Knives Plus, Inc. v. Michael Martin
Claim Number: FA1705001729879
Complainant is Knives Plus, Inc. (“Complainant”), represented by Christian D. Stewart of Burdett Morgan Williamson & Boykin, LLP, Texas, USA. Respondent is Michael Martin (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <damascussteelknivesplus.com>, 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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <damascussteelknivesplus.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 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2017 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@damascussteelknivesplus.com. Also on May 9, 2017, 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, 2017.
On June 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights to the trade mark KNIVES PLUS by way of its U.S. trademark registration No. 2,311,820 covering “retail store services featuring cutlery and cutlery accessories”. The trademark application was filed on February 5, 1999. The KNIVES PLUS mark was first used in commerce on March 31, 1987 and continues to be used. Complainant uses the KNIVES PLUS mark to sell knives through its website located at <knivesplus.com> and has done so since 1999. The <knivesplus.com> domain name was registered on December 17, 1998.
Respondent registered the disputed domain name on March 24, 2014. The disputed domain name is confusingly similar to Complainant’s KNIVES PLUS trade mark. It wholly incorporates the KNIVES PLUS trade mark and merely adds the words “damascus steel” in the same “.com” Top-Level domain (“TLD”). Such an addition fails to distinguish the disputed domain name from Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not a licensee nor is he in any way affiliated with Complainant. Respondent’s registration of <damascussteelknivesplus.com> was made 15 years after Complainant filed its application for registration of the KNIVES PLUS trade mark. That puts Respondent on constructive notice of Complainant’s rights to the KNIVES PLUS trade mark. Respondent has not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not been commonly known as Damascus Steel Knives Plus prior to Respondent being put on constructive notice of Complainant’s trademark rights. Respondent has no federal trademark rights in any variation of KNIVES PLUS.
Respondent registered and has used the disputed domain name in bad faith. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s KNIVES PLUS trade mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Confusion is increased by the fact that both Complainant and Respondent sell cutlery and cutlery accessories; both use the Internet to advertise and promote their business activities; and Respondent’s website does not disclaim any association with Complainant. A search inquiry on the Internet for Complainant’s KNIVES PLUS trade mark causes Respondent’s website to appear in the listing.
Adding “Damascus Steel” in front of the words “Knives Plus” in the disputed domain name underscores the bad faith since “Damascus Steel” is a kind of knife and not a source identifier. Complainant sells Damascus Steel knives.
Respondent has registered the disputed domain name for the primary purpose of disrupting the business of a competitor. Disruption may be inferred by the fact that Respondent registered a variation of Complainant’s trade mark by adding a generic or descriptive word.
A cease and desist letter was sent to Respondent on March 16, 2017. Respondent replied stating that he would not change his business and domain name.
B. Respondent
The disputed domain name is not identical to Complainant’s KNIVES PLUS mark due to the descriptive phrase preceding the words comprising the mark. The descriptive phrase informs the consumer of the type of knives featured predominantly on Respondent’s website and is the main element preventing confusion for consumers looking for Damascus steel knives. Respondent has legitimate interests in respect of the disputed domain name and is commonly known thereby on social media and advertisements. Respondent made efforts to determine if the disputed domain name was in use by another party. Searches of TESS of the USPTO for “Damascus steel knives” and “Damascus steel knives plus” did not return any result.
Respondent does not dispute Complainant’s assertions that:
- Respondent has not had any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services and Respondent has not been commonly known as Damascus Steel Knives Plus prior to Complainant’s application for the federal service mark;
- Respondent has no federal trademark rights in any variation of KNIVES PLUS;
- Respondent is not a licensee or affiliated in any way with Complainant; and
- <knivesplus.com> is not a generic name.
Respondent asserts that the disputed domain name has been used for a webpage with a bona fide offering of goods or services since October 15, 2015. He was unaware of the existence of Complainant’s <knivesplus.com> domain until receipt of the cease and desist letter from Complainant’s attorney. Respondent is making a legitimate fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s KNIVES PLUS trade mark.
The disputed domain name was not registered nor is it used in bad faith even though he may have been put on constructive notice of Complainant’s rights in KNIVES PLUS at the time of registration. Due to the page ranking of Respondent’s website, there is much less probability of consumer confusion. Respondent also differentiates his business from other retailers by specializing in the sale of Damascus steel knives.
(a) The disputed domain name is confusingly similar to the KNIVES PLUS trade mark in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed 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 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.
