Kessler Foundation v. Gundula Femmer
Claim Number: FA1102001370570
Complainant is Kessler Foundation (“Complainant”), represented by Catherine M. Clayton of Gibbons P.C., New York, USA. Respondent is Gundula Femmer (“Respondent”), represented by Daniel Florian of v. Nieding Ehrlinger Marquardt, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kmrrec.org>, registered with Network Solutions LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 2, 2011.
On February 1, 2011, Network Solutions LLC confirmed by e-mail to the National Arbitration Forum that the <kmrrec.org> domain name is registered with Network Solutions LLC and that Respondent is the current registrant of the names. Network Solutions LLC has verified that Respondent is bound by the Network Solutions LLC 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 February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@kmrrec.org. Also on February 3, 2011, 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 March 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Respondent has submitted correspondence through Respondent's attorney which does not meet the requirements of a Reply. Notwithstanding, in the interests of justice and equity the undersigned has taken the contents thereof into consideration in the making of this decision.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kmrrec.org> domain name is identical to Complainant’s KMRREC mark.
2. Respondent does not have any rights or legitimate interests in the <kmrrec.org> domain name.
3. Respondent registered and used the <kmrrec.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kessler Foundation, is affiliated with the Kessler Medical Rehabilitation Research and Education Corporation, known as KMRREC, which was incorporated in 1998. Complainant uses the KMRREC mark in connection with its provision of medical research studies and related literature, focusing on helping to improve the lives of people suffering from disabilities resulting from stroke, spinal cord and traumatic brain injuries, multiple sclerosis and other conditions. Complainant originally registered the disputed domain on January 9, 1998. Some time prior to November 19, 2010, the disputed domain name was transferred to Respondent.
Respondent, Gundula Femmer, registered the disputed domain name on a date prior to November 19, 2010. The disputed domain name resolves to Respondent’s website which purports to provide medical rehabilitation research and education.
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 does not have a trademark registration for its KMRREC mark with a governmental trademark authority. The Panel finds that a trademark registration is unnecessary so long as Complainant can prove common law rights in its mark through the establishment of sufficient secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts that it has been using the KMRREC mark since 1998 in connection with its Kessler Medical Rehabilitation Research and Education Corporation. Complainant contends the KMRREC mark is used in connection with Complainant’s well-known provision of medical research studies and related literature which is published in countless professional journals, authored and edited medical books, and has also been presented in speeches, posters, and abstracts throughout the United States and overseas. Complainant contends that on January 9, 1998, Complainant registered the <kmrrec.org> domain name on its behalf and used the domain name to provide information about its services for several years. The Panel finds that Complainant has provided sufficient evidence of its rights in the KMRREC mark pursuant to Policy ¶ 4(a)(i) by establishing sufficient secondary meaning in the mark, thus giving Complainant common law rights in its KMRREC mark. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Complainant asserts that Respondent’s <kmrrec.org> domain name is identical to Complainant’s KMRREC mark. The Panel agrees and finds that the lone addition of the generic top-level domain (“gTLD”) “.org” does not render the disputed domain name distinct from Complainant’s mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden shifts to Respondent to prove that it does have rights or legitimate interests in the <kmrrec.org> domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that Complainant has satisfied its burden. The Panel also finds that Respondent’s failure to respond to these proceedings results not only in Respondent not upholding its burden but also allows the Panel to infer that Complainant’s allegations are true. 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.”). However, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
The WHOIS information lists the registrant for the <kmrrec.org> domain name as “Gundula Femmer.” The Panel has examined the record and cannot find any evidence to suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <kmrrec.org> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding 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).
Complainant argues, and submits evidence to support the fact, that Respondent uses the disputed domain name to resolve to a website that purports to provide medical rehabilitation research and education. The Panel finds that Respondent’s use of the identical disputed domain name to promote Respondent’s competing services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s registered and uses the disputed domain name to offer information on Respondent’s directly competing business. The Panel finds that this constitutes a disruption of Complainant’s business and is evidence of bad faith 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding 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)).
Complainant argues that Respondent’s registration and use of the disputed domain name for a medical rehabilitative research and education operation was clearly intended for commercial gain. Therefore, Complainant argues, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to Complainant’s sponsorship, affiliation or endorsement of the domain name and resolving website. The Panel agrees and supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <kmrrec.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 1, 2011
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