Kansas City Southern Industries v. Whois ID Theft Protection c/o Domain Admin
Claim Number: FA0610000818403
Complainant is Kansas City Southern Industries (“Complainant”), represented by Dennis P. McCooe, of Blank Rome LLP, One Logan Square, Philadelphia, PA 19103. Respondent is Whois ID Theft Protection c/o Domain Admin (“Respondent”), PO Box 116WB, West Bay Grand Cayman, GT KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kcsm.com>, registered with Dotster.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2006.
On October 12, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <kcsm.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 October 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 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@kcsm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A craryJ 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 <kcsm.com> domain name is identical to Complainant’s KCSM mark.
2. Respondent does not have any rights or legitimate interests in the <kcsm.com> domain name.
3. Respondent registered and used the <kcsm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kansas City Southern Industries, is a holding
company comprised of three railroad operating companies. One of Complainant’s railroad operating
companies, Kansas City Southern de Mexico, S.A. de C.V., is commonly known by
the KCSM mark, and operates the primary rail route in northern and central
Mexico, linking Mexico City and Monterey, Mexico with Laredo, Texas. Complainant’s KCSM rail network extends more
than 2,600 miles and serves 80 percent of Mexico’s major industrial and
population centers. Complainant
provides evidence that it began utilizing its KCSM mark in commerce on December
5, 2005.
Respondent, Whois ID Theft Protection c/o Domain Admin, registered the <kcsm.com> domain name on March 26, 2003. Respondent’s disputed domain name resolves to a website offering links to third-party websites unrelated to Complainant’s business.
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.
Although it is clear that the <kcsm.com> domain
name is identical to Complainant’s KCSM mark under the Policy, Complainant has
not established any rights to the KCSM mark that predate Respondent’s
registration of the disputed domain name.
Complainant asserts common law rights in the KCSM mark as a result of
its longstanding use of the KCSM mark in commerce. However, Complainant has submitted evidence indicating that it
began utilizing the KCSM mark in commerce on December 5, 2005. In light of Respondent’s registration of the
<kcsm.com> domain name on March 26, 2003, Complainant fails to
offer any evidence that it had established common law rights in the mark by
acquiring secondary meaning prior to the registration of Respondent’s disputed
domain name. Therefore, the Panel finds
that Complainant’s evidence is insufficient to establish common law rights in
the KCSM mark through secondary meaning prior to the registration of the
disputed domain name, and thus, Complainant has not satisfied Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v.
Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i)
“necessarily implies that Complainant’s rights predate Respondent’s
registration . . . of the domain name”); see also Trujillo v. 1Soft Corp.,
FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown
that their rights pre-date Registrant's domain name, Complainants have not
satisfied paragraph 4(a)(i) of the Policy.”).
Moreover, Complainant contends that Respondent’s <kcsm.com> domain name is confusingly similar to Complainant’s KCS or KCSR marks pursuant to Policy ¶ 4(a)(i). However, because Complainant’s KCS and KCSR marks, as well as Respondent’s <kcsm.com> domain name consist of a combination of letters, the Panel finds that the disputed domain name is not confusingly similar to either of Complainant’s marks under Policy ¶ 4(a)(i). See Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.”); see also Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical or confusingly similar to a trademark in which the complainant has rights).
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
As a result of Complainant’s failure to establish the first element of the Policy, it is unnecessary to address the claims under the remaining two elements. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kcsm.com> domain name REMAIN WITH Respondent.
James A. Crary, Panelist
Dated: December 4, 2006
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