KMJ Performance v. Joseph Tomas
Claim Number: FA1208001458288
Complainant is KMJ Performance (“Complainant”), represented by David Nelmark of Belin McCormick, PC, Iowa, USA. Respondent is Joseph Tomas (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kmjperformance.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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2012; the National Arbitration Forum received payment on August 15, 2012.
On August 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the disputed domain name <kmjperformance.com> 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 August 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@kmjperformance.com. Also on August 21, 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.
The Response was filed on September 10, 2012.
On September 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On September 17, 2012 Complainant filed timely Additional Submissions on which were admitted by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant created and began using the eBay User ID "kmjperformance" on October 3, 2005 and has made continuous and ongoing use of the mark KMJ PERFORMANCE since that time, initially selling goods on eBay prior to opening its own online store.
Complainant's primary website is at www.kmjent.com, but the website identifies Complainant as “KMJ PERFORMANCE” The URL for Complainant's online eBay store is <stores.ebay.com/KMJPerformance>.
Complainant has continued to develop brand recognition in the name KMJ PERFORMANCE by, among other things, creating e-stores and significant advertising on a website known as Racing Junk Classifieds.
Complainant claims to have acquired common law trademark rights in KMJ PERFORMANCE having used the term to sell its goods for approximately seven years and further submits that its common law trademark rights are sufficient for standing in bringing this Complaint under the Policy, citing for example SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000), which found 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, and Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007), which found that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark.
Complainant further submits that the disputed domain name <kmjperformance.com> is identical to both Complainant's fictitious name, registered with the Iowa Secretary of State, and Complainant's eBay User ID.
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name <kmjperformance.com>.
The website to which the disputed domain name resolves is being used to list various eBay listings of Complainant and furthermore has a "logo" designed to capitalize on the goodwill of Complainant by using the same red and black color scheme and a "checkered flag" type background.
Complainant asserts that Respondent is not an affiliate of Complainant, nor has Respondent been given authorization to use the KMJ PERFORMANCE name or to link to Complainant's eBay listings.
Complainant alleges that Respondent does not use, and has not used, the disputed domain name to offer any products or services of Respondent nor for any other legitimate business purpose.
Complainant claims that the disputed domain name was registered in bad faith and/or is being used in bad faith and alleges that upon information and belief, Respondent is the registrant for at least 79 domain names.
Complainant further alleges that Respondent is well aware of Complainant's common law trademark rights in the term KMJ PERFORMANCE as can be seen from the fact that Respondent has the website to which the disputed domain name resolves showing eBay listings of Complainant.
Complainant alleges that Respondent is disrupting Complainant's business by capitalizing on Complainant's goodwill and causing consumer confusion in that visitors to the website at the disputed domain name are deceived into thinking that Respondent’s website is affiliated with Complainant and thus do not search for Complainant's actual website or eBay storefront.
Complainant submits that Respondent is seeking commercial gain from web traffic coming to the website to which the disputed domain name resolves by creating a likelihood of confusion as to the source and/or sponsorship of the website. Respondent offers no legitimate products or services at the website instead listing only Complainant's products.
B. Respondent
Respondent argues that the disputed domain name was registered more than 6 years ago free and clear of any common law trademarks.
Complainant has never contacted the current owner with regard to a possible conflict until this Complaint was filed. Shortly after the registration it was realized that Complainant was attempting to sell products online using the KMJ PERFORMANCE name. In an effort to prevent confusion in the marketplace, the domain owner had the webpage re-created to solely promote Complainant’s products and services. At no point in time whatsoever did Respondent ever ask Complainant for monies. Still to this day, Respondent is not seeking anything from Complainant. Respondent has done nothing except promote positive traffic to Complainant, “when they could have easily driven traffic elsewhere or to a competitor”.
Respondent submits that there is no confusion in the marketplace because the disputed domain name was registered prior to Complainant “heavily developing and marketing itself in the online realm”, and because the disputed domain name has always been used in a productive manner to promote Complainant.
