National Arbitration Forum

 

DECISION

 

KSL Recreation Management Operations, LLC v. KSL Recreation Management Operations LLC

Claim Number: FA0612000876390

 

PARTIES

Complainant is KSL Recreation Management Operations, LLC (“Complainant”), represented by Cynthia A. Casby, of Holland & Knight LLP, 633 West Fifth Street, Suite 2100, Los Angeles, CA 90071.  Respondent is KSL Recreation Management Operations, LLC (“Respondent”), represented by Cynthia A. Casby, of Holland & Knight LLP, 633 West Fifth Street, Suite 2100, Los Angeles, CA 90071.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <klsresorts.com> and <kslresort.com>, registered with Compana, LLC.

 

PANEL

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2006.

 

On January 5, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <klsresorts.com> and <kslresort.com> domain names are registered with Compana, LLCc and that the Respondent is the current registrant of the names.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 January 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 1, 2007 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@klsresorts.com and postmaster@kslresort.com by e-mail.

 

A timely Response was received and determined to be complete on January 31, 2007.

 

On February 7, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

The Complainant, KSL Recreation Management Operations, LLC ("KSL") has been forced to name itself as both the Complainant and the Respondent in this Complaint due to a recent change of registration of one of the two disputed domain names in this action: <kslresort.com>.

 

The Complainant alleges that it is a victim of “cyberflying.”  Cyberflying is the practice of changing the registrant of a domain name before or during a UDRP proceeding in an attempt to disrupt the proceeding and to circumvent 8(a) of the Policy.

 

Originally, the disputed domain names were registered by the notorious cybersquatter, Manila Industries, Inc. ("Manila"), and its affiliated company and herein named registrar, Compana LLC ("Compana.").

 

The Complainant noted Manila’s infringement of its trademarks in September 2006.  At that time, the Whois record for both <kslresort.com> and <klsresorts.com> were examined and Complainant found Manila listed as the registrant of both names.  A cease and desist letter was sent on September 27, 2006, to Manila listing both disputed domain names as infringing on the Complainant's trademarks.

 

Following that letter, Manila "cyberflew" one of the disputed domain names, <kslresort.com>, changing the registrant to the Complainant, but without providing control of the domain name.  The actions here by Manila are a new variation on its previous attempts to circumvent and disrupt UDRP proceedings.

 

Indeed, in Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Indus., Inc., D2005-1087 (WIPO Jan. 6, 2006), and High Point Bank and Trust Company v. High Point Bank & Trust, FA 632711 (Nat. Arb. Forum Feb. 22, 2006), Manila has shown a practice of "cyberflying."  In both the Group Kaitu and High Street cases, Manila changed the registrant information in the Whois record of the disputed domain names to the Complainant without affecting a proper transfer of control of the domain name.  This leaves the Complainant as the apparent owner of the domain name, but gives it no control of the name.  Thus, this Complaint is still necessary.

 

In order to protect its trademark rights, the Complainant filed a Complaint with the National Arbitration Forum on December 27, 2006, naming Manila and KSL Recreation Management as the co-Respondents.

 

The Complainant served the complaint on Manila, as required by the Rules.  Between that time and the time the National Arbitration Forum prepared to serve the official complaint, Manila also “cyberflew” the other domain name, <klsresorts.com>, to the Complainant.

 

As a consequence, the National Arbitration Forum required the Complainant to delete Manila's name from the Complaint, as per the applicable Rules, and it invited the Complainant to present a Response, which the Complainant duly did, since the Respondent of record is, at present, the Complainant.

 

However, the Complainant is not in possession of these domain names at this time, and requests an order of transfer to ensure that Manila and Compana will comply with and complete an actual transfer of these domain names to the Complainant.

 

The contact information in the current Whois record for the <kslresort.com> domain name was copied from another of Complainant's domain names.  It was not provided by Complainant.  Manila did not contact the Complainant about this change of registration, and the Complainant was not provided information by which to access and modify the Whois record of the disputed domain names.

