Kitchell Corporation v. Daniel Kitchell
Claim Number: FA1903001833546
Complainant is Kitchell Corporation (“Complainant”), represented by Bradley P. Hartman of Hartman Titus PLC, USA. Respondent is Daniel Kitchell (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <s-kitchell.com>, registered with REGISTER.IT SPA.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2019; the Forum received payment on March 12, 2019.
On March 14, 2019, REGISTER.IT SPA confirmed by e-mail to the Forum that the <s-kitchell.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name. REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@s-kitchell.com. Also on March 25, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant offers real estate and construction services to companies located across the United States and Latin America on projects ranging from $50,000 to $550,000,000. Complainant has rights in the KITCHELL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,163,384, registered June 26, 2012). Respondent’s <s-kitchell.com> domain name is identical or confusingly similar to Complainant’s mark as it merely prepends the letter “s” and a hyphen to Complainant’s KITCHELL mark.
Respondent has no rights or legitimate interests in the <s-kitchell.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to mimic Complainant as part of a fraudulent scheme. Further, Respondent potentially uses the domain name in connection with malicious activities.
Respondent registered and uses the <s-kitchell.com> domain name in bad faith. Respondent attempts to pass off as Complainant and commercially benefit off Complainant’s mark, thereby disrupting Complainant’s business. Further,
Respondent potentially uses the domain name in connection with malicious activities. Additionally, Respondent must have had actual knowledge of the KITCHELL mark based on Respondent’s copying of Complainant’s website content verbatim on the resolving webpage for the <s-kitchell.com> domain name.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <s-kitchell.com> domain name on September 24, 2018.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Italian, thereby making the language of the proceedings Italian.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Complainant notes that the entire contents of Respondent’s website are in English. The Panel has the discretion under UDRP Rule 11(a) it to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims rights in the KITCHELL mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,163,384, registered June 26, 2012). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the KITCHELL mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <s-kitchell.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Daniel Kitchell” as the registrant. Complainant also provides evidence that the name “Daniel Kitchell” is not associated with a real individual, and there is no business associated with any address displayed on the website or with the address listed in the WHOIS information. Respondent does not dispute that evidence. Accordingly, the Panel agrees that Respondent is not commonly known by the <s-kitchell.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent attempts to mimic Complainant as part of a fraudulent scheme. Passing off as a complainant to phish for information can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). Complainant provides various screenshots of the resolving webpage, which shows that the webpage displays the KITCHELL mark and contains information relating to the construction industry. Complainant also provides screenshots of its own website to show that Respondent copied content directly from Complainant’s own website. Further, Complainant provides an inquiry it received from a customer concerning Respondent’s use of the <s-kitchell.com> domain name. As such, the Panel finds that Respondent’s use of the domain name to pass off as Complainant and in connection with a fraudulent phishing scheme fails to confer rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and/or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the KITCHELL mark at the time of registering the <s-kitchell.com> domain name. Actual knowledge of a complainant's rights in a mark prior to and subsequent to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). Complainant contends that Respondent’s knowledge can be inferred given Respondent’s copying of Complainant’s website content verbatim on the resolving webpage for the <s-kitchell.com> domain name. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <s-kitchell.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 6, 2019
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