Kannaway, LLC v. Mark Beard / DCTU
Claim Number: FA1406001567069
Complainant is Kannaway, LLC (“Complainant”), represented by Dana Kislig of Wellman & Warren, California, USA. Respondent is Mark Beard / DCTU (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kanaway.info>, <kanaway.net>, and <kanaway.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2014; the National Arbitration Forum received payment on June 26, 2014.
On Jun 27, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <kanaway.info>, <kanaway.net>, and <kanaway.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@kanaway.info, postmaster@kanaway.net, postmaster@kanaway.org. Also on July 2, 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 July 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
i. Complainant, Kannaway, LLC, has been using the KANNAWAY mark since 2014 in connection with the sale of nutrition and wellness products.
ii. Complainant has a pending trademark registration with the United States Patent and Trademark Office (“USPTO”) for the KANNAWAY mark (Reg. No. 86,176,026, filed January 27, 2014).
iii. The disputed domain names are confusingly similar to the mark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain names.
ii. Respondent is attempting to sell the disputed domain names to Complainant for a profit.
i. Respondent is attempting to sell the disputed domain names to Complainant for far more than he paid for them.
a. Respondent registered the disputed domain names on March 25, 2014.
1. Respondent’s <kanaway.info>, <kanaway.net> and <kanaway.org> domain names are confusingly similar to Complainant’s KANNAWAY mark.
2. Respondent does not have any rights or legitimate interests in the <kanaway.info>, <kanaway.net> and <kanaway.org> domain names.
3. Respondent registered or used the <kanaway.info>, <kanaway.net> and <kanaway.org> domain names 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 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.”).
Complainant asserts that it has been using the KANNAWAY mark since 2014 in connection with the sale of nutrition and wellness products. Complainant alleges that it has a pending trademark application with the USPTO for the KANNAWAY mark (Reg. No. 86,176,026, filed January 27, 2014). Pending trademark applications are not evidence of trademark rights for the purposes of the Policy. Bar Code Disc. Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001) (“[A]n application for registration standing alone establishes neither rights nor presumptions.”). However, the Panel in Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007 noted that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark. The Panel notes that Complainant makes no allegations of common law rights, but the panel finds the evidence shows use of KANNAWAY in commerce since January 2014. The record is not clear about the extent of Complainant’s secondary meaning, if any. See Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant’s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish that complainant had acquired secondary meaning in the MEGA SHOES mark where there was very minimal evidence in the record to support this claim). Based on the, albeit scant, evidence in the record, the Panel finds common law rights dating to January 2014 sufficient to overcome the initial test under Policy ¶ 4(a)(i). Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element . . . .”)
Complainant contends that the disputed domain names are confusingly similar to the mark in which Complainant has rights. The Panel sees that the disputed domain names merely omit a letter from Complainant’s KANNAWAY mark. The Panel notes that such small typographical errors do not traditionally defeat a finding of confusingly similar. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Further, the Panel observes that Respondent added the generic top-level domain names (“gTLD”) “.info”, “.net”, and “org” to Complainant’s mark. The Panel notes that the addition of a gTLD does not adequately distinguish a disputed domain name from the mark it is confusingly similar to. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, the Panel determines that the disputed domain names <kanaway.info>, <kanaway.net>, and <kanaway.org> are confusingly similar to the KANNAWAY mark in which Complainant has rights.
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.”).
Complainant argues that Respondent is not commonly known by the disputed domain names <kanaway.info>, <kanaway.net>, and <kanaway.org>. The Panel notes that the registrant of the disputed domain names is listed as “Mark Beard”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. At present, the situations are comparable as the only information available to the Panel is the name listed in the WHOIS information due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names <kanaway.info>, <kanaway.net>, and <kanaway.org> pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent, as a distributor in Complainant’s multi-level marketing program was forbidden from registering domain names incorporating the KANNAWAY mark and that Respondent signed agreements to that effect. The Panel finds that registering domain names in violation of an express agreement demonstrates a lack of rights or legitimate interests. Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (concluding that the respondent had no rights or legitimate interests in disputed domain names containing the complainant’s marks even though it was a part of the complainant’s affiliate program, as the affiliate agreement expressly stated that affiliates could not register domain names containing the CRICKET mark)
Complainant urges that Respondent is attempting to sell the disputed domain names to Complainant for a profit. Complainant presumes that Respondent is holding the disputed domain names hostage for commercial gain. See Amended Complaint. The Panel agrees that Respondent is attempting to sell the disputed domain names to Complainant for commercial gain, and the Panel finds that Respondent has not registered and is not using the disputed domain names for 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). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Complainant states that Respondent is attempting to sell the disputed domain names to Complainant for far more than he paid for them. See Amended Complaint. The Panel notes that seeking exorbitant sale prices that far exceed the out-of-pocket cost of the disputed domain name is often seen as evidence of bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Accordingly, the Panel agrees that Respondent is attempting to sell the disputed domain names to Complainant for significantly more than he paid for them, and the Panel finds evidence of bad faith under Policy ¶ 4(b)(i).
Additionally, the Panel finds that the registration of domain names in direct violation of the distributorship agreement between Complainant and Respondent is clear evidence of bad faith registration and use of the domain names. AndyMac Bank, F.S.B. v. Kato, FA 190366 (Nat. Arb. Forum Oct. 6, 2003) (“Registration of a domain name in violation of a license agreement between the Complainant and Respondent that states that no use of the trademark is permissible without authorization . . . is evidence of bad faith registration.”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kanaway.info>, <kanaway.net>, and <kanaway.org> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 12, 2014
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