 

Without access information, the Complainant cannot transfer the domain name to another registrar nor change the DNS server to post its own web page at the disputed domain names.  Thus, this Complaint is not moot.  The disputed domain names are still under the dominion and control of Manila.

 

The Complainant requests the Panel to issue an order to transfer the disputed domain names, in order to be able to gain control of them.

 

The Complainant includes evidence and arguments to show that the disputed domain names are confusingly similar to its marks, that Manila has no rights or legitimate interests in the dispute domain names, and that Manila registered and was using the disputed domain names in bad faith.

 

For the reasons set forth below, this Panel considers that the Complainant’s submissions regarding Manila’s registration are not pertinent and, therefore, they are not summarized here.

 

B. Respondent

The Response, submitted (as noted above) by the Complainant repeats the submissions contained in the Complaint and, therefore, it is not necessary to repeat here the summary given above.

 

 

FINDINGS

The disputed domain names were originally registered by Manila Industries, Inc. (“Manila”).

 

In September 2006, the Complainant wrote a cease and desist letter to Manila.

 

Subsequent to that letter, Manila changed the Whois listing of one of the disputed domain names to the Complainant.

 

In December 2006, the Complainant filed a Complaint with respect to both disputed domain names.

 

Subsequent to the filing of that Complaint, Manila changed the Whois listing of the second disputed domain name to the Complainant.

 

The Complainant is now the registrant of record of the disputed domain names, as per the Whois records.

 

However, the Complainant does not have access to the disputed domain names and is unable to change the web sites at the disputed domain names.

 

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.

 

However, in the present case, it is not necessary to consider those elements, because the original registrant (Manila) has transferred the disputed domain names to the Complainant.

 

A good discussion of an essentially identical case, and similar reasoning by the Panel, can be found in High Point Bank and Trust Company v. High Point Bank & Trust, FA 632711 (Nat. Arb. Forum Feb. 22, 2006).

 

This Panel interprets the Complainant’s submissions as a request for declaratory judgment that (1) it is the rightful owner of the disputed domain names and (2) it should have full control of the disputed domain names, including the ability to change the web pages at the disputed domain names.

 

It is instructive to cite here from Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC, D2005-1087 (WIPO Jan. 6, 2006):

 

The record before this Panel presents a virtual textbook case of “cyberflying” with a disingenuous twist.  Manila Industries, Inc., being named as the Respondent in this case – and with knowledge of its obligations under Paragraph 8(a) – proceeded without notification to either the Complainants or to the Center to change the contact details of the registrations to one of the Complainant’s contact details.

 

The Respondent [Manila] thus acted with full knowledge of Paragraph 8(a) of the Policy, and with an appreciation of how the Rules might be manipulated in an effort to avoid the mandatory administrative proceeding the Respondent agreed to submit to as a necessary condition of its registration of the disputed domain names.  Under such circumstances, this Panel can conceive of no plausible explanation for the Respondent’s actions other than a deliberate attempt to disrupt these proceedings, circumvent Paragraph 8(a) of the Policy, and evade the jurisdiction of the Panel.

 

In accordance with 10(a) of the Rules, the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.  The Panel finds nothing in the Rules that prevents a party from requesting a declaratory judgment.  Indeed, 3(a) of the Rules provides that “any person or entity may initiate an administrative proceeding by submitting a complaint” (emphasis added).

 

On the basis of the evidence submitted, the Panel agrees with the Complainant’s request, and hereby declares that the Complainant is the rightful owner of the disputed domain names and should have full control of the disputed domain names, including the ability to change the web pages at the disputed domain names.

 

In order to give operational force to this conclusion and declaration, the Panel hereby orders that the disputed domain names be transferred to the Complainant.  A good precedent for this approach can be found in High Point Bank and Trust Company v. High Point Bank & Trust, FA 632711 (Nat. Arb. Forum, Feb. 22, 2006).

 

 

DECISION

Having considered the evidence, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <klsresorts.com>  and <kslresort.com> domain names be TRANSFERRED to Complainant.

 

 

 

Richard Hill, Panelist
Dated: February 20, 2007

 

 

 

 

 

 

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