Knives Plus, Inc. v. William R. Williamson
Claim Number: FA0910001287143
Complainant is Knives Plus, Inc. (“Complainant”), represented by Chris
Stewart, of Law Office of Chris Stewart, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bmpknivesplus.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2009.
On October 2, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bmpknivesplus.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2009 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@bmpknivesplus.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has continuously
used the KNIVES PLUS service mark ince 1987 in connection with retail stores
featuring cutlery and cutlery accessories.
Complainant holds a registration
of the KNIVES PLUS mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,311,820, issued January 25, 2000).
Complainant has not
licensed or otherwise authorized Respondent to use the KNIVES PLUS service
mark.
Respondent registered the <bmpknivesplus.com> domain name on February 1, 2007.
The disputed domain name resolves to a website which offers products that directly compete with Complainant’s cutlery business.
Respondent’s <bmpknivesplus.com> domain name is confusingly similar to Complainant’s KNIVES PLUS mark.
Respondent does not have any rights to or legitimate interests in the domain name <bmpknivesplus.com>.
Respondent registered and uses the <bmpknivesplus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has demonstrated rights in the KNIVES PLUS service
mark through its registration of the mark with USPTO sufficient for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Respondent’s <bmpknivesplus.com> domain name contains Complainant’s entire KNIVES PLUS mark, and merely adds the letters “bmp” and the generic top-level domain (“gTLD”) “.com.” These additions do not sufficiently distinguish the disputed domain name from Complainant’s mark to avoid a finding of confusing similarity with the competing mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.
See also L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding the <xxxbarelylegal.com> domain name to be confusingly similar to a complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition); further see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant has made such a showing, the burden shifts to Respondent to establish that it has rights to or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or interests in a domain name).
Complainant has made out a prima facie showing under Policy ¶ 4(a)(ii). Because no response to the Complaint was filed, we are entitled to conclude that Respondent has no rights or interests in the disputed domain name which are cognizable under the Policy. 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).
We will nonetheless examine the record before us to determine if there is in it any basis for concluding that any such rights or interests exist in Respondent.
We begin by observing that there is no dispute as to the
allegation of the Complaint to the effect that Respondent’s <bmpknivesplus.com> domain name
resolves to a website that markets products which directly compete with
Complainant’s cutlery products. In the
circumstances here presented, we may comfortably presume that Respondent
receives income in the form of “click-through” or similar fees for each
Internet user who visits the links displayed on the website to which the
disputed domain resolves. On this record we conclude that Respondent’s use of
the disputed domain name is not 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).
We also note that the WHOIS information for the <bmpknivesplus.com> domain name lists
the registrant only as “William R. Williamson,” and that Complainant contends, and
Respondent does not deny, that Complainant has not licensed or otherwise
authorized Respondent to use the KNIVES PLUS mark. Therefore, we conclude that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that a respondent was not commonly known by
disputed domain names where the pertinent WHOIS information, as well as other
information in the record, gave no indication that that respondent was commonly
known by the disputed domain names, and where a complainant had not authorized
that respondent to register a domain name containing its registered mark); see
also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that a respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the relevant WHOIS information, suggesting
that that respondent was commonly known by the disputed domain name).
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
We have already established that the website resolving from the <bmpknivesplus.com> domain name offers cutlery products that compete with Complainant’s cutlery business. Respondent’s use of the disputed domain name, as alleged, thus disrupts Complainant’s business. Such disruption constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business).
Furthermore, Respondent’s use of a domain name which is
confusingly similar to Complainant’s mark creates a likelihood of confusion as
to Complainant’s possible affiliation with the disputed domain. Respondent’s presumed commercial gain from
this likelihood of confusion constitutes further evidence of bad registration
and use of the disputed domain under Policy ¶ 4(b)(iv). See Dell Inc. v.
Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23,
2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where a respondent
was using the <dellcomputerssuck.com> domain name to divert Internet users
to a respondent’s website offering competing computer products and services);
see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that a respondent’s use of the <arizonashuttle.net> domain name,
which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet
traffic to that respondent’s website offering competing travel services ran
afoul of Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bmpknivesplus.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 7, 2009
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