Kentucky for Kentucky LLC v. Camp Zinc
Claim Number: FA2302002031224
Complainant is Kentucky for Kentucky LLC (“Complainant”), represented by Griffin Buckner of VanMeter, US. Respondent is Camp Zinc (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cocainebear.com>, registered with Domain.com, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 9, 2023. Forum received payment on February 9, 2023.
On February 9, 2023, Domain.com, LLC confirmed by e-mail to Forum that the <cocainebear.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 February 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2023 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@cocainebear.com. Also on February 13, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 has rights in the COCAINE BEAR mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <cocainebear.com> domain name is virtually identical to Complainant’s mark.
Respondent has no legitimate interests in the <cocainebear.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in its COCAINE BEAR mark. Complainant has licensed the name but not the IP to a multinational movie studio which has produced and is releasing a film based on Complainant’s story (“Cocaine Bear” – Universal Studios). Additionally, Complainant owns the physical bear known as “Cocaine Bear”; sells Cocaine Bear Merchandise internationally through retail and the web; and has established the trademark and brand of “Cocaine Bear” with Amazon, where Complainant has successfully blocked the sale of counterfeit “Cocaine Bear” merchandise. Respondent has no rights to any of Complainant’s intellectual property.
Respondent registered and uses the <cocainebear.com> domain name in bad faith as it does not resolve to an active website. Complainant believes Respondent is cybersquatting on the domain name with intent to sell it. For precedence as explained at https://cyber.harvard.edu/udrp/analysis.html:
in “…Mondich v. Brown (americanvintage.com) D2000-0004, the Panel determined that simple failure to make good faith use of the domain name indicated that the respondent's primary intent was to sell.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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”).
The relevant date by which Complainant must show that it has rights in a mark is the date of filing of the Complaint.
Complainant has shown that it has rights in the COCAINE BEAR mark through registrations of the mark with the USPTO (Reg. No. 6,821,424, filed June 2, 2019, registered August 16, 2022 in class 41 for various entertainment services, claiming first use in commerce May 6, 2022, and Reg. No. 6,834,536, filed July 2, 2020, registered August 30, 2022 in class 25 for hats, shirts and socks, claiming first use in commerce April 7, 2022). The Panel finds Respondent’s <cocainebear.com> domain name to be identical to Complainant’s mark because it incorporates the COCAINE BEAR mark in its entirety, merely omitting the space. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s conclusion below, it is unnecessary to consider this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of- pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The name “cocaine bear” is a well-known reference to a bear which died from an overdose of cocaine in 1985. The <cocainebear.com> domain name was registered on May 28, 2022, some three months before Complainant’s mark was registered with the USPTO and some weeks after Complainant claims first use of the mark. However, there is no evidence of the extent of any such use by Complainant from which it may be concluded that Respondent, in Singapore, was aware of Complainant’s mark when registering the domain name.
Complainant cites Mondich v Brown (supra) in support of its belief that Respondent is cybersquatting on the domain name with intent to sell it. However, in that case the evidence supporting complainant’s claim of bad faith included an offer by respondent to sell the domain name to complainant. Here there is no evidence that Respondent has sought or intends to sell the domain name to Complainant or anyone else.
Does Respondent’s passive holding of the domain name amount to bad faith? The fact that the domain name does not resolve to an active website some eight months following its registration does not, without more, establish that it was registered and is being used in bad faith.
Section 3.3 of the WIPO Jurisprudential Overview 3.0 provides:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
The last of these factors if of importance in this case. Unlike the situation in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), Complainant’s mark comprises ordinary descriptive words and there is no evidence that the mark is so distinctive or well-known that there is no plausible good faith use to which it may be put.
Accordingly, despite Respondent’s failure to submit a response, the Panel finds that Complainant has failed to establish that the domain name was registered and is being used in bad faith.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cocainebear.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: March 14, 2023.
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