Kingston Technology Corporation v. c/o Asiakingston.com
Claim Number: FA1209001464515
Complainant is Kingston Technology Corporation (“Complainant”), represented by J. Andrew Coombs, Esq. of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is c/o Asiakingston.com (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <asiakingston.com>, registered with Domain.com, LLC.
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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2012; the National Arbitration Forum received payment on September 26, 2012.
On September 26, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <asiakingston.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 September 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@asiakingston.com. Also on September 26, 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.
A timely Response was received and determined to be complete on October 3, 2012.
On October 6, 2012 an Additional Submission was filed by Complainant.
On October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This complaint is based upon Complainant’s long time use and irrefutable ownership of the KINGSTON trademarks since at least 1992. Complainant alleges it has been present throughout the world, especially in Asia, where in 1996 it established its first Far East manufacturing facility in Hsin- Chu, Taiwan. Complainant likewise relies herein on its domain name <kingston.com> registered since August 30, 1993.
Complainant’s main contentions are as follows:
i. Respondent is using the disputed domain name to market and sell competing goods, thus disrupting Complainant’s business in bad faith.
ii. Respondent is profiting from its use of the KINGSTON trademark in the disputed domain name by attracting Internet users to the resolving website where Respondent sells competing products in bad faith.
iii. Respondent had both constructive and actual knowledge of Complainant’s rights in the KINGSTON trademark, and therefore registered and is using the disputed domain name in bad faith.
Respondent’s contentions are as follows:
1. Respondent, Asia Kingston Limited, is only a “trading register in HK and selling Tablet PC, Speaker and docking station legally.”
2. Respondent sold MTV products, which was a line of tablet PCs, headphones, earphone speakers and speaker bags, USB, etc. Respondent’s brand stopped two years ago and is not in competition with Complainant.
3. Respondent has never produced any products under the KINGSTON trademark.
1. Respondent does not even attempt to suggest that there is no confusing similarity between the disputed domain name and Complainant’s trademark.
2. Respondent has not established that it is commonly known by the disputed domain name.
3. Respondent is a competitor of Complainant and sells competing products.
4. Respondent’s lack of use of the Domain Name for at least two years supports a finding of bad faith.
5. Respondent had actual knowledge of Complainant’s rights as evidenced by the statement that it has not created products under the KINGSTON trademark.
1. Complainant owns the KINGSTON trademark in the United States of America and Hong Kong, since before the disputed domain name was registered by Respondent.
2. Respondent was aware of the Complainant’s rights in the KINGSTON trademark, yet it incorporated it in the disputed domain name. Thus, Respondent used the KINGSTON trademark to create a likelihood of confusion aimed to divert consumers to Respondent’s offered goods.
3. Respondent has never been commonly known by the disputed domain name or the KINGSTON trademark.
4. Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the KINGSTON trademark, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.
5. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
6. Complainant and Respondent offer competitive goods since they both offer technological devices within international class 9. Therefore, Complainant and Respondent are competitors in the technology industry.
7. Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark due to the goods offered in its website.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
Complainant contends to be the owner of the KINGSTON trademark in the United States of America and Hong Kong, which has been continuously used since 1992 to identify computer equipment; namely, add-on enhancement boards and memory expansion boards for personal computers, portable hard disks and data storage devices.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the KINGSTON trademark. Exhibits F to the Complaint include:
· United States Trademark Registration No. 1,703,005 issued on July 28, 1992, for “computer equipment; namely, add-on enhancement boards and memory expansion boards for personal computers, portable hard disks and data storage devices”;
· Hong Kong’s Trade Marks Registry, Intellectual Property Department Registration No. 2003B06167 issued on May 16, 2003, for “memory expansion boards and modules, microprocessor upgrade boards, portable disk drives and tape storage memories, CD ROM drives”.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated goods. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]
Thus, Complainant established its rights in the KINGSTON trademark.[3]
Therefore, the Panel concludes that Complainant has demonstrated rights in the KINGSTON trademark for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark
Complainant alleges that the disputed domain name incorporates the KINGSTON trademark, adding only the geographical descriptive term “Asia” and the generic top-level domain name “.com”. According to the Complainant, these changes are not enough to avoid a likelihood of confusion with the KINGSTON trademark.
