Kraft Tool Co. v. Jeremiah Qian
Claim Number: FA1303001490025
Complainant is Kraft Tool Co. (“Complainant”), represented by John C. McMahon of Law Office of John C. McMahon, Kansas, USA. Respondent is Jeremiah Qian (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kraftools.com>, registered with Godaddy.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2013; the National Arbitration Forum received payment on March 14, 2013.
On March 18, 2013, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <kraftools.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 March 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2013 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@kraftools.com. Also on March 21, 2013, 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 April 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
1. Complainant holds United States Patent & Trademark Office (“USPTO”) trademark registrations for the KRAFT TOOL CO. mark. See Reg. No. 1,663,192 registered on Nov. 5, 1991; see also Reg. No. 1,668,871 registered on Dec. 17, 1991. Complainant uses the KRAFT TOOL CO. marks to market and sell an array of construction tools.
2. Respondent’s domain name is confusingly similar to Complainant’s marks. Respondent removes the letter “t” from “tool” in forming the domain name. Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is not relevant to this analysis.
Policy ¶ 4(a)(ii): Respondent Lacks Rights
3. Respondent is not commonly known by the disputed domain name to Complainant’s knowledge. If Respondent is going by the disputed domain name, it is doing so without Complainant’s permission. Respondent is not an agent or licensee of Complainant.
4. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Respondent is using the domain name to host a website to offer tool products and services that compete head-on with Complainant’s KRAFT TOOL CO. mark.
5. Respondent is typosquatting by misspelling the KRAFT TOOL CO. mark in order to attract Internet users to Respondent’s domain name when the users incorrectly spell out the KRAFT TOOL CO. mark.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
6. Respondent seeks to intentionally attract Internet users to its domain name by confusing them into believing the content of the disputed domain name is somehow affiliated with Complainant. This is evident through Respondent’s use of this confusingly similar domain name to sell products that compete directly with Complainant.
7. Respondent had actual knowledge of Complainant’s marks. Respondent acted as an agent for one “Melanie H. Li” of California, who attempted to register the MQT WWW.KRAFTOOLS.COM mark with the USPTO. This mark application was rejected by the USPTO. In its decision, the USPTO noted that the proposed mark is “similar as to connotation and commercial impression because of the powerful wording KRAFT TOOL.” Thus the USPTO had given “Melanie H. Li” and Respondent actual notice of the KRAFT TOOL mark.
Respondent’s Contentions
Respondent did not submit a Response.
1. Respondent’s <kraftools.com> domain name is confusingly similar to Complainant’s KRAFT TOOL CO. mark.
2. Respondent does not have any rights or legitimate interests in the <kraftools.com> domain name.
3. Respondent registered or used the <kraftools.com> domain name in bad faith.
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 contends that it holds USPTO trademark registrations for the KRAFT TOOL CO. mark. See Reg. No. 1,663,192 registered on Nov. 5, 1991; see also Reg. No. 1,668,871 registered on Dec. 17, 1991. Complainant asserts that it uses the KRAFT TOOL CO. marks to market and sell an array of construction tools. The Panel agrees that USPTO registrations fulfill Complainant’s Policy ¶ 4(a)(i) showing of rights in this case. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant also argues that Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant notes that Respondent removes the letter “t” from “tool” in forming the domain name. Complainant also asserts that Respondent’s addition of the gTLD “.com” is not relevant to this analysis. The Panel notes that Respondent also deleted the spacing from the mark, as well as the term “CO.” The Panel agrees that neither the deletion of spacing, nor the addition of a gTLD affect the confusing similarity of the <kraftools.com> domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also agrees that merely deleting the business designation “CO.” does nothing to prevent confusing similarity. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel finally agrees that removing one instance of the letter “t” enhances the domain name’s confusing similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark). Therefore the Panel finds that the <kraftools.com> domain name is confusingly similar to Complainant’s KRAFT TOOL CO. marks under Policy ¶4(a)(i).
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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name to Complainant’s knowledge. Complainant alternatively argues that if Respondent is referring to itself as the disputed domain name, it is doing so without Complainant’s permission. Complainant also alleges that Respondent is not an agent or licensee of Complainant. The Panel notes that the WHOIS information lists “Jeremiah Qian” as the registrant of the domain name. The Panel agrees that in the absence of any statement proving otherwise, Respondent is not commonly known by the disputed domain name under Policy ¶4(a)(i). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant avers that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent is using the domain name to host a website to offer tool products and services that compete head-on with Complainant’s KRAFT TOOL CO. mark. The Panel agrees with Complainant’s allegations concerning the domain name’s use, and finds that a competing use constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 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).”). Consequently, the Panel determines that Respondent has not used the <kraftools.com> domain name in connection with 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).
Complainant further argues that Respondent is typosquatting by misspelling the KRAFT TOOL CO. mark in forming the domain name. Complainant notes that its own domain name, <krafttools.com> is not much different from the disputed <kraftools.com> domain name. Complainant believes that Respondent did this in order to attract Internet users to Respondent’s domain name when the users incorrectly spell out the KRAFT TOOL CO. mark. The Panel agrees and finds that typosquatting behavior is evidence that Respondent does not in fact have rights or legitimate interests in the domain name under Policy ¶4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant argues that Respondent seeks to intentionally attract Internet users to its domain name by confusing them into believing the content of the disputed domain name is somehow affiliated with Complainant. Complainant claims that this is evident through Respondent’s use of this confusingly similar domain name to sell products that compete directly with Complainant. The Panel agrees with Complainant’s contentions, and it further agrees that the use of a confusingly similar domain name to host a competing business evinces Policy ¶ 4(b)(iv) bad faith use and registration, based on the intended attraction of commercial gain through the confusion of Internet users. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant finally argues that Respondent had actual knowledge of Complainant’s marks. Complainant claims that Respondent acts as an agent for one “Melanie H. Li” of California, who attempted to register the MQT WWW.KRAFTOOLS.COM mark with the USPTO. Complainant notes that this mark application was rejected by the USPTO. In its decision, the USPTO noted that the proposed mark is “similar as to connotation and commercial impression because of the powerful wording KRAFT TOOL.” See Complainant’s Ex. D. Complainant concludes that the USPTO’s letter had given “Melanie H. Li” and Respondent actual notice of the KRAFT TOOL mark. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kraftools.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 30, 2013
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