WHOIS information, Respondent is identified as “Fix,” or “Mike Patrick,” and there is no other evidence suggesting that Respondent is commonly known by the disputed domain name. Moreover, nothing in the evidence indicates that Respondent was authorized to register the disputed domain name featuring Complainant’s GLENN KAINO mark, either as a licensee or otherwise. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <glennkaino.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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).
Furthermore, the Panel finds that Respondent’s disputed
domain name resolves to a website featuring derogatory statements about
Complainant arising from the termination of Respondent’s prior employment
relationship with Complainant.
Additionally, the website located at Respondent’s <glennkaino.com>
domain name provides advertisements for websites offering goods and services
unrelated to Complainant. As a result,
the evidence on record suggests that Respondent registered the <glennkaino.com>
domain name with the intention of diverting Internet users seeking information
regarding Complainant’s artwork to Respondent’s website featuring negative
statements about its former employer, as well as unrelated advertisements. Such use by Respondent constitutes neither a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a
noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v.
CS into Tech, FA 198795 (Nat. Arb. Forum
Dec. 6, 2003) (“Diverting customers, who are looking for products relating to
the famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark). Cf. E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug.
3, 2000) (finding that establishing a legitimate free speech/complaint site
does not give rights to use a famous mark in its entirety).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent, a former employee of Complainant, registered and is using the <glennkaino.com> domain name to operate a website featuring disparaging text regarding Complainant. Consequently, in light of the prior employment relationship between Respondent and Complainant, the Panel finds that Respondent must have been aware of Complainant’s GLENN KAINO mark prior to registering the <glennkaino.com> domain name and therefore, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").
In addition, the Panel finds that in light of both the identical nature of Respondent’s domain name and Complainant’s mark and Respondent’s use of the disputed domain name to criticize Complainant and generate advertising revenue, Internet consumers could easily confuse Respondent’s website with a website operated by or affiliated with Complainant. Therefore, the Panel concludes that Respondent registered and is using the <glennkaino.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of 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 <glennkaino.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 19, 2006
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