K&N Engineering, Inc. v. Mike Weinberger
Claim Number: FA0205000114414
Complainant is K&N Engineering, Inc., Riverside, CA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Mike Weinberger, Kailua Kona, HI (“Respondent”) represented by Stephen H. Sturgeon, of Stephen H. Sturgeon & Associates, PC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <knfiltercharger.com>, <knnairfilters.com>, <goknfilters.com>, <goknairfilter.com>, and <goknairfilters.com>, registered with VeriSign, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 28, 2002; the Forum received a hard copy of the Complaint on May 28, 2002.
On June 3, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain names <knfiltercharger.com>, <knnairfilters.com>, <goknfilters.com>, <goknairfilter.com>, and <goknairfilters.com> are registered with VeriSign, Inc. and that the Respondent is the current registrant of the name. VeriSign, Inc. has verified that Respondent is bound by the VeriSign, 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 June 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 24, 2002. Complainant submitted an Additional Submission, which pursuant to the Forum’s Supplemental Rule 7 was timely received June 27, 2002.
On July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
Respondent has filed domain names that are confusingly similar to Complainant’s established marks. Respondent has no rights to or legitimate interest in the marks. Respondent registered the domain names containing Complainant’s marks in bad faith.
B. Respondent makes the following points in response.
Respondent’s timely Response recites ICANN Policy and Rules and makes a general statement that Complainant failed to satisfy that burden. Respondent contends that he has rights to and legitimate interests in the domain name because he is a retail seller of Complainant’s product. Respondent further states that he has no bad faith.
C. Additional Submission
Complainant urges in its Additional Submission that while Respondent sells Complainant’s product, Respondent is not an authorized agent of Complainant and has no license or permission to operate using Complainant’s trademarks.
Complainant also complains of technical defects in Respondent’s Response, including the small font, which kept Respondent’s Response within the ten-page limit.
Complainant established in this proceeding that it has legal rights to the marks contained in their entirety in the domain names registered by Respondent by virtue of trademark registration and continuous use in commerce.
Complainant holds as many as ten trademark registrations in eight international countries for its line of vehicle air filters. Complainant’s use in commerce preceded Respondent’s registration of the domain names in issue by a decade. Complainant has numerous dealers operating in the United States and ten such licensed operators in Hawaii, which is Respondent’s home state. Complainant also operates websites under its mark and as many as tens of millions of Internet users access the sites.
Respondent’s use of the various domain names containing Complainant’s established trademarks seems calculated to generate the likelihood of confusion among Internet users attempting to access Complainant’s sites.
Respondent is not known by Complainant’s marks and Respondent’s conduct suggests attempts to capitalize, opportunistically, on Complainant’s goodwill and fame.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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.
Identical to and/or Confusingly Similar
Complainant has operated its business since 1963 and claims to be a leader in automotive technology. Complainant manufacturers air filters and uses its trademarks K & N and FILTER CHARGER to denote its air filters. Complainant has the marks K & N and FILTER CHARGER registered with the United States Patent and Trademark Office, respectively Reg Nos. 1,536,024 and 1,281,461.
Complainant owns <knfilters.com> and <knfilter.com> and Complainant operates a website at <knfilters.com> where it provides information about its products and facilitates sales with its authorized distributors. Complainant claims that the website at <knfilters.com> receives “millions of hits each year from [its] customers and others in the automotive industry.” Complainant asserts common law rights in the KNFILTERS mark because of the ongoing business conducted at its website. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc (Complainant owns a trademark for its full company name) had developed brand name recognition with the BIBBERO term by which the Complainant is commonly known).
Complainant asserts that the <knfiltercharger.com> domain name is confusingly similar to its K & N and FILTER CHARGER marks because it combines a common abbreviation of the K & N mark with the entire FILTER CHARGER mark. Complainant points out that the omission of the “&” symbol is of no relevance because ampersands are not permitted in domain names. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).
Complainant claims that the <knnairfilters.com> domain name is confusingly similar to its marks because the domain name replaces the “&” with an “n” along with adding “airfilters,” which refers to Complainant’s products. Complainant asserts that the “n” easily replaces the sound of “&,” which denotes “and.” See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Complainant claims that the <goknfilters.com> domain name is confusingly similar to its KNFILTERS mark because the addition of a common word, such as “go,” does not defeat a “confusingly similar” claim. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Finally, Complainant asserts that the <goknairfilters.com> and <goknairfilter.com> domain names are confusingly similar to its K & N mark because the domain names contain the common word “go” and industry-related word “filter” or “filters.” See Space Imaging LLC v. Brownwell, supra; see also Marriott Int’l v. Café au lait, supra.
