Chuck Sutton / Chuck Sutton Auctioneer and Land Broker LLC v. Kelly Kruse
Claim Number: FA1012001365352
Complainant is Chuck Sutton Auctioneer and Land Broker, LLC c/o Chuck Sutton (“Complainant”), represented by Sander J. Morehead, South Dakota , USA. Respondent is Kelly Kruse (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chucksutton.com>, <chucksuttonauction.com>, and <chucksuttonauctioneer.com>, registered with GoDaddy.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2010; the National Arbitration Forum received payment on December 30, 2010.
On December 29, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chucksutton.com>, <chucksuttonauction.com>, and <chucksuttonauctioneer.com> domain names are 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 January 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 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@chucksutton.com, postmaster@ chucksuttonauction.com, postmaster@ chucksuttonauctioneer.com. Also on January 6, 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 January 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <chucksutton.com> is identical to Complainant’s CHUCK SUTTON mark.
Respondent’s <chucksuttonauction.com> and <chucksuttonauctioneer.com> domain names are confusingly similar to Complainant’s CHUCK SUTTON mark.
2. Respondent does not have any rights or legitimate interests in the <chucksutton.com>, <chucksuttonauction.com>, and <chucksuttonauctioneer.com> domain names.
3. Respondent registered and used the <chucksutton.com>, <chucksuttonauction.com>, and <chucksuttonauctioneer.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chuck Sutton Auctioneer and Land Broker, LLC c/o Chuck Sutton, is a limited liability company. Complainant has had been providing auctioneer and land-brokerage services in the upper Midwest since 1991 under its CHUCK SUTTON mark.
Respondent, Kelly Kruse, registered the <chucksutton.com>, <chucksuttonauction.com>, and <chucksuttonauctioneer.com> domain names on May 15, 2008. Previously, the disputed domain names were being redirected to a website associated with one of Complainant’s competitors in the auctioneering industry. Currently, the disputed domain names resolve to inactive websites.
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 contends that it has established rights in the CHUCK SUTTON mark. Previous panels have found that a complainant is not required to establish rights through a registered trademark and that a finding of common law rights is sufficient to demonstrate complainant’s rights under Policy ¶ 4(a)(i). See 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); see also 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)).
Complainant asserts common law rights in its CHUCK SUTTON mark through its continuous use and promotion as a land-brokerage and auctioneering company since 1991. Complainant registered the <suttonauction.com> domain name in 2000 in order to establish an Internet presence and Complainant officially organized as a limited liability company in 2004. Complainant routinely advertises its services under the CHUCK SUTTON mark in local newspapers. Complainant alleges to have sold thousands of acres of property through auctions and private listings since 2000 and has become very well known throughout the upper Midwest for its auctioneer and brokerage services. The Panel concludes that Complainant has provided sufficient evidence to support a finding of common law rights in the CHUCK SUTTON mark, dating back to at least 2000, 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)).
Complainant maintains that Respondent’s <chucksutton.com> domain name is identical to its CHUCK SUTTON mark because it incorporates Complainant’s mark in its entirety, simply deleting the space between the words of the mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a space and the affixation of a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s mark. 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 finds that the <chucksutton.com> domain name is identical to Complainant’s CHUCK SUTTON mark under Policy ¶ 4(a)(i).
Complainant also argues that the <chucksuttonauction.com> and <chucksuttonauctioneer.com> domain names are confusingly similar to Complainant’s CHUCK SUTTON mark. The disputed domain names incorporate Complainant’s entire mark and differ only through the deletion of the space between words of the mark, the addition of the descriptive words “auction” or “auctioneer,” and the addition of the gTLD “.com.” The Panel finds that the deletion of a space and the addition of gTLD do not properly distinguish the disputed domain names from Complainant’s mark. 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). Also, the Panel finds that the addition of a descriptive word which clearly relates to Complainant’s auction services is not enough to distinguish the disputed domain names from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel concludes that the <chucksuttonauction.com> and <chucksuttonauctioneer.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that once a complainant provides a prima facie case in support of its allegations, the burden subsequently shifts to the respondent to show that it does have rights or legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Complainant has established a prima facie case here. Due to Respondent’s failure to respond to the Complaint, the Panel has the authority to assume that Respondent has no rights or legitimate interests according to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to first look at the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before making a determination.
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Kelly Kruse,” which is not similar to the disputed domain names. The Panel finds no additional evidence indicating that Respondent is commonly known by the disputed domain names, therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent initially used the disputed domain names to redirect Internet users to a website related to one of Complainant’s competitors in the auctioneering industry. The Panel finds that Complainant’s use of both identical and confusingly similar domain names to divert Internet users to Complainant’s competitor is 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Complainant asserts that Respondent’s disputed domain names currently resolve to inactive sites. The Panel finds that Respondent’s use of the disputed domain names to host websites with no active content is evidence that it has no rights or legitimate interests under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent was upset with Complainant over a business relationship and consequently used the disputed domain names to disrupt Complainant’s business. Respondent previously used the names to divert Internet users directly to a website related to one of Complainant’s competitors in the auction industry. Internet users intending to purchase Complainant’s services may very well have purchased similar auction services from a competitor as a result of Respondent’s use of identical and confusingly similar domain names. The Panel finds that Respondent’s use of the disputed domain names to forward Internet users to competing services is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s disputed domain names currently resolve to inactive websites. The Panel finds that Respondent is making no actual use of the disputed domain names and that this constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chucksutton.com>, <chucksuttonauction.com>, and <chucksuttonauctioneer.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 6, 2011
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