Kanal, Inc. v. Domain Admin
Claim Number: FA1301001478238
Complainant is Kanal, Inc. (“Complainant”), represented by Kevin Keener of Keener, McPhail, Salles, LLC, Illinois, USA. Respondent is Domain Admin (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <kanal.com>, registered with ENOM, INC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Debrett G. Lyons, Douglas M. Isenberg, and David E. Sorkin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2013; the National Arbitration Forum received payment on January 2, 2013.
On January 3, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <kanal.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@kanal.com. Also on January 10, 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.
A timely Response was received and determined to be complete on January 28, 2013.
Timely Additional Submissions were received from Complainant on February 1, 2013, and Respondent on February 5, 2013.
On February 5, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons, Douglas M. Isenberg, and David E. Sorkin (presiding) as Panelists.
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.
A. Complainant
Complainant is a New York corporation that is the registrant of the U.S. trademark KANAL, registration number 4,220,349, for advertising and business management consultancy services. Complainant was incorporated in 2005, but claims common-law rights in the KANAL mark dating back to August 9, 2002, based upon prior use of the mark by Gaurrav Kanal, the incorporator of Kanal, Inc., who transferred his rights in the mark to Complainant.
Respondent is the registrant of <kanal.com>, a domain name that is identical and confusingly similar to Complainant’s mark. Complainant contends that Respondent registered the domain name on February 20, 2004, and is using it to advertise and promote the municipality of Kanal ob Soči in Slovenia. Complainant asserts that its rights in the KANAL mark are superior to any rights of Respondent because of Complainant’s pre-existing common-law rights. Complainant further alleges that for several years following Respondent’s registration of the domain name, it resolved only to a generic landing page, and that only after Complainant contacted Respondent in 2011 did Respondent begin using the domain name in connection with Kanal ob Soči, which Respondent incorrectly refers to as “Kanal.” Complainant notes that Respondent is located in France rather than Slovenia, and contends that Respondent’s use of the domain name does not qualify as a fair or legitimate use. On these grounds Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant further alleges that the disputed domain name has been registered and is being used in bad faith. Complainant states that Respondent must have registered the domain name for the purpose of selling it for an excessive amount of money, based upon the fact that Respondent did not use the name for several years after registering it. Complainant relates that it contacted Respondent regarding the domain name in 2005, at which time Respondent offered to sell the domain name for $30,000. Complainant states that it has identified more than 1,000 other domain names registered by Respondent, indicating that Respondent is engaged in a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names. Complainant further states that even if one could find that Respondent originally registered the domain name in good faith, Respondent has subsequently used it in bad faith, since Respondent has used it for advertising purposes in a way that infringes on Complainant’s mark. In support thereof Complainant notes that a U.S. statute, 15 U.S.C. § 1125(d)(1)(A), imposes liability upon one who uses a domain name in bad faith even if the domain name was registered and previously used in good faith.
B. Respondent
Respondent identifies himself as an individual named Séb Schmitt, a resident of France. Respondent accuses Complainant of engaging in attempted reverse domain name hijacking. Respondent notes that Complainant was not incorporated until 2005, at which time it registered the domain name <kanalinc.com>, and states that his registration of the disputed domain name <kanal.com> predates those events by a year. Respondent accuses Complainant of falsely claiming earlier first use and common-law rights in order to strengthen its case against Respondent. Respondent further alleges that Complainant’s trademark rights are geographically limited, and do not extend to France, where Respondent is located. Respondent asserts that Complainant is a one-person company with current annual revenues of less than $1 million, and presumably had much lower revenues at the time that Respondent registered the disputed domain name.
Respondent claims that he has rights or legitimate interests in the domain name, in part because “kanal” is a French dictionary word meaning “channel” and is used to refer to TV channels in many countries, and because the town of Kanal ob Soči is commonly shortened to Kanal. Respondent contends that he has a right to the disputed domain name because of its generic nature.
Finally, Respondent denies that the disputed domain name was registered and is being used in bad faith. He states that he could not have registered the domain name in bad faith in 2004 because Complainant did not even exist at that time. He further states that the domain name has never been used in a manner related to Complainant’s business, and that he has turned down several purchase offers for the domain name.
Respondent asks the Panel to find that Complainant has engaged in reverse domain name hijacking, as the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
C. Additional Submissions
In its Additional Submission, Complainant reiterates various arguments made in its Complaint, including its contention that it used KANAL as a trademark prior to Respondent’s registration of the disputed domain name. Specifically, Complainant states that it made two payments to a vendor in July 2003, and provides copies of supporting documents identifying the payor as “MR G P KANAL.” Complainant further states that it completed at least 624 sales transactions under the KANAL mark prior to February 20, 2004, and in support thereof provides a PayPal statement containing the name “Kanal, Gaurrav” and the email address contact@kanalinc.com. Complainant also states that it was becoming identified with the mark KANAL in the mind of the public during that period, and in support provides a copy of an email message to Complainant dated October 30, 2003, that addresses the recipient as “Kanal.”
Respondent similarly reiterates arguments in his Additional Submission. He notes that Complainant’s Additional Submission describes the use of KANAL as a surname rather than a trademark, and raises various other concerns regarding the documents submitted by Complainant.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights, but that Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith. As the bad faith finding is dispositive, the Panel declines to enter a finding as to rights or legitimate interests.
