Kelly Properties, Inc. v. PabloPalermao
Claim Number: FA0804001177176
Complainant is Kelly Properties, Inc. (“Complainant”), represented by Christopher
M. Brock, of Harness, Dickey & Pierce, P.L.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kelly-services.com>, registered with Moniker Online Services, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 6, 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@kelly-services.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <kelly-services.com> domain name is confusingly similar to Complainant’s KELLY SERVICES mark.
2. Respondent does not have any rights or legitimate interests in the <kelly-services.com> domain name.
3. Respondent registered and used the <kelly-services.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kelly Properties, Inc., is a wholly-owned subsidiary of Kelly Services, Inc., which operates as a personnel services company in 30 countries. Complainant furnishes a variety of workers for businesses, including full-time, part-time, skilled, and unskilled employees. Since 1965, Complainant has operated under the KELLY SERVICES mark (Reg. No. 834,892 issued September 5, 1967), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <kellyservices.com> domain name in conjunction with its provision of online employment databases.
Respondent registered the <kelly-services.com>
domain name on
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.
The Panel finds that Complainant’s registration of the KELLY SERVICES mark with the USPTO constitutes sufficient evidence of Complainant’s rights in the mark in order to grant standing under the UDRP and Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent registered the <kelly-services.com>
domain name by maintaining Complainant’s complete KELLY SERVICES mark, while
merely adding a hyphen between “Kelly” and “Services,” as well as the generic
top-level domain (“gTLD”) “.com.” The addition
of “.com” is immaterial in a Policy ¶ 4(a)(i)
analysis. Likewise, the addition of a
hyphen within Complainant’s complete mark cannot be said to constitute a
sufficient distinction, as the sole dominant feature of the instant disputed
domain name remains Complainant’s mark.
Therefore, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). 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 Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June
22, 2000) (finding it obvious that the domain name <easy-jet.net> was
virtually identical to the complainant's EASYJET mark and therefore that they
are confusingly similar); see also Sports Auth. Mich. Inc. v. Batu 5,
FA 176541 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant has thereby set forth a sufficient prima facie case supporting its allegations, Respondent receives the burden to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(c)(i) and (iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also 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”).
Respondent’s disputed domain name merely diverts Internet users to a website that features a search function and third-party links to Complainant’s competitors. Respondent presumably receives referral fees from the third-party advertisements, hence it would be difficult to construe 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). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Respondent offers no evidence to suggest that it is commonly
known by the <kelly-services.com> domain name. The registrant of the disputed domain name is
listed as “PabloPalermao,” which bears no resemblance or likeness to the
disputed domain name. Therefore, the
Panel finds that Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369
(Nat. Arb. Forum
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <kelly-services.com>
domain name
in order to disrupt Complainant’s business.
Respondent registered the disputed domain name by incorporating a
confusingly similar version of Complainant’s mark—virtually identical but for
one hyphen. Moreover, Respondent’s
corresponding website features links to Complainant’s direct competitors. The Panel infers Respondent’s intent to
divert Internet users seeking Complainant, to the benefit of Complainant’s
competitors. Thus, the Panel finds that
Respondent engaged in bad faith registration and use of the disputed domain
name under Policy ¶ 4(b)(iii), in that Respondent primarily intended to disrupt
Complainant’s operations. See EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum
Respondent’s domain name
bears Complainant’s entire mark, unaltered except for the minor addition of a
hyphen. Internet users that seek
Complainant’s business are likely to be siphoned off through the instant
disputed domain name to Respondent’s corresponding website, which features
links to Complainant’s direct competitors.
Respondent presumably receives a monetary benefit from these
advertisements via referral fees, which was likely the commercial impetus for
the disputed domain name registration.
Respondent has therefore created a substantial likelihood of confusion
as to the source and affiliation of the disputed domain name and corresponding
website, given the prominent placement of Complainant’s mark in the disputed
domain name. Therefore, the Panel finds
that Respondent registered the disputed domain name in bad faith and use under
Policy ¶ 4(b)(iv).
See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the complaint,
it may be concluded that the respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum
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 <kelly-services.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 21, 2008
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