Max Hefter v. Kvvk Productions
Claim Number: FA1005001324171
Complainant is Max Hefter (“Complainant”), represented by Daniel S. Kirshner, New Jersey, USA. Respondent is Kvvk Productions (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cottonlove.com>, registered with NORDNET.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 12, 2010.
On May 17, 2010, NORDNET confirmed by e-mail to the National Arbitration Forum that the <cottonlove.com> domain name is registered with NORDNET and that Respondent is the current registrant of the name. NORDNET has verified that Respondent is bound by the NORDNET 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 25, 2010, the Forum served the French and English language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@cottonlove.com. Also on May 25, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <cottonlove.com> domain name is identical to Complainant’s COTTON LOVE mark.
2. Respondent does not have any rights or legitimate interests in the <cottonlove.com> domain name.
3. Respondent registered and used the <cottonlove.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Max Hefter, owns
the mark COTTON LOVE, registered with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,973,140 issued July 19, 2005), and used to sell
cotton bed sheets, towels and bathrobes.
Respondent, Kvvk Productions, registered the disputed domain on July 29, 1999. The disputed domain name resolves to an inactive website.
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 asserts rights in its COTTON LOVE mark based on its registration of the mark with the USPTO (Reg. No. 2,973,140 issued July 19, 2005). The Panel finds that Complainant’s registration of its COTTON LOVE mark with the USPTO is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <cottonlove.com>
domain name
is identical to Complainant’s COTTON LOVE mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name incorporates the entirety of Complainant’s mark and merely eliminates the
space between the words in Complainant’s mark and adds the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the elimination of the spaces between words in Complainant’s makr and the
addition of a gTLD are not sufficient to overcome a finding of confusing
similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop.
Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms
and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i); see
also U.S. News & World
Report, Inc. v. Zhongqi, FA 917070
(Nat. Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <cottonlove.com>
domain name is identical to
Complainant’s COTTON LOVE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisified.
Because of the reasons the Panel gives in its discussion below of Policy ¶ 4(a)(iii), the Panel declines to analyze Policy ¶ 4(a)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant argues that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) as Respondent’s disputed domain name fails to resolve to an active website. However, the Panel finds that Respondent’s registration of the <cottonlove.com> domain name predates Complainant’s rights in the mark. Respondent registered the <cottonlove.com> domain name on July 29, 1999. Complainant registered the COTTON LOVE mark with the USPTO on July 19, 2005. According to the USPTO trademark registration, Complainant’s trademark application was filed on March 31, 2003 and Complainant indicates a first use in commerce date of December 28, 2004. Complainant does not provide any evidence that demonstrates that Complainant used the COTTON LOVE mark prior to Respondent’s registration of the <cottonlove.com> domain name. Therefore, the Panel cannot find that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Policy ¶ 4(a)(iii) is not satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cottonlove.com> domain name not be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 30, 2010
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