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.
Complainant holds a United States trademark registration for KANAL, and the disputed domain name is comprised of that term and the top-level domain “.com”. As the top-level domain is normally disregarded for purposes of assessing identicality or confusing similarity under paragraph 4(a)(i) of the Policy, e.g., Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007), the disputed domain name is identical to a mark in which Complainant has rights.
To prevail under paragraph 4(a)(ii) of the Policy, Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the domain name. If Complainant meets this relatively light burden, then a burden of production shifts to Respondent to come forward with concrete evidence of rights or legitimate interests. See Shahrad Yazdani v. Domain Deluxe, FA 1219173 (Nat. Arb. Forum Oct. 2, 2008).
Complainant has met its initial burden here. The disputed domain name is identical to Complainant’s mark, and Complainant has not authorized this use of the mark. Respondent claims to have rights or legitimate interests arising from the generic nature of the word “kanal,” and from his use of the disputed domain name in connection with the town of Kanal ob Soči in Slovenia.
Mere registration of a domain name, even one that is comprised of a common or generic term, does not itself confer rights or legitimate interests upon the registrant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, § 2.2, http://www.wipo.int/amc/en/domains/search/overview/. Under paragraph 4(c)(iii) of the Policy, however, rights or legitimate interests do arise if the 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’s apparently noncommercial Kanal ob Soči website is reminiscent of Dennis Toeppen’s panavision.com website, which displayed views of Pana, Illinois. See Panavision Intl., L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). Yet it is not so clear in this case that Respondent’s website is “merely a pretext designed to camouflage the registrant’s intent to exploit the trademark value of a domain name,” See 3903150 Canada Inc. d/b/a Moroccanoil v. Miller, D2012-1847 (WIPO Nov. 27, 2012). As the question of rights or legitimate interests here turns largely upon Respondent’s intent, and the Panel’s findings as to bad faith are dispositive of the matter, the Panel elects to resolve the matter on that issue without deciding the rights/interests issue.
In order to prevail under the Policy, Complainant must show that the domain name “has been registered and is being used in bad faith.” Policy ¶ 4(a)(iii). The authority cited by Complainant suggesting that mere use in bad faith is sufficient is based upon the U.S. Anticybersquatting Consumer Protection Act rather than the Policy. That statute applies when one “registers, traffics in, or uses” a domain name in bad faith, 15 U.S.C. § 1125(d)(1)(A) (emphasis added), while the corresponding requirement in the Policy is stated in the conjunctive.
To have registered the domain name in bad faith, Respondent must have been aware of Complainant or its mark when he registered the domain name, and the registration must in some way have been targeted at Complainant or its mark. See JPI Commercial, LLP v. Capalditallon, FA 1458587 (Nat. Arb. Forum Sept. 25, 2012); InnoGames GmbH v. Buydomains.com, D2011-0085 (WIPO Mar. 28, 2011). Constructive notice of the mark is insufficient; the Respondent must have actually known of the mark, although when appropriate such knowledge may be inferred from circumstantial evidence. See Promatic Intl. Ltd. v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006).
Respondent denies having targeted Respondent or its mark when he registered the domain name in 2004. Complainant did not even exist in corporate form at that time. Complainant’s name and mark correspond to the surname of its founder, who may well have been doing business under the mark prior to 2004. However, none of the evidence offered by Complainant is sufficient to show common-law rights in the mark. Respondent is located in France, and the domain name corresponds to a common word and a geographical term as well as to Complainant’s name and mark. Under the circumstances it appears extremely unlikely that Respondent had any knowledge of Complainant, its founder, or its mark when he registered the domain name—let alone that his intent was to target any of them thereby. The domain name therefore could not have been registered in bad faith, and Complainant has failed to prove this element.
Respondent accuses Complainant of falsifying and omitting relevant evidence, and of having brought the Complaint knowing that none of the three required elements could be proved. Such circumstances, if true, would support a finding that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking. But while the evidence before the Panel yields a fairly clear conclusion on the merits, at least as to registration in bad faith, the circumstances are not so egregious as to warrant a finding that the Complaint in this matter was brought in bad faith. Specifically, while the circumstantial evidence does not support a finding of bad faith registration, Complainant has what it reasonably believes to be a strong trademark; Respondent registered the domain name via a proxy service, and it has made little use of the name; and Respondent has responded to Complainant’s overtures by offering to sell the domain name for a high price.
All three members of this Panel have been involved in previous proceedings in which bad faith on the Complainant’s behalf was manifest, e.g., Media Rain LLC. d/b/a Rain v. Verio Inc., FA1279419 (Nat. Arb. Forum Sept. 29, 2009); Trailblazer Learning, Inc. dba Trailblazer v. Trailblazer Enterprises, D2006-0875 (WIPO Aug. 26, 2006); Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006). This is not such a case. While the Complaint here fails on the merits, the Panel does not consider this an appropriate case for a finding of reverse domain name hijacking.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kanal.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Presiding Panelist
Debrett G. Lyons, Panelist
Douglas M. Isenberg, Panelist
Dated: February 12, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page