Stevland Morris a/k/a Stevie Wonder, Taxi Productions, Inc. and Taxi License Corporation v. szk.com c/o Michele Dinoia
Claim Number: FA0810001229550
Complainant is Stevland Morris a/k/a Stevie Wonder, Taxi Productions,
Inc. and Taxi License Corporation (collectively
“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kjlh.com>, registered with Dotster.
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 October 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2008.
On October 16, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <kjlh.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 October 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@kjlh.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kjlh.com> domain name is identical to Complainant’s KJLH mark.
2. Respondent does not have any rights or legitimate interests in the <kjlh.com> domain name.
3. Respondent registered and used the <kjlh.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns and operates a Los Angeles-based radio station operating under the call sign letters “KJLH”. Complainant has used the KJLH mark to promote its radio broadcasts and entertainment services, including but not limited to events, contests, and promotions, since 1978.
Respondent registered the <kjlh.com> domain name on August 8, 2001. The disputed domain name resolves to a website that incorporates a search engine and features links to third-party websites.
Respondent has registered numerous domain names and has been the subject of multiple ICANN proceedings. In particular, Respondent has been found by many previous panels to have registered and used trademark-related domain names in bad faith, and as a consequence, those domain names were transferred from Respondent to the respective complainants. See, e.g., Time Warner, Inc. v. Michele Dinoia a/k/a SZK.com, FA 341272 (Nat. Arb. Forum, Dec. 3, 2004); Clinton v. Michele Dinoia a/k/a SZK.com, FA 414641 (Nat. Arb. Forum, Mar. 18, 2005); Hewlett-Packard Co. & Hewlett-Packard Dev’t Co., L.P. v. SZK.com a/k/a Michele Dinoia, FA 635480 (Nat. Arb. Forum, Mar. 7, 2006).
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 need not demonstrate its rights in a mark via
trademark registration in order to obtain UDRP standing, so long as Complainant
can demonstrate that it has sufficient common law rights through secondary
meaning under Policy ¶ 4(a)(i). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the complainant need not own a valid trademark
registration for the ZEE CINEMA mark in order to demonstrate its rights in the
mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant contends that it has
established common law rights in the KJLH mark through its continuous use of
the mark in commerce, since at least as early as 1978, to promote its radio
broadcasts and entertainment services, including the notable use of the mark as
its radio station’s call sign letters, “KJLH.”
Because of the thirty-year use of the KJLH mark by Complainant in a
major metropolitan area, and because of the nation-wide notice of the use of
the mark given by the registration of the call sign letters, the Panel finds
that, pursuant to Policy ¶ 4(a)(i), Complainant has indeed established common
law rights in the KJLH mark since at least as early as 1978. 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
BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and evidence
that there is wide recognition with the BROADCASTAMERICA.COM mark among
Internet users as to the source of broadcast services); see also Fishtech, Inc. v.
Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the
complainant has common law rights in the mark FISHTECH that it has used since
1982).
Complainant contends that
Respondent’s <kjlh.com>
domain name is identical to its KJLH mark. The <kjlh.com>
domain name differs from Complainant’s mark only in that the generic top-level
domain (gTLD) “.com” has been added to the mark. Under Policy ¶ 4(a)(i), the addition of a
gTLD is irrelevant when considering whether a domain name is identical to a
mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA
153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is
irrelevant when establishing whether or not a mark is identical or confusingly
similar, because top-level domains are a required element of every domain
name.”).
Therefore, the Panel finds that despite
the addition of the gTLD “.com,” the disputed domain name is nevertheless still
identical to Complainant’s KJLH mark, and so
Respondent’s disputed domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <kjlh.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant contends that Respondent is not commonly known
by the <kjlh.com> domain
name nor has it ever been the owner or licensee of the KJLH mark. The WHOIS record for the disputed domain name
lists Respondent as “szk.com c/o Michele Dinoia.” Because there is no evidence contrary to
Complainant’s contentions that Respondent is not known by any variant on the
KJLH mark, the Panel finds that Respondent is not commonly known by the <kjlh.com> domain name pursuant to Policy ¶ 4(c)(ii). See
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); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
The <kjlh.com> domain name resolves to a website that incorporates a search
engine and features links to third-party websites. Complainant contends that Respondent’s use of
the disputed domain name to direct Internet users to a search engine and
third-party websites is not a bona fide
offering of goods or services nor a legitimate noncommercial or fair use. The Panel agrees, and finds that Respondent’s
use of the disputed domain name is not 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 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 U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s
mark and the goodwill surrounding that mark as a means of attracting Internet
users to an unrelated business was not a bona fide offering of
goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been found by many previous panels to have
registered and used trademark-related domain names in bad faith. See,
e.g., Time Warner, Inc. v. Michele
Dinoia a/k/a SZK.com, FA
341272 (Nat. Arb. Forum, Dec. 3, 2004); Clinton
v. Michele Dinoia a/k/a SZK.com, FA 414641 (Nat. Arb. Forum, Mar. 18,
2005); Hewlett-Packard Co. &
Hewlett-Packard Dev’t Co., L.P. v. SZK.com a/k/a Michele Dinoia, FA 635480
(Nat. Arb. Forum, Mar. 7, 2006). Complainant contends that this constitutes a
pattern of registering infringing domain names, and as such, is evidence of
Respondent’s registration and use of the <kjlh.com>
domain name in bad faith. The Panel does
find that Respondent’s extensive pattern of registering infringing domain names
is evidence that Respondent has also registered and used the <kjlh.com> domain name in bad faith, pursuant to Policy ¶ 4(b)(ii). See
Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent
has a history of registering domain names that infringe on other trademark
holders' rights; therefore, Respondent's registration and use of the
<yourbigbackyard.com> domain name constitutes bad faith pursuant to
Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR
BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”);
see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23,
2000) (holding that registration of numerous domain names is one factor in
determining registration and use in bad faith).
Complainant also contends that Respondent is gaining
commercially from the diversion of Internet customers to Respondent’s website
that resolves from the <kjlh.com>
domain name, through the click-through fees that Respondent is receiving from
the third-party websites. The Panel
agrees that Respondent is intentionally using the disputed domain name for
commercial gain by creating a likelihood of confusion with Complainant’s mark,
and so the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of
the <kjlh.com> domain name for
commercial gain is also evidence of Respondent’s registration and use in bad
faith.
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 Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
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 <kjlh.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 28, 2008
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