Respondent argues that he is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. He submits that the disputed domain name has always been used to promote a positive image of Complainant. Respondent registered the disputed domain name over 6 years ago, well before any type of common-law trademark rights could have been established. If the name of KMJ PERFORMANCE was a common or trademarked name at the time of registration, it would have been cancelled or released at that time to avoid the very issue at hand. To approach the current domain owner over 6 years later with a dispute is grounds for reverse-domain-hijacking.
Respondent argues that the disputed domain name should not be considered as having been registered and/or being used in bad faith. As mentioned above the disputed domain name was registered many years ago, it was not purchased or acquired by a domain broker, it was simply available for sale as a new domain registration. The disputed domain name was unregistered and could have been purchased by anyone at that time, including the Complainant. Once it was realized that the name was being promoted by another company, rather than direct traffic to Respondent, Respondent wanted to avoid any conflict or issues and pointed the page to Complainant. Everything on the page was designed to promote and assist in Complainant’s success. Never was it used in bad faith to direct traffic to a competitor. It has always been used in good-faith, even to this day. Respondent only seeks peace, and is saddened that Complainant is filing this grievance after they have worked to help Complainant’s business, never asking for compensation or soliciting the domain for sale. If Complainant is not satisfied with the current use of the disputed domain name, Respondent agrees to change the use of the page to avoid any alleged confusion.
C. Additional Submissions
In timely Additional Submissions Complainant submits that when this Complaint was filed, it was unclear whether Respondent was the original registrant of the disputed domain name or acquired it in the aftermarket. This is because as recently as July 15, 2012, the domain name <kmjperformance.com> was registered to Stefanos Tseris. Shortly before the Complaint was filed, however, the information for the registrant changed to Respondent, Joseph Tomas, with a different administrative contact e-mail address. Respondent has now claimed to be the original registrant for the domain name ("The Respondent registered the domain name over 6 years ago. . . ."); ("[T]he domain name was registered many years ago, it was not purchased or acquired by a domain broker. . . ."). Accordingly, conduct of the prior listed registrant, as described below in the section on bad faith, is relevant for the purposes of resolving this dispute.
Complainant submits that Respondent has not denied that Complainant has common law trademark rights in the term KMJ PERFORMANCE nor that the term is confusingly similar to the domain name at issue. Complainant submits that accordingly, the requirements of Policy ¶ 4(a)(i) have been met. KMJ Performance is Complainant's official d/b/a, formally registered with the Iowa Secretary of State as a fictitious name and Complainant has continuously sold products and advertised under the name KMJ PERFORMANCE.
Complainant argues that more importantly, however, Respondent is simply incorrect in his statement that "[t]he domain name was registered free and clear of any common-law trademarks over 6 years ago." Complainant submits that the disputed domain name was registered on June 29, 2006 after Complainant began doing business on eBay under the name KMJ PERFORMANCE on October 3, 2005.
Furthermore, Complainant argues that it is not a requirement under Policy ¶ 4(a)(i) for Complainant to have established rights prior to the registration of the domain name at issue. See, e.g. Deacom Inc. v. Deacom, FA 1246846 (Nat. Arb. Forum Apr. 14, 2009) ("While respondent argues that its registration of the disputed name predates Complainant's trademark rights, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant's mark."); Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum March 5, 2007) ("Although the domain name in disputed was first registered in 1996, four years before Complainant's alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).).
Complainant submits that although Respondent claims ignorance of Complainant’s pre-existing common law rights, he offers no explanation as to how or why he registered the disputed domain name <kmjperformance.com> if not to capitalize on the brand recognition Complainant had developed in its eBay business.
Complainant argues that it has made out a prima facie case that Respondent does not have any legitimate rights or interests in the domain name and has never used the disputed domain name for any legitimate purpose. Accordingly, the burden shifts to Respondent to prove that he does have such legitimate interests. Aco Minas Gerais S.A. Acominas v. Dutra, D2000-1458 (WIPO Mar. 5, 2001).
