Greg Young Publishing v. Domain Magic, LLC
Claim Number: FA0701000886337
Complainant is Greg Young Publishing (“Complainant”), represented by Jason
Aquilino,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <kerneerickson.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2007.
On January 12, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <kerneerickson.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 January 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2007 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@kerneerickson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <kerneerickson.com> domain name is identical to Complainant’s KERNE ERICKSON mark.
2. Respondent does not have any rights or legitimate interests in the <kerneerickson.com> domain name.
3. Respondent registered and used the <kerneerickson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Greg Young Publishing, is the assignee of the
intellectual property rights of Kerne Erickson, an artist from
Respondent registered the <kerneerickson.com> domain name on April 30, 2006 and has used the disputed domain name since that date to maintain a commercial web directory with links to various third-party websites unrelated to Complainant.
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 does not own a trademark registration
for the KERNE ERICKSON mark, the Panel finds that Policy ¶ 4(a)(i) does not
require registration in order for Complainant to demonstrate its rights in the
mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July
18, 2006) (finding that the
complainant need not own a valid trademark registration for the ZEE CINEMA mark
in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
Complainant’s artist-client has continuously used the KERNE
ERICKSON mark in connection with his artwork since the 1960s. Artwork under the KERNE ERICKSON mark can be
found in numerous establishments and has won numerous awards over the years. As a result, the KERNE ERICKSON mark has
acquired secondary meaning in association with artwork, and therefore, the
Panel finds that Complainant can establish common law rights in the mark
pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v.
Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002)
(finding that the complainant established common law rights in the mark through
continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Ass’n of Tex. Prof’l Educators,
Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding
that the complainant had demonstrated common law rights in the ATPE mark
through continuous use of the mark in connection with educational services for
over twenty-five years).
Respondent’s <kerneerickson.com>
domain name is an exact replica of Complainant’s KERNE ERICKSON mark but for
the lack of a space in between terms and the addition of the generic top-level
domain (“gTLD”) “.com.” Neither
alteration is relevant to a Policy ¶ 4(a)(i) analysis and therefore, the Panel
finds the disputed domain name to be identical to the mark under Policy ¶
4(a)(i). See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24,
2006) (“The disputed domain names are identical to Complainant’s mark, but for
the addition of a generic top-level domain suffix (“.com” or “.net”).”); see also
The Panel concludes that Complainant has sufficiently satisfied this element of the Policy.
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
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 pursuant to Policy ¶ 4(a)(ii). See AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate interests
in the subject domain names.”); see also
Hanna-Barbera Prods., 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 <kerneerickson.com> domain name. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names). 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 disputed domain name under the name “Domain Magic, LLC,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <kerneerickson.com> domain name. As a result, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Moreover, Respondent is using the <kerneerickson.com> domain name, which is identical to Complainant’s mark, for
the sole purpose of diverting Internet users to a web directory containing
links to third-party websites wholly unrelated to Complainant’s KERNE ERICKSON
mark. Such use of the disputed
domain name for 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum
June 12, 2003) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to websites unrelated to
the complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the
Policy); see also Disney Enters., Inc. v. Dot Stop, FA
145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the disputed domain
names).
The Panel concludes that Complainant has sufficiently satisfied this element of the Policy.
Respondent is using the <kerneerickson.com> domain name, which is identical to
Complainant’s KERNE ERICKSON mark, to divert Internet users to a web directory
containing links to third-party websites completely unrelated to Complainant’s
name and mark. The Panel infers that
Respondent receives click-through fees for diverting consumers to these
websites. Therefore, Respondent is
taking advantage of the likelihood of confusion between Respondent’s domain
name and Complainant’s mark and capitalizing on the goodwill associated with
the mark. The Panel finds that such use
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
The Panel concludes that Complainant has sufficiently satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kerneerickson.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 16, 2007
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