Kendra Todd v. Real Estate Radio c/o Leo Miller
Claim Number: FA0608000783428
Complainant is Kendra Todd (“Complainant”), represented by David R. Ellis, 3233 East Bay Drive, Suite 101, Largo, FL 33771. Respondent is Real Estate Radio c/o Leo Miller (“Respondent”), 10248 Brookville Lane, Boca Raton, FL 33428.
The domain name at issue is <kendratodd.com>, registered with Register.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2006.
On August 23, 2006, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kendratodd.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 August 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 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@kendratodd.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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." 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:
1. Respondent’s <kendratodd.com> domain name is identical to Complainant’s KENDRA TODD mark.
2. Respondent does not have any rights or legitimate interests in the <kendratodd.com> domain name.
3. Respondent registered and used the <kendratodd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kendra Todd, is a real estate broker and agent who is also a television and radio show personality as a result of winning season three of the popular television show, The Apprentice. Complainant has filed an application with the United States Patent and Trademark Office (“USPTO”) for use of her name, the KENDRA TODD mark (Filing No. 78/655210). Complainant also holds a service mark registration with the State of Florida for the KENDRA TODD mark (Reg. No. T06000001023).
Respondent registered the <kendratodd.com> domain name on July 22, 2004. Respondent’s disputed domain name previously resolved to false information concerning Complainant. The information has since been removed by Respondent’s Internet Service Provider, and the disputed domain name is currently not being actively used.
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:
(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.
The Panel finds that Complainant has established trademark
rights in the KENDRA TODD mark through a State Service Mark registration, an
application with the USPTO, and because the mark is Complainant’s given and
used personal name. See Lee Enters.,
Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding
evidence that the complainant had established rights in the BILLINGS GAZETTE
mark through registration with the Montana and Wyoming state trademark
officials); see also Estate of
Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A
person may acquire such a reputation in his or her own name as to give rise to
trademark rights in that name at common law …”).
Respondent’s <kendratodd.com> domain name is identical to Complainant’s name and mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire name with the addition of the generic top-level domain (“gTLD”) “.com.” In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found that the <pomellato.com> domain name was identical to the complainant’s mark because the gTLD “.com” after the name POMELLATO was not relevant. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). Accordingly, the Panel holds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <kendratodd.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
There is no evidence in the record suggesting that
Respondent is commonly known by the <kendratodd.com> domain
name. Complainant asserts that
Respondent is not authorized to use Complainant’s KENDRA TODD mark, and that
Respondent is not associated with Complainant in any way. In
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000), the panel found no rights or legitimate interests where the respondent
was not commonly known by the mark and had never applied for a license or
permission from the complainant to use the trademarked name. See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected).
Respondent has used the website to display false information regarding Complainant. In addition, Respondent has attempted to use the disputed domain name as leverage in attempting to collect money from Complainant. Complainant has also attempted to sell the <kendratodd.com> domain name to Complainant. The Panel finds that these actions demonstrate that Respondent is not using the disputed domain name for either 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 Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding that because a “Complainant has the right to decide how its mark will be used in the context of the product or products associated with the mark,” the unauthorized use of an identical domain name within that very context is not legitimate); see also 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s attempt to sell the <kendratodd.com>
domain name to Complainant for excess of out-of-pocket expenses is evidence of
Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum
Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue
to the complainant was evidence of bad faith).
Additionally, the Panel finds that Respondent registered the disputed domain name in an attempt to use the disputed domain name against Complainant through a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain name. Such use of the <kendratodd.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Experience Hendrix, L.L.C. v. Hammerton D2000-0364 (WIPO Aug. 4, 2000) (finding bad faith because “registration and use of the [<jimihendrix.com>] domain name by Respondent do not predate the Complainant’s use and rights in the name and mark but rather appears [sic] to be an attempt to usurp Complainant’s rights therein”); see also Gilmour v. Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (finding bad faith registration of the <davidgilmour.com> domain name where the respondent knew of the complainant’s fame long before the registration of the domain name and registered the name in order to “trade off that reputation by creating a false association between that domain name and the Complainant’s trademark”).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kendratodd.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 6, 2006
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