Kimberly Kardashian v. Domain Drop S.A. (c4)
Claim Number: FA0803001169971
Complainant is Kimberly Kardashian (“Complainant”), represented by Victor
K. Sapphire, of Connolly Bove Lodge & Hutz LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kimkardashian.com>, registered with Belgiumdomains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2008.
On March 27, 2008, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <kimkardashian.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 March
31, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 21, 2008
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 postmaster@kimkardashian.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <kimkardashian.com> domain name is identical to Complainant’s KIM KARDASHIAN mark.
2. Respondent does not have any rights or legitimate interests in the <kimkardashian.com> domain name.
3. Respondent registered and used the <kimkardashian.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kimberly Kardashian, is a television actress, model and entrepreneur who appeared in several television shows, music videos, and numerous magazines including Playboy, Stuff, and Details. Complainant owns the KIM KARDASHIAN service mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,371,751 issued January 22, 2008).
Respondent registered the <kimkardashian.com> domain name on May 11, 2007 and the disputed
domain name dissolves to a web page featuring links to third-party vendors of
various goods and services, including adult-related materials.
Respondent has also
been the respondent in other UDRP arbitration, including W. Health Advantage, Inc. v. Domain Drop S.A., D2007-1111 (WIPO
Sept. 24,2007); VAG-Armaturen GmbH v. Domain Drop S.A., D2007-0673 (WIPO July 2, 2007); and Genlyte Thomas Group LLC v. Domain Drop S.A.,
D2006-1223 (WIPO Nov. 29, 2006) wherein
the disputed domain names were transferred from Respondent to the complainants.
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 alleges rights in the KIM KARDASHIAN mark based on its USPTO trademark registrations. Under the Policy, registration of a mark with an appropriate government authority, such as the USPTO, confers rights in that mark to complainant. Because Complainant’s mark was approved, the Panel determines that the relevant date for determining rights in the mark dates back to Complainant’s filing date of March 19, 2007. This date predates Respondent’s registration of the disputed domain name and the Panel finds that Complainant has successfully established rights to the KIM KARDASHIAN mark for purposes of Policy ¶ 4(a)(i). See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).
Complainant alleges that Respondent’s <kimkardashian.com> domain name is identical to the KIM KARDASHIAN mark. The disputed domain name contains Complainant’s mark in its entirety, removes the space between the words, and adds the generic top-level domain (“gTLD”) “.com.” Because every domain name must have a top-level domain and domain names do not allow for spaces between words, the Panel finds these minor alterations do not distinguish the disputed domain name from Complainant’s mark. The Panel therefore concludes that Respondent’s <kimkardashian.com> domain name is identical to Complainant’s KIM KARDASHIAN mark pursuant to Policy ¶ 4(a)(i). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panels finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent lacks rights and legitimate
interests in the <kimkardashian.com> domain name. Once
Complainant makes a prima facie case
in support of its allegations, the burden shifts to Respondent to show it does
have rights or legitimate interests under Policy ¶ 4(a)(ii). Based on the allegations in the Complaint,
the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Since Respondent has not responded to the
Complaint, the Panel may assume Respondent does not have rights or legitimate
interests. However, the Panel will
examine the record to determine if such rights or legitimate interests are
present pursuant to Policy ¶ 4(c). See
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).”); see also Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec.
30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Complainant alleges Respondent is not commonly known by the <kimkardashian.com>
domain name. The WHOIS information
identifies Respondent as “Domain Drop S.A. (c4)” and Respondent provides no
other information suggesting Respondent might be commonly known by the disputed
domain name. The Panel may assume that
Respondent’s failure to respond to the Complaint is evidence Respondent is not
commonly known by the disputed domain name.
Pursuant to Policy ¶ 4(c)(ii), the Panel concludes Respondent lacks
rights and legitimate interests in the <kimkardashian.com> domain
name. See 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent is currently using the <kimkardashian.com> domain name to resolve to a web page featuring Complainant’s mark and links to third-party websites, including adult-oriented websites. The Panel presumes Respondent is earning click-through fees for each redirected Internet user. Therefore, the Panel finds the registration and use of the <kimkardashian.com> domain name is not in connection of with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000) (“In fact, in light of the uniqueness of the name [<danmarino.com>], which is virtually identical to the Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with Complainant, which is not based in fact.”); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent’s registration and use of the
<kimkardashian.com> domain
name is in bad faith because the disputed domain name creates a likelihood of
confusion as to the affiliation between the disputed domain name and
Complainant’s mark, particularly with regard to the adult-oriented website
links. Respondent is also presumably
receiving referral fees from its web page advertisers. The Panel therefore concludes Respondent has
engaged in bad faith registration and use of the <kimkardashian.com> domain
name pursuant to Policy ¶ 4(b)(iv).
Complainant also alleges Respondent has a pattern of registering domain names to prevent to owner of a registered mark from reflecting the mark in a corresponding domain name. W. Health Advantage, Inc. v. Domain Drop S.A., D2007-1111 (WIPO Sept. 24,2007); VAG-Armaturen GmbH v. Domain Drop S.A., D2007-0673 (WIPO July 2, 2007); and Genlyte Thomas Group LLC v. Domain Drop S.A., D2006-1223 (WIPO Nov. 29, 2006). Evidence shows Respondent has been ordered numerous times to transfer the disputed domain name to the complainants, further evidence of bad faith registration and use of the <kimkardashian.com> domain name pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kimkardashian.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 12, 2008
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