national arbitration forum

 

DECISION

 

Kabushiki Kaisha Kito v. Andrew Kazakoff

Claim Number: FA0810001230049

 

PARTIES

Complainant is Kabushiki Kaisha Kito (“Complainant”), represented by John Berryhill, Pennsylvania, USA.  Respondent is Andrew Kazakoff (“Respondent”), Belize.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kito.com>, registered with Onlinenic, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

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 postmaster@kito.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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).

 

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 Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Therefore, the Panel finds that despite the addition of the gTLD “.com,” the disputed domain name is nevertheless still identical to Complainant’s KITO mark, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

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.

 

Registration and Use in Bad Faith

 

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 Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); 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.

 

DECISION

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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