Complainant has established it has rights in the KNIVES PLUS trade mark.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s said trade mark. The KNIVES PLUS mark has been incorporated into the disputed domain name and is clearly identifiable therein. It has been well established in many previous UDRP panel decisions under the Policy that the addition of a generic term is not sufficient to remove the confusing similarity with a complainant’s mark. The addition of the term “Damacus steel” in the disputed domain name in fact adds to the confusion; Internet users are likely to perceive the disputed domain which contains the KNIVES PLUS trade mark as that of Complainant, and to be used for the specific purpose of advertising or offering for sale Damascus steel knives. See e.g. Gilette Co. v. RKF Assocs., FA 492867 (Forum July 28, 2005) and para. 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”).
Paragraph 4(a)(i) of the Policy has therefore been established.
Complainant must first establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden shifts to Respondent to show he does have rights or legitimate interests. (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006).
Paragraph 4(c) of the Policy provides that any of the following circumstances, if found to exist, would demonstrate a respondent’s rights or legitimate interests in respect of a domain name in dispute:
“( i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not a licensee of Complainant nor authorized by Complainant to use the KNIVES PLUS trade mark. There is no evidence that Respondent has been commonly known by the disputed domain name or “Knives Plus”.
The burden accordingly shifts to Respondent to show that he has rights or legitimate interests in the disputed domain name. The Panel is of the view that Respondent has failed to show how he has rights or legitimate interests in the disputed domain name which not only contains the generic term “Damascus steel”, but incorporates the Complainant’s federally-registered KNIVES PLUS trade mark which has been in use for about 30 years. Respondent has failed to explain his choice of words making up the disputed domain name (namely, why he chose to add “plus” after the word “Knives”/the specific combination “KNIVES PLUS”). Whilst Respondent may have a basis to support his registration of a domain name containing the term “Damascus steel”, no basis has been provided in respect of the term “KNIVES PLUS” which is a registered trade mark.
The Panel finds that Respondent has failed to satisfy his evidentiary burden and it therefore concludes that paragraph 4(a)(ii) of the Policy has been established by Complainant.
Paragraph 4(b) of the Policy sets out that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel concludes, after due consideration of the evidence in this case, that Respondent’s registration and use of the disputed domain name have been in bad faith. Respondent failed to demonstrate a legitimate right or interest in the disputed domain name. On a preponderance of the evidence, in particular the fact that the parties operate in and are competitors within the same field selling similar products, Complainant’s federally-registered KNIVES PLUS mark has been in use since 1987, and the disputed domain name contains Complainant’s mark, the Panel concludes that the registration and use have been in bad faith. The circumstances fall within those set out in paragraph 4(b)(iv) of the Policy. This finding is consistent with the decisions of previous panels where evidence of bad faith was found in circumstances where the respondents used the domain names in dispute to operate websites in competition with the complainant (see e.g. MathForum.com, LLC v. Weiguang Huang, D2000-0743, WIPO, August 17, 2000); Computerized Sec. Sys., Inc. v Hu, FA 157321 (Forum, June 23, 2003)).
The Panel finds it highly unlikely that Respondent, when considering registration of his domain name, would not have come across Complainant’s <knivesplus.com> domain name (both with the same TLD) which was registered many years before the date of the registration of the disputed domain name. See paragraph 3.2.2 of the WIPO Overview:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
See also Zions Bancorporation v. Jim Pearl, D2014-0007, WIPO, April 1, 2014:
“In this Panel’s view, when the disputed domain name was registered in 2013, the Respondent had constructive knowledge of the Complainant’s pre-existing trademark rights and registrations under United States trademark law. See, e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128 (“The Panel notes that both parties are located in the USA and the principle of constructive notice can be applied in accordance with the Rules, Paragraph 15.”). Further, the fact that the Complainant and the Respondent are both located in Utah would suggest that the Respondent likely had actual knowledge of the Complainant and its trademarks at the time the Respondent registered the disputed domain name.”
It is indeed implausible that there could be any legitimate reason for Respondent’s choice of the domain name in issue that incorporates Complainant’s federally-registered trade mark. The Panel notes that both Complainant and Respondent are located in the State of Texas. The Panel therefore believes all the more that Respondent likely had actual knowledge of Complainant and its KNIVES PLUS trade mark when he registered the disputed domain name and sought to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s KNIVES PLUS mark as to the source, sponsorship, affiliation or endorsement of his website site or of the products on his website.
Paragraph 4(a)(iii) of the Policy has therefore been established.
Accordingly, it is Ordered that the <damascussteelknivesplus.com> domain name be TRANSFERRED from Respondent to Complainant
Francine Siew Ling Tan, Panelist
Dated: June 7, 2017
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