Kinko's Ventures, Inc. v. Inversiones Santa Fe aka Felix Rosenberg
Claim Number: FA0112000102797
Complainant is Kinko's Ventures, Inc., Ventura, CA, USA (“Complainant”). Respondent is Inversiones Sante Fe aka Felix Rosenberg, Lima, Peru (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kinkosimpresores.com>, <latinkinkos.com>, and <perukinkos.com>, registered with Dotster, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 10, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.
On December 18, 2001, Dotster, Inc. confirmed by e-mail to the Forum that the domain names <kinkosimpresores.com>, <latinkinkos.com>, and <perukinkos.com> are registered with Dotster, Inc. and that Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 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, email@example.com, and 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 January 25, 2002, 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.” 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 names be transferred from the Respondent to the Complainant.
The disputed domain names <kinkosimpresores.com>, <latinkinkos.com>, and <perukinkos.com> are confusingly similar to the KINKO’S mark, in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Respondent submitted a letter to the Forum indicating that it has transferred all of its property rights in the disputed domain names to another organization.
Respondent did not contest Complainant’s assertion that Complainant holds rights in the KINKO’S mark, or that the disputed domain names are confusingly similar to that mark.
Respondent did not contest Complainant’s assertion that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent did not contest Complainant’s assertion that Respondent registered and used the disputed domain names in bad faith.
Complainant registered the KINKO’S service mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,109,701 on December 19, 1978, and has used the mark in connection with photographic reproduction services continuously in commerce since 1976. Complainant also holds at least 3 other registered service marks and one registered trademark in KINKO’S.
Complainant operates internationally under its KINKO’S mark through physical overseas locations and via the Internet.
Respondent registered the <kinkosimpresores.com> domain name on March 16, 2001, the <perukinkos.com> domain name on March 24, 2001, and the <latinkinkos.com> domain name on April 2, 2001. The first two domain names have not been used by Respondent, except to display a “placeholder” page provided by the domain name registrar. The latter domain name has been used to host a site that advertises services that are the same as or similar to services provided by Complainant. The site also incorporates Complainant’s logo and copyrighted images.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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 has established its rights in the KINKO’S mark through registration with the U.S. Patent and Trademark Office. Although there is no evidence that Complainant holds trademarks in Respondent’s country of residence, this is not required under the Policy in order to make out a claim against Respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate exclusive rights, but only that it has a bona fide basis for making the complaint in the first place).
By adding geographically descriptive words to Complainant’s mark, the <latinkinkos.com> and <perukinkos.com> domain names are made confusingly similar to the mark. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark; “[T]he combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar”); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
Similarly, the addition of “impresores” (Spanish for “printers”) to Complainant’s mark does not significantly distinguish the <kinkosimpresores.com> domain name from the mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the Complainant’s trademark were confusingly similar to the trademark).
The inclusion of “.com” in the domain names is immaterial to the confusingly similar inquiry, as the use of top level domain names such as “.com” is required of domain name registrants. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its rights to and interests in the KINKO’S mark. Because Respondent has not submitted any evidence to suggest it has any rights or interests in the disputed domain names, the Panel may presume it has no such interests. 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Respondent’s nonuse of <kinkosimpresores.com> and <perukinkos.com> constitutes passive holding of the domain names, which provides further evidence that Respondent has no rights or legitimate interests in those names. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Respondent’s use of <latinkinkos.com> to promote a business in competition with Complainant cannot be deemed a bona fide offering of goods or services under 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 domain names, which were confusingly similar to Complainant’s mark, to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Registration and Use in Bad Faith
By incorporating Complainant’s unique logo and copyrighted materials on the website hosted at <latinkinkos.com>, Respondent has demonstrated that it is aware of Complainant’s marks and the proprietary rights therein. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Respondent’s registration and use of domain names that fully incorporated Complainant’s marks demonstrates opportunistic bad faith under the policy. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., supra, (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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”).
Further, by registering multiple domain names that fully incorporated Complainant’s mark, Respondent has demonstrated a pattern of behavior calculated to prevent Complainant from registering domain names that reflect its mark. This practice indicates bad faith under Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Finally, Respondent’s use of the <latinkinkos.com> domain name to direct Internet users to a competing website shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring <fossilwatch.com> from Respondent watch dealer to Complainant); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
Accordingly, 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 should be hereby granted.
Accordingly, it is Ordered that the <kinkosimpresores.com>, <latinkinkos.com>, and <perukinkos.com> domain names be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 1, 2002
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