Dakine, Inc. v. Dmitry Vorobiev
Claim Number: FA1807001797325
Complainant is Dakine, Inc. (“Complainant”), represented by Noel M. Cook of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is Dmitry Vorobiev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <da-kine.com>, registered with Nicco Ltd.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2018; the Forum received payment on July 18, 2018.
On July 20, 2018, Nicco Ltd. confirmed by e-mail to the Forum that the <da-kine.com> domain name is registered with Nicco Ltd. and that Respondent is the current registrant of the name. Nicco Ltd. has verified that Respondent is bound by the Nicco Ltd. 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 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2018 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@da-kine.com. Also on July 24, 2018, 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 August 19, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Dakine, Inc., is an industry leader in outdoor clothing and accessories. Complainant uses its DA KINE mark to promote its products and services and established rights in the DA KINE mark through registration with the United States Patent and Trademark Office ("USPTO”) (e.g., Reg. No. 2,704,219, registered Apr. 8, 2003). See Compl. Ex. F. Respondent’s <da-kine.com> domain name is confusingly similar to Complainant’s mark because it merely adds a hyphen and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <da-kine.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name’s resolving webpage to offer the domain name for sale. See Compl. Ex. H. Historically, Respondent has used the domain name to host advertising links, in addition to periods of non-use. See Compl. Ex. Q.
Respondent registered and uses the <da-kine.com> domain name in bad faith because Respondent conceals its identity using a privacy shield service and aims to sell the domain name. See Compl. Ex. H. Further, Respondent had actual knowledge of Complainant’s rights in the DA KINE mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <da-kine.com> domain name was registered on August 29, 2005.
As the Respondent has failed to file a response in this matter, the Panel shall make its determination based on the unrebutted and reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interest in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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(f), 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 (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 Panel finds that the disputed domain name, <da-kine.com>, is confusingly similar to Complainant’s trademark, DA KINE. Complainant has adequately pled its rights and interests in and to this trademark. Complainant does not clarify in its complaint why it waited 13 years to bring this complaint; however, as this is a default case and the Panel lacks equitable powers such as laches, this complaint will not be dismissed for not being timely brought. See Papa John’s Int’l, Inc. v. Pratap, FA 1427509 (Forum Mar. 20, 2012) (“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.”). Respondent arrives at the disputed domain name by merely adding a hyphen and the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the dispute domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent apparently uses the domain name’s resolving webpage to offer the domain name for sale. See Compl. Ex. H. Historically, Respondent has used the domain name to host advertising links, in addition to periods of non-use. See Compl. Ex. Q.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered and uses the <da-kine.com> domain name in bad faith because Respondent offers the domain name for sale. Offer for sale to the general public may evince bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provides evidence that the domain name is currently, and has historically been, offered to the public for sale. See Compl. Exs. H and Q. Additionally, Complainant notes that Respondent encourages users to offer $500 or more for the domain name, a figure which exceeds out-of-pocket costs. Therefore, the Panel finds that the Respondent registered and uses the <da-kine.com> domain name in bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant argues bad faith based on Respondent’s concealment of its identity using a privacy service. However, the use of a privacy or proxy service alone is insufficient to establish bad faith under Policy ¶ 4(a)(iii). The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”).
The Panel, therefore, finds that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding. As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Furthermore, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DA KINE mark prior to Respondent’s registration of the <da-kine.com> domain name. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark . . . shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Given the alleged fame of Complainant’s mark 13 years ago when the disputed domain name was registered and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to the trademark DA KINE.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <da-kine.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: August 22, 2018
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