Kinko's Ventures, Inc v. Fernando Rigonan
Claim Number: FA0109000100168
Complainant is Kinko's Ventures, Inc., Ventura, CA ("Complainant") represented by James H. Cornell, of Kinko's Ventures, Inc.. Respondent is Fernando Rigonan, San Francisco, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinkoids.com>, registered with Network Solutions.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 28, 2001; the Forum received a hard copy of the Complaint on October 3, 2001.
On October 1, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <kinkoids.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 October 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2001 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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." 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 the Respondent to the Complainant.
The <kinkoids.com> domain name is confusingly similar to Complainant's famous mark.
Respondent does not have rights or legitimate interests in respect to the <kinkoids.com> domain name.
Respondent registered and used the <kinkoids.com> domain name in bad faith.
The Respondent failed to submit a Response.
Since 1970, Complainant has been using the mark KINKO'S in relation to its reproduction/copying and office-related goods and services. Complainant has used the mark substantially and continually and has invested large sums of money in it advertising and promotional campaigns. Complainant holds five Federal Trademark Registrations for the mark, the first being registered in 1994. Complainant is also owner of the domain name <kinkos.com>.
The term "kinkoids" was developed in the 1980's and used by Complainant to refer to its employees. Respondent, a former employee of Complainant registered the <kinkoids.com> domain name while employed by Complainant and had full knowledge that the term referred to Complainant's employees.
Respondent registered the disputed domain name on May 21, 2001. Respondent has posted several different websites in connection with <kinkoids.com>. Respondent has set-up and email address at the disputed domain name.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or Confusingly Similar
Complainant, through registration and use has established that it has rights in the KINKO'S mark. Furthermore, Respondent's <kinkoids.com> domain name is confusingly similar to Complainant's mark because the disputed domain name merely adds the letters "ids" to Complainant's famous mark. It has been established that the addition of letters to a famous mark does not overcome a claim of confusing similarity. See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interest in the <kinkoids.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").
Respondent is using a confusingly similar domain name to provide services that are similar to Complainant's services. It has been found that the use of a confusingly similar domain name to offer similar services is not a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
Furthermore, there is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <kinkoids.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is thought to have been on notice of the existence of Complainant's famous mark at the time Respondent registered the infringing <kinkoids.com> domain name. Registration of a domain name, despite constructive notice of Complainant's mark is evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Furthermore, because Respondent was an employee of Complainant when it registered the <kinkoids.com> domain name, registration of the infringing domain name is considered an act of bad faith. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the company name of his former employer as a domain name is an act of bad faith").
The <kinkoids.com> domain name is confusingly similar to Complainant's mark and as a result the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <kinkoids.com> domain name, despite confusing similarity is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <kinkoids.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 5, 2001
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