Kia Motors America, Inc. v. Curtis Corp
Claim Number: FA1005001322680
Complainant is Kia Motors America, Inc. (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins Riley & Scarborough, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <orlandokia.com> and <kiaoforlando.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2010.
On May 4, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <orlandokia.com> and <kiaoforlando.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@orlandokia.com and postmaster@kiaoforlando.com. Also on May 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Respondent requested additional time in which to submit a Response. The Forum granted that request for an extension, setting a new deadline of June 1, 2010 by which Respondent could file a Response to the Complaint. Respondent failed to submit a Response. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <orlandokia.com> and <kiaoforlando.com> domain names are confusingly similar to Complainant’s KIA mark.
2. Respondent does not have any rights or legitimate interests in the <orlandokia.com> and <kiaoforlando.com> domain names.
3. Respondent registered and used the <orlandokia.com> and <kiaoforlando.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kia Motors
America, Inc., as a wholly owned subsidiary of South Korea-based Kia Motors
Corporation, is the sole authorized distributor of KIA brand automobiles in the
Respondent, Curtis Corp, registered the <kiaoforlando.com> domain name on March 25, 2002 and the <orlandokia.com> domain name on June 7, 2002. Neither disputed domain name is being used by Respondent; both disputed domain names are being leased by Respondent without Complainant’s authorization to a third party who is using the disputed domain names in connection with its business as a KIA dealer.
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 is a licensee of
five trademark registrations with the USPTOowned by its parent company for the
KIA marks (e.g., Reg. No. 1,723,608
issued October 13, 1992). In addition,
Complainant itself owns three USPTO trademark registrations for the KIA marks (e.g., Reg. No. 3,101,388 issued June 6,
2006). The Panel finds that
Complainant’s license as a wholly owned subsidiary to use the KIA marks owned
by its parent company is sufficient to establish Complainant’s rights in the
KIA marks for the purposes of Policy ¶ 4(a)(i).
See
Complainant alleges that Respondent’s <orlandokia.com> and <kiaoforlando.com> domain names are
confusingly similar to Complainant’s KIA mark because both disputed domain names
have Complainant’s KIA mark as the primary element of the domain name. The only differences are that both disputed
domain names include the geographic modifiers “
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In alleging that Respondent lacks rights and legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) requires that Complainant first present a prima facie case against Respondent. The Panel finds that Complainant has satisfied its burden in this regard, thereby transferring the burden to Respondent to now demonstrate rights and legitimate interests. Respondent has not contested the allegations of Complainant, however, and this allows the Panel to hold Complainant’s contentions as true. The Panel may infer from Respondent’s silence that Respondent lacks all rights and legitimate interests in the disputed domain names. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel has decided, however, to consider all the evidence in the record to make a complete determination on Respondent’s rights and legitimate interests in light of the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not commonly known
by the <orlandokia.com> and
<kiaoforlando.com> disputed domain
names, which is one indicator of Respondent’s lack of rights and legitimate
interests. The WHOIS information for the
disputed domain names lists the registrant as “Curtis Corp,” a name which
indicates no affiliation with the disputed domain names. The Panel finds that such lack of association
between the disputed domain names and Respondent is evidence of Respondent’s
lack of rights and legitimate interests in the disputed domain names under
Policy ¶ 4(c)(ii).
See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name); see also
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds 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 <orlandokia.com> and <kiaoforlando.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 9, 2010
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