Stillwater Designs and Audio, Inc. v. William Sullivan d/b/a Proline
Claim Number: FA0603000669550
Complainant is Stillwater Designs and Audio, Inc. (“Complainant”), represented by Mary M. Lee, 1300 E. 9th Street No. 4, Edmond, OK 73034-5760. Respondent is William Sullivan d/b/a Proline (“Respondent”), 790 Utica Ave., Brooklyn, NY 11203.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kickercarstereo.com>, registered with Register.Com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 29, 2006.
On March 28, 2006, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kickercarstereo.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@kickercarstereo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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 makes the following assertions:
Complainant has continuously used the KICKER trademark since 1973 in connection with its marketing of a wide range of car stereo products, including subwoofers, tweeters, amplifiers and signal processors.
Complainant has registered the KICKER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,462,647 issued October 27, 1987; Reg. No. 1,888,305 issued April 11, 1995).
Complainant has also registered the KICKER mark in the European Community (Reg. No. 97162 issued March 4, 2002) and in numerous countries around the world, including Argentina, Australia, Italy, and Singapore.
Complainant also registered the <kicker.com> domain name on December 27, 1995.
Respondent registered the <kickercarstereo.com>
domain name on September 12, 2003.
Respondent’s domain name resolves to a web site holding page
that displays links to Complainant’s competitors in the car audio industry and
offers the domain name for sale.
Complainant contacted Respondent on August 1, 2005, and
Respondent’s attorney replied on August 16, 2005 offering to sell the domain
name to Complainant.
Complainant responded to Respondent’s attorney, asking
Respondent to “make an offer.”
On September 29, 2005, Respondent’s attorney responded with an offer to sell the domain name for $5,000, a sum far in excess of Respondent’s costs to acquire it.
Respondent’s <kickercarstereo.com> domain name is confusingly similar to Complainant’s KICKER mark.
Respondent does not have any rights or legitimate interests in the domain name <kickercarstereo.com>.
Respondent registered and uses the <kickercarstereo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the subject domain name was registered and is being used by Respondent 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."
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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Because Complainant has registered the KICKER mark with the
USPTO and other governmental authorities, Complainant has established rights in
the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.” See also Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.” Likewise see Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a
mark be registered in the country in which a respondent operates; rather it is
sufficient that a complainant can demonstrate rights to a mark in some
jurisdiction).
Respondent’s <kickercarstereo.com> domain name is confusingly similar to Complainant’s KICKER mark pursuant to Policy ¶ 4(a)(i), because the domain name contains Complainant’s entire mark and merely adds the generic terms “car” and “stereo,” which describe Complainant’s business. In Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), a respondent registered four domain names incorporating the complainant’s DIOR mark and merely added the generic terms “fashion” or “cosmetics” to it. The panel there found that the domain names were confusingly similar to the mark in question because the complainant’s mark was well-known in connection with “fashion” and “cosmetics.” Id. Here Respondent’s domain name is confusingly similar, because the generic terms “car” and “stereo” are related to Complainant’s business, so that these additions do not distinguish the domain name from the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <kickercarstereo.com> domain
name. Complainant has the initial
burden of proof to establish that Respondent lacks rights and legitimate
interests in the domain name. Once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here,
the assertion by a complainant that a respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such rights or legitimate interests do exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (concluding that once a complainant asserts
that a respondent has no rights or legitimate interests in respect of a domain
name, the burden of persuasion shifts to the respondent to provide “concrete
evidence that it has rights to or legitimate interests in the domain name at
issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <kickercarstereo.com>
domain name. See Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent
has no rights or legitimate interests in a contested domain name because the
respondent never submitted a response or provided the panel with evidence to
suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002): “Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”
However, the Panel may nonetheless examine the
evidence of record to determine whether Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the <kickercarstereo.com> domain name under the name “William Sullivan d/b/a Proline,” and there is no other evidence before the Panel indicating that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because a respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that a respondent was not commonly known by the domain name <greatsouthernwood.com> where the respondent linked the domain name to <bestoftheweb.com>).
Moreover, Respondent’s <kickercarstereo.com> domain name, which is confusingly similar to Complainant’s KICKER mark, resolves to a website providing links to Complainant’s direct competitors and offering the domain name for sale. In Citigroup Inc. v. Horoshiy, Inc., FA 290633 (Nat. Arb. Forum Aug. 11, 2004), the panel found that a respondent’s use of domain names that were confusingly similar to a complainant’s CITIBANK marks to redirect Internet users seeking the complainant’s products to a website with links offering products competing with those of the complainant did not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Here, it is undisputed that Respondent is diverting Internet users seeking Complainant’s car audio products under the KICKER mark to websites offering competing products. Such diversionary use of the disputed domain name for Respondent’s commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct in
offering to sell a contested domain name in the circumstances there presented
suggested that it had no legitimate interest in the name).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s conduct in offering to sell the disputed domain name to Complainant provides some evidence of bad faith registration and use under Policy ¶ 4(b)(i). It is undisputed in this proceeding that, after Complainant contacted Respondent regarding the disputed domain name, Respondent’s attorney offered to sell the <kickercarstereo.com> domain name for $5,000, which Complainant maintains is far in excess of Respondent’s out-of-pocket costs. Moreover, the disputed domain name resolves to a web page offering the disputed domain name for sale. In Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000), the panel found that a respondent’s offer to sell the <dollarcar.net> domain name to a complainant for $3,000 indicated that the respondent registered and used the disputed domain name primarily to earn a profit in excess of its out-of-pocket costs. Here Respondent has asked $5,000 as its price to transfer the disputed domain name to Complainant. In the absence of evidence to the contrary, the Panel infers that this amount is in excess of Respondent’s out-of-pocket costs, and thus that Respondent’s offer to sell the disputed domain name contravenes Policy ¶ 4(b)(i). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when a domain name itself notes that it is “available for lease or sale,” that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by” its relation to the complainant’s registered DINERS CLUB mark).
The Panel also finds that Respondent has registered and is
using the domain name <kickercarstereo.com> in bad faith pursuant
to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a holding
page providing links to websites in competition with Complainant. The Panel infers that Respondent receives
click-through fees for each consumer it redirects to these websites via the
links. Therefore, Respondent is
evidently intent upon taking advantage of the likelihood of confusion between
Respondent’s domain name and Complainant’s KICKER mark to capitalize on the
goodwill associated with the mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to a complainant’s mark to redirect users to a website offering services
similar to those offered by the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where a domain name
resolved to a website that offered products similar to those sold under a
complainant’s famous mark).
Furthermore, it appears
that Respondent has registered and uses the disputed domain name for the purpose of disrupting the business of
Complainant, because Respondent is using the <kickercarstereo.com>
domain name, which includes Complainant’s
KICKER mark, to operate a website displaying links to Complainant’s
competitors. Therefore, Respondent has
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding that a respondent registered the domain name
in question to disrupt the business of a complainant, a competitor of the
respondent); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
Finally under this heading, it is evident that Respondent
registered the contested domain name with either actual or constructive
knowledge of Complainant’s rights in the KICKER mark by virtue of Complainant’s
prior registration of that mark with the pertinent authorities in the United
States and elsewhere around the world.
Registration of a confusingly similar domain name despite such actual or
constructive knowledge evidences bad faith registration and use of the domain
name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002);
see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Thus the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <kickercarstereo.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 9, 2006
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