KF Licensing, Inc. v. Sue Dumke
Claim Number: FA1012001364096
Complainant is KF Licensing, Inc. (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey, USA. Respondent is Sue Dumke (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purelovejewels.com>, registered with GoDaddy.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 21, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <purelovejewels.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2011 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@purelovejewels.com. Also on December 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 January 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <purelovejewels.com> domain name is confusingly similar to Complainant’s PURE LOVE mark.
2. Respondent does not have any rights or legitimate interests in the <purelovejewels.com> domain name.
3. Respondent registered and used the <purelovejewels.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, KF Licensing, Inc., owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its PURE LOVE mark (Reg. No. 2,821,424 issued March 9, 2004) in connection with the sale of jewelry.
Respondent, Sue Dumke, registered the <purelovejewels.com> domain name on August 21, 2008. The disputed domain name resolves to a website selling and marketing jewelry that competes with the jewelry offered by Complainant.
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 holds a trademark registration with the USPTO for its PURE LOVE mark (Reg. No. 2,821,424 issued March 9, 2004). Both Respondent and Complainant reside in the United States. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel held that “[a]s the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).” Similarly, in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO. Based on this precedent, the Panel finds that Complainant has established rights in its PURE LOVE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <purelovejewels.com> domain name is confusingly similar to Complainant’s PURE LOVE mark. The disputed domain name removes the space separating the terms of the mark and adds the descriptive term “jewels” and the generic top-level domain (“gTLD”) “.com.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel determined that the “[e]limination 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).” Moreover, in Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), the past panel found confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.” Therefore, the Panel concludes that Respondent’s <purelovejewels.com> domain name is confusingly similar to Complainant’s PURE LOVE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <purelovejewels.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Thus, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <purelovejewels.com> domain name. Complainant has not authorized, consented, or granted permission to Respondent for Respondent’s use of Complainant’s PURE LOVE mark. The WHOIS information identifies the domain name registrant as “Sue Dumke,” which is not similar to the disputed domain name. The Panel fails to find any evidence presented by Respondent, or in the record, that would support a finding that Respondent is commonly known by the <purelovejewels.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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. In the same way, in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel determined that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known by the <purelovejewels.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s <purelovejewels.com> domain name resolves to a website that markets and sells competing jewelry products. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the prior panel held that “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” Correspondingly, the panel in Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) concluded that “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.” Therefore, the Panel determines that Respondent’s use of the <purelovejewels.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the mark under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <purelovejewels.com> domain name to resolve to a website that markets and sells jewelry products that directly compete with Complainant’s jewelry products. Internet users interested in Complainant’s jewelry may purchase competing jewelry from Respondent due to Respondent’s use of the confusingly similar disputed domain name. In Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003), determined that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with.” In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel held that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). Based on this precedent, the Panel holds that Respondent’s <purelovejewels.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent commercially benefits from the sale of jewelry at the website resolving from the <purelovejewels.com> domain name. Respondent’s use of the confusingly similar disputed domain name likely creates confusion among Internet users as to Complainant’s affiliation with the disputed domain name, resolving website, and featured jewelry. Respondent likely profits from that confusion. Moreover, in Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel found that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Similarly, in Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000), the panel determined bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark. Thus, the Panel concludes Respondent’s registration and use of the <purelovejewels.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purelovejewels.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 26, 2011
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