Kraslex LLC v. Leon G Pesin
Claim Number: FA0711001108473
Complainant is Kraslex LLC (“Complainant”), represented by William
J. Sapone, of Coleman Sudol Sapone P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kraslex.net>, registered with Ano Regional Network Information Center Dba Ru-Center.
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 November 12, 2007. On November 27, 2007 Complainant was notified that the Complaint was deficient pursuant to UDRP Rule 4(b), and Complainant then requested that its Complaint be withdrawn pursuant to the National Arbitration Forum Supp. Rule 12(a). On December 3, 2007 the National Arbitration Forum granted an Order to Dismiss Without Prejudice pursuant to Forum Supp. Rule 12(a). Complainant then refiled the Complaint and the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 20, 2007, Ano Regional Network Information Center Dba Ru-Center confirmed by e-mail to the National Arbitration Forum that the <kraslex.net> domain name is registered with Ano Regional Network Information Center Dba Ru-Center and that Respondent is the current registrant of the name. Ano Regional Network Information Center Dba Ru-Center has verified that Respondent is bound by the Ano Regional Network Information Center Dba Ru-Center 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 January 14, 2008, a Russian Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, in both English and Russian to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@kraslex.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2008, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kraslex.net> domain name is identical to Complainant’s KRASLEX mark.
2. Respondent does not have any rights or legitimate interests in the <kraslex.net> domain name.
3. Respondent registered and used the <kraslex.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kraslex, LLC, does business in the electronics
industry and provide customers with electronic display and lighting products
and services including: luminescent panels, electronic advertising and
messaging units, LCD and plasma units, luminous signs and more. Complainant registered the
<kraslex.com> domain name in December, 2002 to use in connection with its
business. The Complainant has trademark
applications for its KRASLEX mark pending for its products and services in
Respondent is a former employee of Complainant and is using the <kraslex.net> domain name in order to host a website which mimics the website resolving from Complainant’s <kraslex.com> domain name. The website resolving from Respondent’s disputed domain name displays contact information which differs from the contact information on Complainant’s website which resolves from the <kraslex.com> 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 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.
Policy ¶ 4(a)(i) does not require Complainant to possess a trademark registration with a governmental authority in order to establish rights in the KRASLEX mark. Therefore, the Panel will determine whether Complainant has established common law rights through its use of the KRASLEX mark in order to satisfy Policy ¶ 4(a)(i). See 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”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Although Complainant does not have registered rights in the KRASLEX
mark, the Panel finds that Complainant has common law rights in the KRASLEX
mark dating back to at least December 2002 when Complainant made operational
the website resolving from its <kraslex.com> domain name. Complainant is a company specializing in
electronic display goods and services and has continuously conducted business
in several countries since at least December 2002. Complainant has utilized the website
resolving from the <kraslex.com> domain name to continuously advertise
and promote its goods and services under the KRASLEX mark since the website
became operational in December 2002. In
addition, Complainant has pending applications for trademark rights in the KRASLEX
mark in both the
The Panel finds Respondent’s <kraslex.net> domain name is identical to Complainant’s KRASLEX mark because it fully incorporates the mark and the addition of top-level domains such as “.net” are considered irrelevant when analyzing whether a disputed domain name is identical to Complainant’s mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent does not have rights or legitimate interests in the <kraslex.net> domain name. After Complainant has made a prima facie case in support of these assertions, it becomes Respondent’s burden to prove it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has presented a sufficient prima facie case in support of its assertions. Since Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel will, however, examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <kraslex.net> domain name resolves
to a website which mimics Complainant’s <kraslex.com> domain name exactly
with the slight variations in the contact information. Respondent is a former employee of
Complainant and appears to be passing himself off as Complainant or as an
authorized agent of Complainant’s products and services. The Panel finds that this use is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii). See K&N Eng’g, Inc. v. Weinberger,
FA 114414 (Nat. Arb. Forum July 25, 2002) (holding that the respondent,
who was not an authorized distributor of the complainant’s products, lacked
rights or legitimate interests in a domain name incorporating the complainant’s
mark); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
In addition, the record and WHOIS information do not reflect that Respondent is commonly known by the <kraslex.net> domain name. Respondent was a former employee of Complainant, but Respondent is not authorized to be an agent of Complainant or use Complainant’s mark in any manner. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent is currently using the disputed domain name to
resolve to a website which mimics Complainant’s website but offers different
contact information. Respondent appears
to be attempting to disrupt Complainant’s business by providing Internet users
with misleading contact information for Complainant. The Panel finds that this disruption is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith).
Additionally, Respondent is using the disputed domain name,
which is confusingly similar to Complainant’s KRASLEX mark, in order to profit
from the goodwill incurred under that mark.
Respondent has established a website resolving from the disputed domain
name which mimics the website resolving from Complainant’s <kraslex.com>
domain name. Respondent has changed the
contact information on this website, presumably in order to profit from
Internet users looking for Complainant’s goods and services. The Panel finds that such actions constitute
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by
displaying the complainant’s mark on its website and offering identical
services as those offered by the complainant); see also Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <kraslex.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 20, 2008
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