James W. Cate v. Otis Armour
Claim Number: FA0610000827771
Complainant is James W. Cate (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <krkfallcreek.com>, registered with Addrcreat.
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 October 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2006.
On October 26, 2006, Addrcreat confirmed by e-mail to the National Arbitration Forum that the <krkfallcreek.com> domain name is registered with Addrcreat and that Respondent is the current registrant of the name. Addrcreat has verified that Respondent is bound by the Addrcreat 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 November 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@krkfallcreek.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 30, 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 <krkfallcreek.com> domain name is confusingly similar to Complainant’s KIDS ‘R’ KIDS OF FALL CREEK mark.
2. Respondent does not have any rights or legitimate interests in the <krkfallcreek.com> domain name.
3. Respondent registered and used the <krkfallcreek.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, James W. Cate, is the president of Cate Holding
LP, which does business as “Kids R Kids of Fall Creek.” Complainant formed a limited partnership in
the State of
Respondent registered the <krkfallcreek.com> domain name on May 18, 2004. Respondent registered the disputed domain name on Complainant’s behalf but in Respondent’s own name. Respondent performed various business services for Complainant but upon termination of their relationship, Respondent refused to transfer the disputed domain name to Complainant. Respondent is not currently using 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."
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 Complainant has not registered the KIDS ‘R’ KIDS OF FALL CREEK mark with a governmental trademark authority, the Panel finds that ownership of a trademark registration is not required under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant provides evidence that it formed a limited partnership, “Cate Holding LP” on May 20, 2004, which does business under the KIDS ‘R’ KIDS OF FALL CREEK mark. For purposes of satisfying Policy ¶ 4(a)(i), the Panel concludes that Complainant’s use of the KIDS ‘R’ KIDS OF FALL CREEK mark since 2004 is sufficient for the mark to acquire secondary meaning, and therefore, Complainant has established common law rights in the mark. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
With respect to the <krkfallcreek.com> domain
name, the Panel finds that the simple abbreviation of the terms in
Complainant’s KIDS ‘R’ KIDS OF FALL CREEK mark, without more, does not
sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the <krkfallcreek.com>
domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <krkfallcreek.com> domain name. Complainant must first make a prima facie case
in support of its allegations. The
burden then shifts to Respondent to show it does have 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 certain circumstances, the mere
assertion by the complainant that the respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist); see also
Hanna-Barbera
Productions, Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <krkfallcreek.com>
domain name. See Branco do Brasil
S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default,
Respondent has not contested the allegation . . . that the Respondent lacks any
rights or legitimate interests in the domain name. The Panel thus assumes that there was no
other reason for the Respondent having registered <bancodobrasil.com> but
the presumably known existence of the Complainant’s mark BANCO DO BRASIL”); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Otis Armour,” and there is nothing in the record to suggest that Respondent is commonly known by the <krkfallcreek.com> domain name. As a result, Respondent has not established rights or legitimate interests in the <krkfallcreek.com> domain name pursuant to Policy ¶ 4(c)(ii). The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Although at one time Complainant retained Respondent to register the disputed domain name and create a website for Complainant’s business under the KIDS ‘R’ KIDS OF FALL CREEK mark, Respondent is not currently using the <krkfallcreek.com> domain name. The Panel finds that Respondent’s non-use of the disputed domain name demonstrates a lack of rights or legitimate interests in the <krkfallcreek.com> domain name according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Although Respondent has not violated any of the factors listed in Policy ¶ 4(b), The Panel still finds that, based on the totality of the circumstances, Respondent’s registration and use of the <krkfallcreek.com> domain name is indicative of bad faith registration and use under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
By virtue of its agreement with Complainant to register the disputed domain and create a website for Complainant, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s KIDS ‘R’ KIDS OF FALL CREEK mark. Respondent took advantage of its business deal with Complainant by registering the <krkfallcreek.com> domain name and then refusing to transfer it to Complainant once the business relationship ended. These actions clearly constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Anbex Inc. v. WEB-Comm Technologies Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Furthermore, Respondent’s lack of use of the disputed domain
name in connection with Complainant’s business, the purpose of Respondent’s
registration in the first place, provides additional evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that the respondent’s non-use of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy); see also
Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances,
for inactivity by the Respondent to amount to the domain name being used in bad
faith.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <krkfallcreek.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 13, 2006
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