CCA Global Partners, Inc. v Kahians ApplianceOne
Claim Number: FA1104001383956
Complainant is CCA Global Partners, Inc. (“Complainant”), represented by Alan Nemes of Husch Blackwell LLP, Missouri, USA. Respondent is Kahians ApplianceOne (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightingone.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 April 15, 2011; the National Arbitration Forum received payment on April 15, 2011.
On April 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lightingone.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 April 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@lightingone.com. Also on April 19, 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 May 17, 2011, 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 (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 <lightingone.com> domain name is identical to Complainant’s LIGHTING ONE mark.
2. Respondent does not have any rights or legitimate interests in the <lightingone.com> domain name.
3. Respondent registered and used the <lightingone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant describes its Lighting One business as “the largest independent specialty retailer in the United States.” It sells 2,500 products in Lighting One stores in the United States and Canada. It holds a number of trademark registrations for the LIGHTING ONE mark. The LIGHTING ONE mark has been in continuous use and has acquired sufficient secondary meaning to have acquired common law rights dating back to 1991.
Respondent Kahians ApplianceOne registered the disputed domain name in November 1999. Respondent’s <lightingone.com> domain name directs Complainant’s intending customers away from Complainant to Respondent’s own commercial website at the <kahians.com> domain name, which Respondent uses in connection with its business that sells home appliance goods
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 alleges that it owns trademark registrations for the LIGHTING ONE mark with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”):
USPTO
Reg. No. 3,438,408 issued May 27, 2008;
Reg. No. 3,610,531 issued April 21, 2009;
Reg. No. 3,878,175 issued November 16, 2010; and
CIPO
Reg. No. TMA746,980 issued September 4, 2009.
The Panel finds that registering a mark with the USPTO and other trademark authorities firmly establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant also argues common law rights in the mark dating back to 1991 due to the continuous use of the mark and subsequent acquisition of secondary meaning by Complainant’s predecessor in interest. Complainant asserts that it and its predecessors in interest began using the LIGHTING ONE mark in connection with lighting fixtures and related services as early as 1991. As evidence of this, Complainant provides a business status report from the New Jersey Secretary of State, which shows that Complainant’s predecessor in interest filed incorporation documents under the name “Lighting One, Inc.” with the New Jersey Secretary of State in October of 1990. Complainant states that it purchased all of Lighting One, Inc.’s common law rights in and to the LIGHTING ONE mark in 2007 and provides the assignment agreement as evidence. Complainant alleges that its LIGHTING ONE member showrooms currently have approximately $500 million in sales collectively under the LIGHTING ONE mark. Complainant also contends that it markets its LIGHTING ONE mark at the <ccaglobalpartners.com/index.php/ourbrands/LightingOne> domain name. Complainant asserts that its sales figures and marketing efforts show that the LIGHTING ONE mark is well known and serves as an identifier source of Complainant’s goods and services. Based on this evidence, the Panel finds that Complainant has provided sufficient evidence of continuous use and the acquisition of secondary meaning sufficient to prove common law rights in the LIGHTING ONE mark dating back to 1991.
Complainant alleges that Respondent’s <lightingone.com> domain name is identical to Complainant’s LIGHTING ONE mark because the disputed domain name only alters Complainant’s mark by deleting the space between terms and adding the generic top-level domain (“gTLD”) “.com.” The Panel determines that neither of these two changes has any effect on differentiating the disputed domain name. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Thus, the Panel concludes that Respondent’s <lightingone.com> domain name is identical to Complainant’s LIGHTING ONE mark pursuant to Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has established its required prima facie case and Respondent has failed to submit a Response to these proceedings. Nevertheless, the Panel will examine the record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <lightingone.com> domain name as there is no company other than Complainant that operates under the LIGHTING ONE mark in the United States. The WHOIS information for the disputed domain name lists the registrant as “Kahians ApplianceOne,” which the Panel finds does not appear connected to the disputed domain name. The Panel accordingly determines that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant contends that Respondent’s <lightingone.com> domain name directs Complainant’s intending customers away from Complainant as it redirects to Respondent’s own commercial website at the <kahians.com> domain name, which Respondent uses in connection with its business that sells home appliance goods. Complainant argues that Respondent’s marketing of its business and selling of its goods under Complainant’s mark is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel agrees. See Bank of Am. Corp. v. Northwest 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).”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Complainant also contends that Respondent’s <lightingone.com> domain name previously resolved to a “link farm” designed to earn Respondent “click-through” advertising revenue. The Panel finds that using the disputed domain name in connection with a pay-per-click link directory is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Constellation Wines U.S., Inc. v. Texas Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant alleges that when it contacted Respondent to try to resolve this dispute, Respondent offered to transfer the disputed domain name to Complainant on the condition that Complainant would grant membership status to Respondent and waive the membership fees. Complainant argues that this constitutes an offer to sell the disputed domain name to Complainant, which the Panel finds is evidence that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See American Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent offered to sell the <lightingone.com> domain name to Complainant in exchange for free membership status with Complainant. Complainant argues that Respondent’s offer thus demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii), and the Panel agrees. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent’s requests for money as well as advice from professors at the complainant’s university in exchange for transferring the disputed domain name suggested bad faith registration and use under Policy ¶ 4(b)(i)); see Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant asserts that Respondent’s <lightingone.com> domain name previously resolved to a “link farm” that generated revenue for Respondent through pay-per-click fees. The Panel determines that registering and using Complainant’s mark in a disputed domain name to attract and confuse Internet users for the purpose of profiting from pay-per-click links represents bad faith registration and use according to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant contends that Respondent’s <lightingone.com> domain name currently redirects to Respondent’s own commercial website at the <kahians.com> domain name that it uses in connection with its business selling home appliance goods. The Panel finds that Respondent’s use of the LIGHTING ONE mark in a domain name to misleadingly attract Complainant’s consumers and create confusion as to the affiliation of Respondent’s website in order to profit from Respondent’s commercial site demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 <lightingone.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 25, 2011
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