Complainant submits that Respondent does not contend that he has made preparations to use the domain name with a bona fide offering of goods or services under 4(c)(i) of the Policy nor that he has been commonly known by the disputed domain name under 4(c)(ii). Respondent's only purported defense is that he "is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. . . ." The argument fails on multiple levels. Firstly, Respondent is making a commercial use in that Respondent is profiting from the traffic generated by the website to which the disputed domain name resolves and/or is seeking to profit from the subsequent resale of the domain name. Secondly, Respondent's website is most certainly "misleadingly diverts consumers." Respondent admits that the domain at issue resolves to a website displaying Complainant's product listings. To be clear, this is not a case of Respondent reselling or distributing parts produced by Complainant. Respondent admits that the site "solely promote[s] complainants products and services."
Respondent's statement that he made "an effort to prevent confusion in the marketplace" is specious given that he lists Complainant's products, uses Complainant's business name as the domain name, adopts the color scheme and checkered flag motif of Complainant's real website, and has provided no disclaimer whatsoever indicating that the website is not affiliated with Complainant.' Instead, the website is affirmatively misleading, stating: "Welcome to our store," when the site's only content consists of links to the Complainant's eBay listings. Further, the "View all 10267 items on eBay" hyperlink on Respondent's website goes directly to Complainant's actual eBay store. There is a "disclaimer" hyperlink on the site, but it links to an official eBay disclaimer and provides no indication that the website is not affiliated with Complainant.
Respondent claims that he has "never ask[ed] for compensation or solicit[ed] the domain for sale." Given that Respondent claims to have owned the domain name for six years, this statement is at best only technically accurate and at worst intentionally misleading.
In 2008, Complainant's employee wrote to domain@kmjperformance.com inquiring about purchasing the domain name. The response was: “Hallo, this name receives much traffic and produces a nice monthly flow. I can offer this for $5,000 USD. Thank you, Stefanos” As noted above, the then listed registrant for the domain was Stefanos Tseris. Respondent asks this Panel to note the statement of the panel in Am. Anti-Vivisection Society v. "infa dot net" Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000): "UDRP panels have held that general offers to sell the domain name . . . are evidence of bad faith."
Complainant states that the connection between Respondent and Stefanos Tseris is unknown, but, argues that given the statements about six years of ownership in the Response, the two people must be affiliated. Respondent owns multiple domain names, as illustrated in the Complaint, and Tseris appears to be an active cybersquatter in that he is listed as the contact for 235 domains names. In Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000), the panel found the registration of 41 domain names to be an indicator of bad faith and noted that it was "highly unlikely that [respondent] could legitimately use each of the 40 domain names it owns in providing goods and services in commerce."
Complainant submits that a sudden change of the name of the registered owner should not suffice to avoid a finding of bad faith. Additionally, even in the absence of the conduct of Stefanos Tseris, bad faith by Respondent may be easily presumed given the obvious attempts at misleading consumers into thinking the domain at issue was affiliated with Complainant and the absence of any legitimate fair use of the domain name.
In conclusion, Complainant submits that those who traffic in domain names have become more sophisticated in recent years. Gone are the days where the registrant leaves a website completely blank and provides an obvious paper trial by affirmatively contacting the trademark holder and demanding a king's ransom. Regardless of the methods now used, however, the registration of domain names in bad faith continues to inflict very real harm on the trademark holders and the consumers who try to find them on the Internet.
Complainant commenced an online retail business on eBay under the name KMJ PERFORMANCE on October 3, 2005. and has subsequently established an online store. He has continuously used KMJ PERFORMANCE as his name and mark since that date.
The disputed domain name was registered on June 29, 2006.
Complainant is a Limited Liabilty Company and has filed a Fictitious Name Resolution with the Secretary of State, State of Iowa on September 19, 2012 pursuant to the Iowa Limited Liability Company Act (Iowa Code § 490A) whereby it resolved to adopt the name KMJ Performance.
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."
Policy ¶ 4(a) 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 has provided evidence of first use of the KMJ PERFORMANCE mark on eBAY on October 3, 2005 and his subsequent advertising and use of the mark for his online retail store. This Panel finds that on the evidence Complainant has acquired a reputation and goodwill in the KMJ PERFORMANCE mark at common law sufficient to ground this Complaint.
