DECISION

 

Kasamba, Ltd. v. Doug Kimbo / comesatech

Claim Number: FA2202001985601

 

PARTIES

Complainant is Kasamba, Ltd. (“Complainant”), represented by Kimberly S. Grimsley of Oliver & Grimsley, LLC, Maryland, USA.  Respondent is Doug Kimbo / comesatech (“Respondent”), South Africa.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kasambaspells.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 23, 2022; the Forum received payment on February 24, 2022.

 

On February 25, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <kasambaspells.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2022 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@kasambaspells.com.  Also on February 25, 2022, 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 March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a leading provider of web-based real-time chat access to Tarot readers, astrologers, fortune tellers and psychics. Complainant has rights in the KASAMBA mark through the registration of the mark with the United States Patent and Trademark Office (e.g. Reg. No. 6,067,612, registered June 2, 2020). See Compl. Appendix 1. Respondent’s <kasambaspells.com> domain name is confusingly similar to Complainant’s KASAMBA mark. Respondent incorporates the mark in its entirety and adds the generic term “spells” along with the “.com” generic top-level domain

(“gTLD”).

2.    Respondent lacks rights or legitimate interests in the <kasambaspells.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the KASAMBA mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant by making use of its KASAMBA mark.

3.    Respondent registered and used the disputed domain name in bad faith as Respondent attempts to confuse internet users by making use of KASAMBA mark. Respondent had actual knowledge of Complainant’s rights in the mark due to the use of the mark in commerce.

 

B.   Respondent

Respondent failed to submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <kasambaspells.com> domain name is confusingly similar to Complainant’s KASAMBA mark.

 

2.    Respondent does not have any rights or legitimate interests in the <kasambaspells.com> domain name.

 

3.    Respondent registered or used the <kasambaspells.com> domain name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the KASAMBA mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the KASAMBA mark (e.g. Reg. No. 6,067,612, registered June 2, 2020). See Compl. Appendix 1. Therefore, the Panel finds Complainant has rights in the mark per Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <kasambaspells.com> domain name is confusingly similar to Complainant’s KASAMBA mark. Registration of a domain name that contains a mark in its entirety and adds a generic term along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the generic term “spells” along with the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues Respondent lacks rights or legitimate interest in the <kasambaspells.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the KASAMBA mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Doug Kimbo” and there is no other evidence to suggest that Respondent was authorized to use the  KASAMBA mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant by making use of its KASAMBA mark. Registration of a domain name that makes use of a complainant’s mark in order to confuse internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with screenshots from Respondent’s <kasambaspells.com> domain name that makes use of Complainant’s KASAMBA mark and offers similar services and products in hopes to confuse internet users. See Compl. Appendixes 2, 4, and 5. Therefore, the Panel agrees and finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and used the disputed domain name in bad faith as Respondent attempts to confuse internet users by making use of KASAMBA mark. Use of a disputed domain name that makes use of a complainant’s mark and offers related services to confuse internet users may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant has provided the Panel with screenshots from Respondent’s <kasambaspells.com> domain name that makes use of Complainant’s KASAMBA mark and offers similar services and products in hopes to confuse internet users. See Compl. Appendixes 2, 4, and 5. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Complainant argues that Respondent had knowledge of Complainant’s rights in the KASAMBA mark at the time of registering the <kasambaspells.com> domain name. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel may choose to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. Based upon the evidence, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kasambaspells.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  April 4, 2022