On the first place, before establishing whether or not the disputed domain name <asiakingston.com> is confusingly similar to the Complainant’s KINGSTON trademark, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[4]. Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function[5].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the KINGSTON trademark, by the disputed domain name <asiakingston.com>, respectively, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[6]. Especially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the data storage devices’ manufacturer.
In addition, the Panel agrees with the Complainant on the conclusion that including the term “Asia” at the beginning of the disputed domain name is not sufficient to make the disputed domain name different from the KINGSTON trademark.
In fact, “Asia” is the name of a continent, thus it is a geographical indication. Taking into account Complainant’s presence in Asia, the disputed domain name is likely to be understood by consumers as an Asian division of Complainant’s business. Respondent merely adds a descriptive expression “Asia” to the distinctive KINGSTON trademark. This addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the trademark. Hence, the disputed domain name should be deemed as confusingly similar to the registered trademark[7].
In this case, the consumer creates an obvious relationship between the trademark and the disputed domain name that contains it, as the expression “Asia” relates to a geographical extension. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[8].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[9]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name <asiakingston.com> because of the following: i) Respondent has not been authorized by Complainant to use the KINGSTON trademark in any manner; ii) Respondent registered and uses the disputed domain name to infringe Complainant’s rights in the KINGSTON trademark and to trade off Complainant’s good will; iii) Respondent is Complainant’s competitor within since it offers the same class of goods manufactured and sold by Complainant; iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain names offer competing goods; and v) Respondent is not commonly known by the disputed domain name.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that it is only selling Tablet PC, Speaker and docking stations and has never produced any products under the KINGSTON trademark.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name <asiakingston.com>. Simply stating what it sells and where it sells it, is not evidence of Respondent’s rights or legitimate interest in them.
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, because offering competing goods with Complainant’s trademark is directed to capitalize Complainant’s KINGSTON trademark goodwill by attracting internet users to its disputed domain names where Respondent sells competing products[10]. Complainant asserts its KINGSTON trademark is well-known; however, there is no evidence in the file regarding KINGSTON trademark’s notoriety.
The Panel conducted Ex Officio searches in the search engines Google and BING to confirm that Respondent is not commonly known by the disputed domain name <asiakingston.com>[11], concluding that the respondent was not and has never been commonly known by the disputed domain name, which fails to comply with the defense set forth under Policy ¶ 4(c)(ii).
Therefore, the second requirement of paragraph 4(b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
On September 5, 2012, Complainant sent Respondent a cease and desist letter (Exhibit J to the Complaint), requesting Respondent to transfer the disputed domain name. According to Complainant, Respondent did not reply to the letter. However, on September 26, 2012, according to the WHOIS information[12] Respondent updated the content of the disputed domain name.
On Exhibit H to the Complaint, Complainant proved the content of the disputed domain name. Notwithstanding, once the Panel conducted an Ex Officio review of the disputed domain name, no MTV product was found. Thus, it is possible to conclude that Respondent was aware of the exact kind of goods Complainant manufactures and removed those from the web page after receiving the cease and desist letter in order to justify its bad faith behaviour.
However, Respondent is still using the disputed domain name to market and sell competing goods (Exhibit H to the Complaint)[13].
Hence, refusing to answer the cease and desist letter and refusing to transfer the disputed domain name to the legitimate owner of the KINGSTON trademark, even though Respondent has actual knowledge of Complainant’s rights over the KINGSTON trademark and using the disputed domain name to market and sell competing goods, is evidence that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor and it is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Furthermore, Respondent is profiting from its use of the KINGSTON trademark in the disputed domain name by attracting Internet users to the resolving website where Respondent sells competing products in bad faith. Respondent has created confusion as to Complainant’s affiliation or sponsorship of the disputed domain name and website in order to sell its competing products. This is indicative of bad faith under Policy ¶ 4(b)(iv)[14].
Consequently, the disputed domain name incorporating Complainant’s trademark along with the generic expression “Asia”, possibly disrupt Complainant’s business and create a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement, thus, evidencing a bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Therefore, the three elements of the Policy 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <asiakingston.com> domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq. Panelist
Dated: October 23, 2012
[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[3] 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 Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum November 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum August 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[4] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Nat. Arb. Forum May 18, 2012).
[5] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)
[6] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[7] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[8] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[9] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[10] See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum March 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
[11] See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).
[12] http://who.godaddy.com/whois.aspx?domain=asiakingston.com&prog_id=GoDaddy
[13] See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO February 5, 2001)
[14] See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO August 17, 2000).
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