Leonhard Kurz Stiftung & Co. KG v. North Light Communications
Claim Number: FA1405001560423
Complainant is Leonhard Kurz Stiftung & Co. KG (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is North Light Communications (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brandenhancement.com>, registered with NETWORK SOLUTIONS, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2014; the National Arbitration Forum received payment on May 20, 2014.
On May 21, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <brandenhancement.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@brandenhancement.com. Also on May 22, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant uses the BRAND ENHANCEMENT mark to promote its marketing campaigns. Complainant has also trademarked BRAND ENHANCEMENT BY KURZ in Germany (Reg. No. 30–2013–003–580, registered August 1, 2013). To date Complainant has spent about $125,000 marketing the BRAND ENHANCEMENT mark. Furthermore, this <brandenhancement.com> domain name is identical to the BRAND ENHANCEMENT mark.
Respondent has no rights in the domain name. Respondent was dissolved on May 19, 2000, according to the Maryland Department of Assessments & Taxation. Respondent’s parent company, Conway Marketing, Inc., was also dissolved at a later date. Calls made to Respondent indicated that the line was not in service. Respondent’s listed address has not been used by Respondent since around May 2000. For some reason the domain name continues to be registered each year, despite the fact that the registrar listed the expiration date as December 15, 2001. The domain name has never been used for any active purpose.
Respondent’s conduct amounts to bad faith, even though outside the examples listed in Policy ¶ 4(b). Respondent is no longer a solvent business, and is not using the domain name for any productive or active purpose. The only reason the domain name is unable to be registered by Complainant is some automatic renewal process. Respondent’s continuous renewal of this domain name evidences a now-existing bad faith registration, even if the original registration back in 1999 may not have been in bad faith. In Paragraph 29 of the Complaint, Complainant analogizes to the case of Deutsche
Kreditbank AG v. DKB Data Servs. (USA), Inc. D2009-1084 (WIPO Sept. 30, 2009).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a major international supplier of hot stamping technology and related products.
2. Complainant uses the BRAND ENHANCEMENT mark to promote its marketing campaigns. Complainant has also trademarked BRAND ENHANCEMENT BY KURZ in Germany (Reg. No. 30–2013–003–580, registered August 1, 2013).
3. Complainant has established common law trademark rights in BRAND ENHANCEMENT.
4.The <brandenhancement.com> domain name was registered December 15, 1999.
5. The disputed domain name does not resolve to an active website.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses the BRAND ENHANCEMENT mark to promote its marketing campaigns. Complainant has also trademarked BRAND ENHANCEMENT BY KURZ in Germany (Reg. No. 30–2013–003–580, registered August 1, 2013). The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s filing and registration for the mark at issue. Still, priority trademark registration is not required to prevail under Policy ¶ 4(a)(i); instead, Complainant may demonstrate its rights in the mark through common law. 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.).
Previous panels have held that complainants may establish a common law trademark through evidence involving the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant further asserts that, for several decades, it has worked with brand owners around the world to protect and enhance their brands. Complainant also notes that it has applied for trademark registrations with the Office for the Harmonization of the Internal Market as well as an international trademark registration pursuant to the Madrid Protocol through WIPO. See Compl. Ex. B. To date, Complainant urges it has spent about $125,000 marketing the BRAND ENHANCEMENT mark. In light of Complainant’s efforts, the Panel agrees that the BRAND ENHANCEMENT mark has garnered secondary meaning, and holds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to 2012 first use.
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BRAND ENHANCEMENT mark. Complainant urges the disputed <brandenhancement.com> domain name is identical to the BRAND ENHANCEMENT mark. The Panel notes that the disputed domain name eliminates the space in the mark and affixes the generic top-level domain (“gTLD”) “.com”. Previous panels have determined that the elimination of spacing and the inclusion of gTLDs are insignificant in the ¶ 4(a)(i) analysis because spaces are impermissible in domain names and gTLDs are a required element in all domain names. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds the <brandenhancement.com> domain name is confusingly similar to the BRAND ENHANCEMENT mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BRAND ENHANCEMENT mark and
to incorporate it in its domain name;
(b) The registration of the domain name has regularly been renewed but for no apparent reason , as it is not used for any active purpose in the manner in which domain names are normally used;
(c)Respondent has engaged in the retention of the domain name and the renewal of its registration without the consent or approval of Complainant;
(d) Although Complainant has not made allegations under Policy ¶ 4(c)(ii), the absence of any evidence tying Respondent to this domain name indicates that Respondent is not commonly known by this domain name (e.g., the WHOIS information lists only the allegedly defunct “North Light Communications” as registrant). See 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).
Complainant further claims Respondent was dissolved on May 19, 2000, according to the Maryland Department of Assessments & Taxation. Complainant notes Respondent’s parent company, Conway Marketing, Inc., was also dissolved at a later date. Complainant claims that calls made to Respondent indicated that the line was not in service. Complainant claims the <brandenhancement.com> domain name has never been used for any active purpose. See Compl. Ex. C. The Panel agrees that the facts provided illustrate that Respondent has not made a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, of this domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant claims Respondent’s conduct amounts to bad faith, even though that conduct is outside the examples listed in Policy ¶ 4(b). The Panel agrees that Complainant is not obligated to show bad faith pursuant to Policy ¶ 4(b), so long as bad faith through both use and registration is evidenced under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Complainant claims Respondent is no longer a solvent business, and is not using the domain name for any productive or active purpose. Complainant argues the only reason the domain name is unable to be registered by Complainant is some automatic renewal process. Complainant claims Respondent’s continuous renewal of this domain name evidences a now-existing bad faith registration. In some cases, Panels have found that the renewal of a domain name with requisite bad faith serves to imply Policy ¶ 4(a)(iii) bad faith registration even if the registrant originally registered without bad faith. See Tri-County Aquatics, Inc. v. Jason Blake / The Pond Guy, Inc., FA 1509416 (Nat. Arb. Forum Oct. 1, 2013) (“Respondent nevertheless renewed the disputed domain name twice (each of which is equivalent to a registration under the UDRP). Respondent certainly had actual knowledge of the mark and this was clearly a spite registration (or renewal).”). The Panel agrees and finds that Respondent’s continued renewals evidence Policy ¶ 4(a)(iii) bad faith registration.
Secondly, Complainant also notes the domain name has no known active use. The Panel agrees that failure to make an active use of a domain name is a ground in the absence of evidence to the contrary for finding that the domain name has been used in Policy ¶ 4(a)(iii) bad faith based on the totality of the standards (i.e., that the absence of any use of this domain name at all infers bad faith). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the BRAND ENHANCEMENT mark and all the circumstances, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brandenhancement.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 21, 2014
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