Mitch Kneppers v. cherry king
Claim Number: FA1204001437819
Complainant is Mitch Kneppers (“Complainant”), represented by David Nelmark of Belin McCormick PC, Iowa, USA. Respondent is cherry king (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dvdcatalyst.com>, registered with GoDaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 3, 2012.
On April 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dvdcatalyst.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2012 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@dvdcatalyst.com. Also on April 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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
1) Complainant owns common law trademark rights in its DVD CATALYST mark beginning in 2006.
2) Respondent’s <dvdcatalyst.com> domain name is identical to Complainant’s DVD CATALYST mark.
3) Complainant formerly owned the disputed domain name before inadvertently allowing the domain name registration to lapse in 2008.
4) Respondent purchased the <dvdcatalyst.com> domain name in 2011.
5) Respondent uses the disputed domain name to offer a free download of a product called “DVD Catalyst.”
6) Respondent represents one of Complainant’s competitors.
7) Respondent is disrupting Complainant’s business by offering a free download of a program named “DVD Catalyst” that does not function properly.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant does not provide any evidence that it owns a trademark registration for its DVD CATALYST mark with a national trademark authority. Past panels have found that a trademark registration is not required in order for a complainant to demonstrate rights in a mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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 argues that it owns common law rights in its DVD CATALYST mark. Complainant claims that it began using the DVD CATALYST mark in association with its DVD ripper product in 2006. Complainant provides the Panel with a copy of a review of Complainant’s product from February of 2006. Complainant asserts that it registered the <dvdcatalyst.com> domain name in 2006 to use for Complainant’s official website. According to Complainant, the disputed domain name registration lapsed in 2008 due to Complainant’s web host’s negligence and third parties subsequently purchased and used the disputed domain name. While Complainant claims it created an alternative website under a different name, Complainant states that its product was still named DVD CATALYST and was still marketed under the mark. Complainant alleges that it also sold its DVD CATALYST products at the <tools4movies.com> website or at appstores, such as Handango and PocketLand. Complainant avers that it operates a social media site, <facebook.com/dvdcatalyst>, the e-mail address dvdcatalyst@gmail.com, and message boards at DroidForums.com, Xoomforums.com, and Barnes and Noble’s NOOK support forum. Complainant argues that this evidence sufficiently demonstrates Complainant’s common law rights in the DVD CATALYST mark. The Panel concludes that Complainant owns rights in the DVD CATALYST mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also 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).
Complainant contends that Respondent’s <dvdcatalyst.com> domain name is identical to Complainant’s DVD CATALYST mark. The disputed domain name differs from Complainant’s mark by the removal of the space and the addition of the generic top-level domain (“gTLD”) “.com.” Regardless of these two alterations, the Panel finds that Respondent’s <dvdcatalyst.com> domain name is identical to Complainant’s DVD CATALYST mark for the purposes of Policy ¶ 4(a)(i). See 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”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
Complainant has proven this element.
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.”).
Respondent failed to respond to this case and, therefore, failed to present any evidence that Respondent is commonly known by the <dvdcatalyst.com> domain name. Complainant argues that Respondent is not affiliated with Complainant in any way and that Complainant did not authorize Respondent to use its DVD CATALYST mark. The WHOIS information identifies the domain name registrant as “cherry king,” which the Panel determines is not similar to the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <dvdcatalyst.com> domain name under Policy ¶ 4(c)(ii). 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 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 that Respondent uses the <dvdcatalyst.com> domain name to offer a free download of DVD ripper software. Complainant claims that Respondent calls the free DVD ripper software “DVD Catalyst,” which Complainant contends creates the impression that the free software is Complainant’s DVD CATALYST product. Complainant alleges that the free software has a “crippled functionality” that hurts the goodwill of Complainant. Complainant also contends that Respondent is the agent, owner, or employee of Complainant’s competitors, including FoxReal, PavTube, and Aunsoft. In the Complaint, Complainant connects Respondent to its three competitors through the registration of its competitors’ official websites. Due to the alleged competitive relationship between Respondent and Complainant, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <dvdcatalyst.com> domain name under Policy ¶ 4(c)(iii). See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant has proven this element.
Complainant claims that Respondent is disrupting Complainant’s business. Complainant argues that Respondent is acting on behalf of Complainant’s competitors to use the <dvdcatalyst.com> domain name and resolving website to damage the goodwill associated with Complainant’s mark and products. Complainant alleges that Respondent provides a free software download under Complainant’s mark that is “low-functioning” compared to Complainant’s actual product. Complainant contends that Respondent offers this lower level product under Complainant’s mark to damage Complainant’s reputation, which would then encourage Internet users to purchase the products of Complainant’s competitors. The Panel agrees with Complainant that Respondent is disrupting Complainant’s business and the Panel concludes that Respondent registered and uses the <dvdcatalyst.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <dvdcatalyst.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 4, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page