Kabushiki Kaisha Kito v. Andrew Kazakoff
Claim Number: FA0810001230049
Complainant is Kabushiki
Kaisha Kito (“Complainant”), represented by John
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kito.com>, registered with Onlinenic, Inc.
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 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2008.
On October 21, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <kito.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 October 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 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 email@example.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 24, 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 <kito.com> domain name is identical to Complainant’s KITO mark.
2. Respondent does not have any rights or legitimate interests in the <kito.com> domain name.
3. Respondent registered and used the <kito.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures industrial hoist equipment and sells it under the KITO mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 24, 1969 (Reg. No. 871,724). Complainant has used the KITO mark continuously in commerce since at least as early as 1969 to promote and sell its products, and currently operates worldwide.
Respondent registered the <kito.com> domain name on December 10, 1999. The disputed domain name resolves to a website that features links to third-party websites selling products that compete with Complainant’s products; one of the links incorporates Complainant’s KITO mark.
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 has established rights in
the KITO mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See 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."); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
Respondent’s <kito.com> domain
name is identical to its KITO mark. The <kito.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 Nev.
State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <kito.com> domain name. Under Policy ¶ 4(a)(ii), if 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 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the <kito.com> domain name, and that Respondent has never been
the owner or licensee of the KITO mark.
The WHOIS record for the disputed domain name lists Respondent as “Andrew
Kazakoff.” Furthermore, Respondent has
failed to show any evidence contrary to Complainant’s contentions. Because there is no evidence that Respondent
has ever been commonly known by any variant on the KITO mark, the Panel finds
that Respondent is not commonly known by the <kito.com> domain name pursuant to Policy ¶
4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum
Respondent is using the <kito.com> domain name to host a website that features links to third-party websites selling industrial hoist products that compete with Complainant’s products. Complainant contends that Respondent receives “click-through” fees from those third-party websites, and therefore commercially benefits from the use of the disputed domain name. The Panel finds that Respondent’s use of the <kito.com> domain name to sell competing goods and collect “click-through fees” is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is intentionally diverting Internet customers to Respondent’s website resolving from the disputed domain name through the confusion caused by the similarity of the KITO mark and the <kito.com> domain name. Complainant also contends that Respondent is intentionally disrupting Complainant’s business by further diverting confused customers to third-party websites that sell competing products. The Panel finds that Respondent is disrupting Complainant’s business, and therefore has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant also contends that Respondent is gaining commercially
from this diversion by collecting click-through fees from the third-party
websites. The Panel agrees with
Complainant’s contentions that Respondent is intentionally using the disputed
domain name for commercial gain by creating a likelihood of confusion with
Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv),
the Panel finds that Respondent’s use is also evidence of Respondent’s
registration and use of the <kito.com> domain name in bad faith. See
State Fair of
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 <kito.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 8, 2008
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