Claim Number: FA0708001052599
Complainant is California Lutheran University (“Complainant”), represented by Zareh
Marselian, 60 W. Olsen Rd., Code 5100, Thousand Oaks, CA 91360. Respondent is Visual Trends Development (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kclu.org>, registered with Network Solutions, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2007.
On August 1, 2007, Network Solutions, Inc confirmed by e-mail to the National Arbitration Forum that the <kclu.org> domain name is registered with Network Solutions, Inc and that Respondent is the current registrant of the name. Network Solutions, Inc has verified that Respondent is bound by the Network Solutions, 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 August 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <kclu.org> domain name is identical to Complainant’s KCLU mark.
2. Respondent does not have any rights or legitimate interests in the <kclu.org> domain name.
3. Respondent registered and used the <kclu.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <kclu.org> domain name on October 9, 2002. Respondent was hired by Complainant to manage the website that resolves from the disputed domain name, and has had contact with Complainant regarding the disputed domain name since at least November 2000.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Complainant has provided no evidence of a trademark or service mark registration with any governmental authority to establish its rights in the KCLU mark under Policy ¶ 4(a)(i). However, under the parameters of Policy ¶ 4(a)(i), registration of a mark with a governmental authority is not required, provided Complainant can demonstrate common law rights in a mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The evidence presented from the FCC regarding the official recognition and authorization of a radio station to operate under the KCLU call sign, as well as documentation of Complainant’s hiring of Respondent to operate the website that resolves from the <kclu.org> domain name, demonstrates that Complainant has been publicly using the mark since at least March 19, 2002. Thus, the Panel finds that Complainant has established rights in the KCLU mark to satisfy the requirements of Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
The Panel finds that the <kclu.org> domain name is identical to Complainant’s KCLU mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.org.” The addition of a gTLD to a mark does not sufficiently distinguish the disputed domain name from a mark, as all domain names must have a top-level domain. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is required under Policy ¶ 4(a)(ii) to present a prima facie case that Respondent lacks rights and legitimate interests in the <kclu.org> domain name. The Panel finds there is adequate evidence provided to satisfy this burden, and thus, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent has not provided the Panel with a Response in this case. Accordingly, the Panel may presume that Respondent lacks all rights and legitimate interests in the <kclu.org> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Although the Panel’s analysis with regards to Policy ¶ 4(a)(ii) may end here, the Panel elects to examine all available evidence to see if there is any evidence to indicate that Respondent possesses rights or legitimate interests in the disputed domain name under any of the Policy ¶ 4(c) allowances.
The WHOIS information indicates that Respondent is “Visual Trends Development.” Additionally, Complainant contends that Respondent was hired to register the <kclu.org> domain name on Complainant’s behalf. Complainant has provided evidence that it hired Respondent to manage the website that resolves from the disputed domain name on Complainant’s behalf. Accordingly, the Panel finds the record void of any evidence that Respondent is commonly known by the <kclu.org> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent as a contractor registered and managed the disputed domain name on Complainant’s behalf. The Panel finds that Respondent’s possession of the registration for the disputed domain name 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). See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, did not have rights or legitimate interests in the domain name containing the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Complainant has submitted evidence that the <kclu.org> domain name was registered by Respondent with actual knowledge of Complainant’s KCLU mark. Respondent was hired by Complainant to register the disputed domain name for Complainant, and to design and monitor the corresponding website. Accordingly, the Panel finds bad faith registration and use according to Policy ¶ 4(a)(iii). See Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended); see also DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Nat. Arb. Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kclu.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 10, 2007
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