Scott B. Spriggs, Esq./ Kinkle, Rodiger and Spriggs v. Craig Ivicevic / IO-Technology
Claim Number: FA1404001555883
Complainant is Scott B. Spriggs, Esq./ Kinkle, Rodiger and Spriggs (“Complainant”), California, USA. Respondent is Craig Ivicevic / IO-Technology (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <krsattys-riv.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2014; the National Arbitration Forum received payment on April 30, 2014.
On April 28, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <krsattys-riv.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 May 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@krsattys-riv.com. Also on May 6, 2014, 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 May 26, 2014.
On May 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainants are an attorney and his law firm. The firm was established in 1970 under the name Kinkle, Rodiger and Spriggs Professional Corporation. It is commonly known also as KRS throughout the Southern California legal community. At some time prior to May 2008, it registered the domain name <krsattys-riv.com> (the “Domain Name”) and began using it in connection with its operations in the city of Riverside, California.
In January 1999 Complainant engaged Respondent to provide IT support and maintenance services.
In September 2008 Complainant registered a new domain name, <krs-law.com>, in connection with a firm reorganization.
On January 13, 2014, Respondent notified Complainant that its registration of the Domain Name was about to expire and inquired if Complainant wished to renew it. Complainant responded that it did, and Respondent stated that he would take care of it.
On January 29, 2014, following the departure from the Complainant of an associate attorney who was married to Respondent and who, along with a partner or shareholder of the firm, was leaving to start a new firm, Complainant advised Respondent that his services would no longer be required.
On or about February 28, 2014, Complainant’s new IT support technician, who had learned that the Domain Name was registered to Respondent, inquired of the registrar (GoDaddy) what would need to be done to have the Domain Name returned to Complainant.
On inquiry that same day, Respondent stated that Complainant’s registration had expired, and that he had not billed Complainant for renewing the registration.
The Domain Name is connected to the e-mails of Complainant’s employees and to the billing software used by its clients. Complainant has attempted to substitute its new domain name for the Domain Name with the various billing programs it uses, but its clients still retain the Domain Name on their respective database systems as being Complainant’s current contact information. When Complainant registered its new domain name it was with the understanding that it would continue to own and use the Domain Name, enabling any e-mail traffic addressed to it to be automatically routed to the new domain name address. Complainant is concerned about potential billing errors and loss or compromise of confidentiality if the Domain Name is used by another entity.
The Domain Name is identical or confusingly similar to Complainant’s corporate name, and the initial letters of the names comprising that name. It is the same domain name originally registered and used by Complainant itself until it expired earlier this year.
Respondent has no right or legitimate interest in the Domain Name in that he is not using it in connection with any bona fide offering of goods or services and is not commonly known by the name “krsattys-riv.com” or any variation thereof.
Respondent registered and is using the Domain Name in bad faith. He has told Complainant that he intends to auction it soon and inquired if Complainant still wants it. He has registered the Domain Name to prevent Complainant from registering a domain that reflects its corporate name, and he registered and is using it to disrupt Complainant’s normal business flow.
B. Respondent
After complainant registered its new domain name in 2012 it no longer used the Domain Name.
As of the end of January 2014 when Complainant discharged Respondent, the Domain Name had not yet expired. It did not expire until February 12, 2014.
Respondent did his duty to Complainant in advising prior to his discharge that the domain was about to expire. Complainant allowed its registration to expire.
Respondent purchased the Domain Name on February 28, 2014.
The letters KRS stand for many things, and Complainant has no inherent right to use the Domain Name.
Respondent legally purchased the Domain Name and Complainant has refused to pay for it. Respondent should not be prevented from the full potential investment opportunity.
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.
The Panel finds and orders as follows:
Complainant’s law firm was organized in 1970 when it registered its corporate name, Kinkle, Rodiger and Spriggs Professional Corporation, with the California Secretary of State. See Complainant’s Annex 4. It has used that name in the practice of its profession since then. There is no evidence of a trademark registration for that name, but as found by other panels it is unnecessary for a complainant to register with a governmental trademark agency to have rights in a claimed mark. 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).
Complainant is commonly known by the letters KRS throughout the Southern California legal community. Further, Complainant itself originally registered and used the <krsattys-riv.com> Domain Name as its primary Internet location at least until September of 2012, when it registered its new domain name, <krs-law.com>. Respondent alleges that Complainant ceased using the Domain Name after September 2012, but the Domain Name has continued to appear at least as part of the contact information for Complainant on the IT systems of its clients and employees since that date, and may still be, notwithstanding its expiration and subsequent purchase by Respondent. The Domain Name identifies the initials of Complainant’s company name, Kinkle, Rodiger and Spriggs, and an abbreviation of the location of Complainant’s office in Riverside, California. See Complainant’s Annex 6. Other panels have found that using an abbreviation of a complainant’s mark for a domain name does not differentiate it from the complainant’s mark. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta).
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the Complainant’s corporate name, Kinkle, Rodiger and Spriggs Professional Corporation, and the KRS initials by which it is also known, and that Complainant has substantial and demonstrated rights in that name and those initials.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), 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 interest in the 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 asserts that Respondent’s lack of rights and legitimate interests in the Domain Name is demonstrated primarily by the fact that the Domain Name was originally registered and used by Complainant in the conduct of its business operations until its registration expired on February 12, 2014. Respondent did not register it until February 28, 2014 and is making no demonstrable use of it for any purpose other than to sell it back to Complainant, or perhaps to some other party. He is not using it in connection with a bona fide offering of goods or services, and is not commonly known by the name “krsattys-riv” or any variation thereof. Based upon this, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and it is incumbent upon Respondent to demonstrate that it does.
The only basis Respondent asserts in support of his claim of rights or legitimate interests is the fact that upon the expiration of Complainant’s registration of the Domain Name he took lawful possession of it by registering it in his name. He states that he should not be prevented from the “full potential investment opportunity” it represents. It is difficult to imagine any investment potential the Domain Name might have for Respondent other than the opportunity to sell it back to the Complainant. Registering and holding a domain name solely for the purpose of selling it back to its original owner is not sufficient to confer rights or legitimate interests in that name upon a respondent. In fact, just the opposite result occurred in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), where the Panel concluded that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). Respondent makes no effort to demonstrate any of the indicia of rights and legitimate interests listed in Policy ¶ 4(c), and indeed none appears from the evidence presented.
Based upon the foregoing, the Panel finds and determines that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Respondent registered and is holding the Domain Name for the purpose of selling it back to Complainant, who originally owned it, or possibly to some other party. This is evidence of bad faith registration and use. Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.”)
Respondent’s bad faith is further demonstrated by the circumstances attending his registration of the name. Respondent was engaged by Complainant as its IT support and maintenance contractor. While he was so engaged, Complainant directed Respondent on its behalf to renew its registration of the Domain Name, and Respondent stated that he would do so. Approximately two weeks later, Complainant terminated Respondent’s services as its IT support, apparently because Respondent was married to an associate attorney who left the Complainant, along with a partner or shareholder of Complainant, to start a new firm. Respondent did not renew the Domain Name as he had stated he would. He did not notify Complainant that its registration of the Domain Name had not been renewed and that he would not renew it as he had earlier stated. Instead, he waited until the registration expired and then registered the Domain Name in his own name. This also is evidence of bad faith. BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).
Based upon the foregoing, the Panel finds and determines that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <krsattys-riv.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 5, 2014
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