The disputed domain name <kmjperformance.com> is identical to Complainant’s common law mark KMJ PERFORMANCE. It is well established under the Policy that the .com gTLD suffix may be ignored for the purpose of comparison of the mark on which a complainant relies and the domain name at issue.
This Panel finds therefore that Complainant has established the first element of the test in Policy ¶ 4(a)(i).
Respondent appears to acknowledge Complainant’s ownership of the KMJ PERFORMANCE mark and makes no claim to rights or legitimate interest in the disputed domain name.
Respondent bases his defense essentially on his claims that Complainant had no trademark rights when the disputed domain name was registered, that Complainant has delayed in bringing this Complaint and is now engaged in reverse domain name hijacking and that Respondent is using the domain name in good faith.
Complainant on the other hand has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name and the burden of proof shifts to Respondent in such circumstances.
It is well established that delay or laches on the part of a complainant does not afford either a defense under the Policy or, in itself, create the basis for the acquisition of rights or legitimate interests in a domain name by a respondent.
As Respondent has failed to discharge the burden of proving that he has rights or legitimate interest in the disputed domain name, this Panel finds that Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii) also.
There is no explanation from Respondent as to why such a distinctive domain name, which has no obvious reference to anyone or anything except Complainant and his online store was chosen and registered. The disputed domain name was registered on June 29, 2006, approximately nine months after Complainant’s first use of the mark on eBAY on October 3, 2005.
The fact that Respondent has, unsolicited, created a link exclusively to Complainant’s store demonstrates that the domain name is a clear reference to Complainant and it business.
On the file the disputed domain name has been registered in the name of at least two people. The history of ownership is not proven but given it is implicit in the Response that Respondent was either the original registrant or an associate of the original registrant of the disputed domain name. Given the distinctive character of the disputed domain name, in the absence of any explanation as to why it was chosen and registered, it is improbable that the registrant was unaware of Complainant and Complainant’s use of the KMJ PERFORMANCE mark when the domain name was registered. It is improbable that the disputed domain name was chosen by coincidence.
In such circumstances, this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered because it referred to Complainant and its online business.
The disputed domain name resolves to a website on which Respondent has posted a link to Complainant’s website and is not redirecting traffic elsewhere. In the circumstances this is not a defence to the allegation of bad faith registration and use. Respondent is not a re-seller of Complainant’s goods and has never had any association or affiliation with Complainant or its business. Complainant has acquired a reputation and goodwill for its online retail business, and given that the disputed domain name is identical to Complainant’s mark, it is most probable that Internet users are being confused as to the source, sponsorship, affiliation, or endorsement of the web site to which the disputed domain name resolves.
Despite his submissions to the contrary, there is no question of a non-commercial use of the domain name by Respondent. He appears to be the owner of a substantial number of domain names, so it must be presumed that Respondent is engaged in a commercial enterprise and is creating this confusion for commercial gain.
This Panel finds therefore on the evidence and on the balance of probabilities that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark.
In the circumstances this Panel finds that the disputed domain name has been registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought.
Reverse Domain Name Hijacking
Respondent alleges that by bringing this Complaint over 6 years after the disputed domain name was registered, Complainant is engaged in reverse-domain-hijacking.
As stated above, the evidence is that the disputed domain name was registered on June 29, 2006 after Complainant began doing business on eBay under the name KMJ PERFORMANCE on October 3, 2005. Since then Respondent has not acquired any rights or legitimate interest in the disputed domain name. He has not put the domain name to any bona fide commercial or non-commercial use. It is an established principle that delay or laches on the part of a complainant does not create the basis for the acquisition of rights or legitimate interests in a domain name by a respondent
In the circumstances this Panel finds that Respondent has failed to prove his allegation of reverse-domain-hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmjperformance.com> domain name be TRANSFERRED from Respondent to Complainant.
_______________________
James Bridgeman Panelist
Dated: September 27, 2012
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