Respondent argues that the disputed domain names are not confusingly similar to Complainant’s marks because Complainant is not entitled to all domain names containing its trademarks. This argument is not accompanied by authorities to that effect and is not persuasive.
The Panel finds that ICANN Policy ¶ 4(a)(i) relative to “confusing similarity,” has been satisfied.
Respondent uses the disputed domain names to link to a website that sells Complainant’s air filters without Complainant’s authorization. Respondent’s website uses Complainant’s copyrighted text, copyrighted photographs and stylized logo. Complainant notes that Respondent “clearly identifies K & N as the owner and operator” of the website to which the domain names link.
Complainant urges that Respondent uses the domain names to “secure commercial gain.” Therefore, Complainant argues that the domain names are not being used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or in association with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as the Complainant and displaying the Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).
Complainant contends that Respondent is not “known by any name that is similar to the subject domain names.” Complainant also states that Respondent is not authorized to use Complainant’s marks in any manner. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
In its Additional Submission, Complainant asserts that Respondent is not an authorized dealer of Complainant’s products as Respondent claims to be, because Complainant never explicitly authorized Respondent to sell its products. Complainant contends that, even if Respondent were an authorized dealer, Respondent would not acquire an absolute right to use Complainant’s marks. Complainant notes that authorized dealers are allowed to use trademarks to advertise but not in a way that is deceptive or confusing.
Respondent asserts that Complainant did not prove that Respondent has no rights or legitimate interests in the disputed domain name. Respondent claims to be a retail seller of Complainant’s products but Respondent did not produce documentation to support that claim. Complainant insists unequivocally that Respondent has no such rights.
Were Respondent an authorized agent of Complainant, some authorities suggest that Respondent would have a right to use the marks as advertising tools in order to efficiently sell the Complainant’s products. Respondent urges that “[b]ecause Respondent’s [sic] is a bona fide, authorized distributor of Complainant’s products, there is an absolute right to use the trademark in the marketing and sale of Complainant’s products.” Under Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) the Respondent was an authorized dealer of the Complainant’s WEBER GRILL products, and had rights and legitimate interests in use of and promoting domain names including the mark because it was using the domain names in order to make a bona fide offering of Complainant’s goods and services. The same is true under Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (an authorized dealer of Complainant’s goods may use Complainant’s trademark in its domain name if Respondent is 1) actually selling the goods or services at issue; 2) selling only Complainant’s products; 3) accurately disclosing the relationship between Complainant and Respondent; and 4) has not attempted to corner the market in all domain names incorporating Complainant’s mark and thereby prevented Complainant from reflecting its mark in its own domain name). Respondent has not refuted Complainant’s strong statement that Respondent is not authorized or licensed to use Complainant’s mark as a representative.
The Panel accordingly finds that ICANN Policy ¶ 4(a)(ii) relative to “no rights or legitimate interests” has been satisfied.
Registration and Use in Bad Faith
Complainant urges that Respondent uses the disputed domain names as a means to divert Complainant’s customers to Respondent’s own website, which offers Complainant’s goods for sale and uses Complainant’s logo, along with other product identifying features. Complainant contends that Respondent’s use creates consumer confusion as to Complainant’s affiliation or sponsorship of the website. Therefore, Complainant argues that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant).
Complainant also asserts that Respondent has evidenced a pattern of registering multiple domain names reflecting Complainant’s marks and that this permits a finding of bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, 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).
Evidence from Respondent’s objective conduct should be given more weight than Respondent’s subjective claim that Complainant did not provide “proof or evidence to support the allegation that Respondent acted in bad faith.”
The Panel finds that ICANN Policy ¶ 4(a)(iii) relative to “bad faith” has been satisfied.
Having determined that all three required elements under ICANN Policy have been established, the Panel concludes that the requested relief should be granted. Accordingly, it is ORDERED that the disputed domain names <knfiltercharger.com>, <knnairfilters.com>, <goknfilters.com>, <goknairfilter.com>, and <goknairfilters.com> are hereby transferred from Respondent to Complainant.
Hon. Carolyn Marks
Dated: July 25, 2002.
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