Kinnser Software, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1505001618122
Complainant is Kinnser Software, Inc. (“Complainant”), represented by Richard R. Ruble of The Ruble Law Firm, P.C., Texas, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinnser.org>, registered with Gransy s.r.o. d/b/a subreg.cz (R1863-LROR).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2015; the Forum received payment on May 6, 2015.
On May 12, 2015, Gransy s.r.o. d/b/a subreg.cz (R1863-LROR) confirmed by e-mail to the Forum that the <kinnser.org> domain name is registered with Gransy s.r.o. d/b/a subreg.cz (R1863-LROR) and that Respondent is the current registrant of the name. Gransy s.r.o. d/b/a subreg.cz (R1863-LROR) has verified that Respondent is bound by the Gransy s.r.o. d/b/a subreg.cz (R1863-LROR) 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 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2015 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@kinnser.org. Also on May 14, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 this administrative proceeding proceed in English pursuant to UDRP Rule 11(a). Complainant makes this request even in light of the Czech language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evidence a familiarity with the English language, filing of a trademark registration with an entity which evidences an understanding of the English language, and any evidence (or lack thereof) showing Respondent’s understanding of the Czech language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Czech language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). In this case, Respondent communicated with Complainant in English via email. Respondent’s parking page is entirely in English.
Pursuant to UDRP Rule 11(a), the Panel finds there is sufficient persuasive evidence that Respondent is conversant and proficient in the English language. The proceeding shall be in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the KINNSER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,684,810, first used in commerce Dec. 31, 2003, filed July 10, 2014, registered Feb. 10, 2015). Complainant provides innovative software solutions to the home health agency industry and uses the KINNSER mark in connection with its goods and services. The <kinnser.org> domain name is identical to the KINNSER mark. The domain name contains Complainant’s mark in full and attaches the generic top-level (“gTLD”) domain “.org” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent received authorization from Complainant to use the KINNSER mark. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to attempt to exploit users seeking Complainant’s website and services.
Respondent has engaged in bad faith registration and use of the <kinnser.org> domain name. Respondent registered the disputed domain for the purpose of selling, renting or transferring the disputed domain name to Complainant. Further, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims it owns the KINNSER mark through its registration with the USPTO (Reg. No. 4,684,810, first used in commerce Dec. 31, 2003, filed July 10, 2014, registered Feb. 10, 2015). Complainant provides innovative software solutions to the health care industry (including home care agencies) and uses the KINNSER mark in connection with its goods and services. Prior panels have concluded the relevant date for determining rights in a registered mark is the date of filing. 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.”). At this stage of proceedings, it is not necessary for Complainant to prove its rights are superior to Respondent’s rights. All Complainant need to prove is Complainant has SOME rights. Complainant has established rights in the KINNSER mark under Policy 4(a)(i), dating back to July 10, 2014.
Respondent registered the <kinnser.org> domain name on June 7, 2010, which predates the filing of Complainant’s KINNSER trademark. When a disputed domain name predates a registration and filing date of a trademark, Complainant may establish Common Law rights by demonstrating a secondary meaning in the 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 claims to have expended a substantial amount of time, effort, and monetary resources to promote its KINNSER name and mark throughout the United States and in other countries. Complainant has developed substantial goodwill, public recognition, and secondary meaning in the KINNSER mark, and has become recognized as the exclusive source of software solutions for the healthcare industry starting December 31, 2003. Health care agencies in the United States performed over 18 million billable visits using Complainant’s products and services under the KINNSER mark. Complainant has established secondary meaning in its mark. Therefore, Complainant has common law rights in the KINNSER mark, satisfying the initial requirement of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Complainant claims the <kinnser.org> domain name is identical to the KINNSER mark. The domain name contains Complainant’s mark in full and attaches the gTLD “.org” to the domain name. The addition of a gTLD renders a disputed domain name identical to a mark under Policy ¶4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). Therefore, the <kinnser.org> domain name is identical to Complainant’s mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 or legitimate interests in the disputed domain name, because Respondent is not commonly known by the disputed domain name, nor has Respondent received authorization from Complainant to use the KINNSER mark. The WHOIS information for the domain name in dispute lists “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois protection, this company does not own this domain name s.r.o.” as the registrant of record (a rather long name indeed!). Respondent has not provided any evidence to support that it is commonly known by the disputed domain name (in email correspondence, Respondent referred to itself as “Mr. Chen”-which bears no obvious relationship to the domain name). It seems clear Respondent lacks rights to the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to attempt to exploit users seeking Complainant’s website and services with a dynamic linked parking page. The resolving website features advertising hyperlinks, some of which compete with Complainant. Users may click on links such as “Home Health Agencies,” “Medical Billing Software,” and “Electronic Medical Record.” Offering competing hyperlinks that generate commercial revenue is not a bona fide offering of goods or services, nor a legitimate “non-commercial or fair use.” See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent’s use of Complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Furthermore, Respondent has acquired no rights by registering the domain name because it was registered using a privacy service. Since Respondent is not publicly associating itself with the domain name, Respondent cannot acquire any rights in the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the disputed domain for the purpose of selling, renting or transferring the disputed domain name to Complainant. Respondent initially offered to sell the disputed domain name to Complainant for $2,500. After receiving a cease and desist letter from Complainant, Respondent reduced his demand to $1,950. Offering to sell a disputed domain name in excess of out-of-pocket costs constitutes bad faith registration pursuant to Policy ¶4(b)(i) (and Respondent never proved its out of pocket costs). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). Respondent registered the disputed domain in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The disputed domain name features several hyperlinks that purport to take the user to a login portal for Complainant’s software. However, the user is taken to sites of competing companies offering health care management software. Respondent is likely paid by the owners of such other website through pay-per-click fees. Operating a pay-per-click website constitutes bad faith. Respondent’s use of the disputed domain name sufficiently demonstrates Respondent’s bad faith registration and use under Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)).
Finally, Respondent registered the domain name using a privacy service. This means the registrant of the domain name is a nominee who holds bare legal title for an undisclosed beneficiary (who is the real party in interest). In the commercial context, this raises the rebuttable presumption of bad faith registration and use of the domain name. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <kinnser.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, June 16, 2015
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