Keffer Management Co., LLC v. Domain Administrator
Claim Number: FA1312001534568
Complainant is Keffer Management Co., LLC (“Complainant”), represented by Jami J. Farris of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Domain Administrator (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kefferkia.com>, registered with MONIKER ONLINE SERVICES LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 13, 2013; the National Arbitration Forum received payment December 16, 2013.
On December 20, 2013, MONIKER ONLINE SERVICES LLC confirmed by e-mail to the National Arbitration Forum that the <kefferkia.com> domain name is registered with MONIKER ONLINE SERVICES LLC and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES LLC verified that Respondent is bound by the MONIKER ONLINE SERVICES LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2014, 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@kefferkia.com. Also on December 23, 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 January 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following allegations in this proceeding:
a) Complainant has a trademark registration for the KEFFER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,429,531 registered May 20, 2008, filing date March 2, 2007).
b) Complainant has owned and operated car dealerships under the KEFFER name since 1974. Complainant registered a service mark registration for the KEFFER mark in North Carolina. See Complainant’s Exhibit D. Complainant also licensed the name “Keffer Kia” to a subsidiary, and the subsidiary registered the name “Keffer Kia” as an assumed name with Mecklenburg County Register of Deeds in North Carolina. See Complainant’s Exhibit E. Complainant’s subsidiary currently operates a website using the domain name <kefferkia.net>. See Complainant’s Exhibit F.
c) Respondent’s <kefferkia.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name fully incorporates Complainant’s mark while adding the word “kia” and the generic top-level domain (“gTLD”) “.com.” “Kia” is a term describing one of the products offered by a subsidiary of Complainant.
d) Respondent has no rights to or legitimate interests in the <kefferkia.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its KEFFER mark in any way.
b. Respondent is using the <kefferkia.com> domain name to direct Internet traffic to a search engine website that also includes pop-up advertisements, which includes Complainant’s competitors. See Complainant’s Exhibit G.
e) Respondent registered and is using the <kefferkia.com> domain name in bad faith.
a. Respondent’s use of the disputed domain name is disrupting Complainant’s business because the resolving website promotes Complainant’s competitors. See Complainant’s Exhibit G.
b. Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s KEFFER mark. The <kefferkia.com> domain name resolves to a search engine website displaying various competing commercial links, and Complainant presumes Respondent is receiving click-through revenue from these links. See Complainant’s Exhibit G.
c. Respondent had knowledge of Complainant’s KEFFER mark prior to registering the <kefferkia.com> domain name because Complainant is well-known in North Carolina, Georgia, and Florida, Complainant’s KEFFER mark is not a generic term, and Complainant’s mark has been coupled with the name of an automobile brand in the disputed domain name.
Respondent did not submit a response in this proceeding.
a) The Panel notes that Respondent registered the <kefferkia.com> domain name October 18, 2005.
Complainant established that it has legal rights in the mark contained in its entirety within the disputed domain name and that such rights date back to the date of filing of the trademark registration, March 2, 2007, and that Complainant has common law rights that date back to Complainant’s first use in commerce in 1974.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 Complainant to 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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant states it has a trademark registration for the KEFFER mark with the USPTO (Reg. No. 3,429,531 registered May 20, 2008, filing date March 2, 2007). Past panels have determined that the filing date is the relevant date to consider as to whether a complainant’s trademark rights predate a respondent’s domain name registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Therefore, the Panel finds that Complainant has rights in the KEFFER mark under Policy ¶ 4(a)(i) via its trademark registration with the USPTO, and those rights date back to the filing date of the registration, March 2, 2007.
Although Complainant’s trademark registration does not appear to establish rights in the KEFFER mark under Policy ¶ 4(a)(i) that predate Respondent’s registration of the disputed domain name, past panels have found that ownership of a registered trademark is not necessary for establishing rights under Policy ¶ 4(a)(i). See 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)). Therefore, the Panel finds that Complainant also established pre-existing common law rights, which past panels have found to be sufficient to meet the burden of establishing 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).
Common law rights require that Complainant’s evidence show that the mark established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Complainant states it has owned and operated car dealerships under the KEFFER name since 1974. The Panel notes that the article provided in Exhibit B states that in 2000 Complainant owned five dealerships and managed twelve other dealerships. Complainant states it has registered a service mark registration for the KEFFER mark in North Carolina. See Complainant’s Exhibit D. Complainant states it also licensed the name “Keffer Kia” to a subsidiary, and the subsidiary registered the name “Keffer Kia” as an assumed name with Mecklenburg County Register of Deeds in North Carolina. See Complainant’s Exhibit E. Complainant states that the subsidiary currently operates a website using the domain name <kefferkia.net>. See Complainant’s Exhibit F. Therefore, the Panel finds that this information is sufficient to show that Complainant has common law rights in the mark and the Panel finds that Complainant established rights in the KEFFER mark pursuant to Policy ¶ 4(a)(i), dating back to Complainant’s first use of the mark in 1974.
Complainant claims Respondent’s <kefferkia.com> domain name is confusingly similar to Complainant’s mark. Complainant states that the disputed domain name fully incorporates Complainant’s mark while adding the descriptive word “kia” and the gTLD “.com.” Complainant notes that “Kia” is a term describing one of the products offered by a subsidiary of Complainant. First, the Panel finds that addition of a descriptive term to a trademark in a disputed domain name does not sufficiently distinguish the disputed domain name from the trademark. See Am. Int’l Group, Inc. v. 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). Next, the Panel finds that addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <kefferkia.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 claims Respondent has no rights to or legitimate interests in the <kefferkia.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its KEFFER mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Domain Administrator” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the KEFFER mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <kefferkia.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <kefferkia.com> domain name to direct Internet traffic to a search engine website that also features pop-up advertisements, which include Complainant’s competitors. See Complainant’s Exhibit G. Past panels have found that such conduct does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements). Therefore, the Panel finds that Respondent is not making 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) because Respondent is using the <kefferkia.com> domain name to operate a search engine website that also features pop-up advertisements.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and is using the <kefferkia.com> domain name in bad faith. Complainant states that Respondent’s use of the disputed domain name is disrupting Complainant’s business because the resolving website promotes Complainant’s competitors. See Complainant’s Exhibit G. In previous cases, panels have found that using a confusingly similar domain name to promote competitors of a complainant demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, the Panel finds that Respondent registered and is using the <kefferkia.com> domain name in bad faith under Policy ¶ 4(b)(iii) because the resolving website promotes Complainant’s competitors.
Complainant claims Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s KEFFER mark. Complainant notes that the <kefferkia.com> domain name resolves to a search engine website displaying various competing commercial links, and Complainant presumes Respondent is receiving click-through revenue from these links. See Complainant’s Exhibit G. Previous panels have found that using a confusingly similar domain name to display click-through links of a complainant’s competitors demonstrates bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Therefore, the Panel finds that Respondent registered and is using the <kefferkia.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name resolves to a search engine website displaying various competing commercial links.
Complainant asserts that Respondent had knowledge of Complainant’s KEFFER mark prior to registering the <kefferkia.com> domain name because Complainant is well-known in North Carolina, Georgia, and Florida, Complainant’s KEFFER mark is not a generic term, and Complainant’s mark has been coupled with the name of an automobile brand in the disputed domain name. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel here finds that Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, and the Panel finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kefferkia.com> domain name be TRANSFERRED from Respondent to Complainant.
Carolyn Marks Johnson, Panelist
Dated: January 23, 2014
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