KBS Realty Advisors, LLC v. Contact Privacy Inc. Customer 1245523589
Claim Number: FA1910001865672
Complainant: KBS Realty Advisors, LLC of Newport Beach, California, United States of America.
Complainant Representative:
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondent: Contact Privacy Inc. Customer 1245523589 of Toronto, Ontario, CA.
Respondent Representative: No response provided
REGISTRIES and REGISTRARS
Registries: Afilias Limited
Registrars: Google LLC
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 Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: October 7, 2019
Commencement: October 9, 2019
Default Date: October 24, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of fact:
The case at hand refers to the domain name <kbs.llc>.
In accordance with the provisions of URS, Complainant claims
(i) that the domain name <kbs.llc> is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that The Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith since:
● Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor
●By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Complainant, KBS Realty Advisors, LLC (“KBS”), asserts that it owns a number of trade and service mark registrations in the United States for the KBS and KBSformative marks. Complainant is a leading real estate investment company who has become one of the largest owners of commercial real estate in the United States, and the KBS Marks have been prominently used since as early as 1992. Throughout 27 years of industry leadership, the KBS Marks have become well and favorably known throughout the United States and internationally.
According to the Complainant, the KBS Marks have been promoted among the purchasing public throughout the United States on an extensive and frequent basis. The KBS Marks are easily recognizable to the public as originating from KBS. As such, the KBS Marks and the goodwill associated therewith are of inestimable value to Complainant. By virtue of the wide knowledge of the KBS Marks by the public and extensive sale of KBS’s services, the KBS Marks have become highly distinctive in the minds of the purchasing public.
Complainant asserts that it operates its official Internet web site at <kbs.com> (the “KBS Site”) where consumers can access information about KBS and its services. The KBS Site is a vital and integral part of KBS’s business. Complainant intends to preserve and maintain its rights with respect to the KBS Marks, and to continue to use the KBS Marks in connection with its leading real estate investment business.
Complainant has established rights in its well-known name and mark KBS. The domain name <kbs.llc> (the “Domain Name”) wholly incorporates and is identical to Complainant’s registered KBS mark. Further, Complainant notes that the gTLD “.llc” is meant to reflect the “limited liability company” entity type, and that most of Complainant’s corporate names begin with “KBS” and end with “LLC”, further creating a potential for confusion.
Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use the KBS Marks or to apply for any Domain Name incorporating the KBS Marks. Moreover, because Complainant owns exclusive rights in the KBS Marks, Respondent cannot establish legitimate rights in the Domain Name. Respondent is purportedly using the Domain Name to direct users to an inactive website that does not contain any content. Upon information and belief, by creating confusion through its registration and use of a domain name wholly comprised of and identical to the KBS Marks, Respondent intentionally attempts to attract Internet Users to Respondent’s website for commercial gain by creating a likelihood of confusion with the KBS Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, Respondent has registered and is using the Domain Name in bad faith.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
The process contains evidence which demonstrates that the Complainant is the owner of the trademark KBS registered before the United States Patent and Trademark Office under Registration No. 4.198.991 and used in commerce since at least as 1992.
The process also contains evidence which demonstrates that Complainant’s trademark KBS is in use in connection with a website identified with the domain name <kbs.com>. Consequently, the Examiner considers that the requirement of demonstrating trademark rights, and the usage thereof, has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner concurs with Complainant in that the disputed domain name <kbs.llc> identically reproduces the registered trademark KBS. Furthermore, the Examiner considers that the extension “llc” do not add distinctiveness to the disputed domain, but instead, contributes to cause confusion inasmuch as such word directly refer to a type of US entity, which as stated in the Complaint, happens to be included in Complainant’s corporate names. It should be noted that as argued on the Complaint, Complainant has been recognized as a leader in the field of real estate investment, and the KBS Marks are easily recognizable to the public as originating from KBS. Thus the KBS Marks are highly distinctive and the goodwill associated therewith is undeniable.
Moreover, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case, the relevant part of the disputed domain name consists of the word “KBS”, which happens to exactly reproduce the registered trademark “KBS” owned by the Complainant. The identical reproduction of a distinctive trademark within a domain name is hardly the result of casualty, and does suggest an intention to profit in some manner from the trademark and the goodwill thereof, causing confusion to those who have access to the name by leading to believe that it also belongs to the owner of the registered trademark. In the present case, the disputed Domain Name is purportedly being used to direct users to an inactive website without any content, which no doubt adversely affects the owner of the trademark KBS and the website kbs.com. This activity does suggest beyond any reasonable doubt that Registrant has intentionally attempted to disrupt the business of a competitor, and therefore is being used in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration: <kbs.llc>
Luz Helena Villamil Jimenez, Examiner
Dated: October 29, 2019
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