Kia Motors America, Inc. v. Ron Johnson
Claim Number: FA1006001330935
Complainant is Kia Motors America,
Inc. (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins Riley & Scarborough, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <orlandofloridakia.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2010.
On June 21, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <orlandofloridakia.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 June 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@orlandofloridakia.com by e-mail. Also on June 22, 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 July 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <orlandofloridakia.com> domain name is confusingly similar to Complainant’s KIA mark.
2. Respondent does not have any rights or legitimate interests in the <orlandofloridakia.com> domain name.
3. Respondent registered and used the <orlandofloridakia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kia Motors of America, Inc., is a wholly owned
subsidiary and licensee of Kia Motors Corporation, and
is the sole authorized distributor of automobiles under the KIA mark in the
Respondent, Ron Johnson registered the <orlandofloridakia.com> domain name on April 15, 2007. Respondent, who has no affiliation or relationship to Complainant, has licensed the use of the domain name to a KIA dealership. According to the terms of Complainant’s dealership agreement, no dealer is permitted to use the KIA mark in a domain name.
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 has submitted evidence to show that it is a
wholly-owned subsidiary and licensee of Kia Motors
Corporation and as such possesses contractual rights in the KIA mark for
purposes of these proceedings. The Panel
finds that Complainant has established rights in the KIA mark under Policy ¶
4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,351,320 issued May 23,
2000). See Miller Brewing
Complainant argues that the <orlandofloridakia.com> domain name is confusingly similar to Complainant’s KIA mark because the domain name contains its mark entirely while adding the geographic terms “Orlando” and “Florida” as well as the generic top-level domain (“gTLD”) “.com.” Complainant asserts that the additions to its mark are not sufficient to make the domain name distinct from Complainant’s mark. The Panel agrees and finds that Respondent’s <orlandofloridakia.com> domain name is confusingly similar to Complainant’s KIA mark pursuant to Policy ¶ 4(a)(i). See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not possess rights and legitimate interests in the <orlandofloridakia.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of its allegations. Once Complainant has established a prima facie case the burden shifts to Respondent to prove that it does possess rights and legitimate interests in the <orlandofloridakia.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has established a prima facie case to support its allegations and that the burden has properly shifted to Respondent to establish its rights and legitimate interests in the <orlandofloridakia.com> domain name. Because Respondent has failed to respond to these proceedings the Panel finds that it may accept as true the allegations within the Complaint. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel will continue to analyze the evidence on record to determine whether Respondent possesses rights and legitimate interests in the <orlandofloridakia.com> domain name under Policy ¶ 4(c).
Complainant argues that according to the WHOIS information the <orlandofloridakia.com> domain name was registered under the name “Ron Johnson” and that Respondent is not commonly known by the disputed domain name. Further, Complainant argues that Respondent has never done business with or been authorized by Complainant to use its KIA mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the <orlandofloridakia.com> domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and Complainant’s assertions that it has not granted Respondent permission to use its KIA mark in a domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant submits evidence to show that Respondent is using the <orlandofloridakia.com> domain name to divert Internet users to one of Complainant’s authorized automobile dealerships in violation of Complainant’s agreement with that dealership. Complainant contends that such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain name to divert Internet users to a website in violation of Complainant’s agreement with one of its authorized automobile dealerships is not a use in connection with 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). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use). .
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b) but to the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Use
of the Kia mark by a dealer is unauthorized and a violation of the dealer's
agreement with Complainant and therefore in bad faith. Kia Motors America, Inc. v. Curtis Corp., FA 1322680 (Nat. Arb.
Forum June 9, 2010). Thus, the similar
unauthorized use by a third-party, likewise
constitutes bad faith use and registration of the domain name. See Groupe Auchan v. Cynkar, D2009-0314 (WIPO May 11, 2009) ("The fact that
the disputed domain names now direct to one of the Complainant's websites
“www.group-auchan.com” does not diminish the fact that they are used in bad
faith. This is not a legitimate offer
of goods or services. Respondent is not authorized to use Complainant's
trademark AUCHAN in any way. Beside this the Complainant has no control over
this re-direction which could therefore be changed by the sole will of
Respondent at any time."); see also
Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum
Dec. 2, 2002) (finding that the respondent, through the use of the
complainant’s mark to redirect Internet users to a website selling the
complainant’s product, placed itself without the complainant’s consent in a
preferred position with respect to other distributors, which caused consumer
confusion and evidenced bad faith registration and use of the domain
name). Therefore, the Panel finds that
Respondent registered and is using the disputed domain name in bad faith under
Policy ¶ 4(a)(iii).
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 <orlandofloridakia.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 23, 2010
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