Kushwood Manufacturing, Inc. v. Manager,
Webserv c/o Webserv, LLC
Claim
Number: FA0503000436881
Complainant is Kushwood Manufacturing, Inc. (“Complainant”),
represented by Gary J. Nelson, of Christie, Parker and Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena,
CA 91109-7068. Respondent is Manager, Webserv c/o Webserv, LLC (“Respondent”), 8 Copthall, Roseau, Roseau 00152, DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <kushwood.com>, registered with Network
Solutions, 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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 9, 2005.
On
March 11, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <kushwood.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, 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
March 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 5, 2005 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@kushwood.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (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 <kushwood.com>
domain name is identical to Complainant’s KUSHWOOD mark.
2. Respondent does not have any rights or
legitimate interests in the <kushwood.com> domain name.
3. Respondent registered and used the <kushwood.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
manufactured and sold furniture under the KUSHWOOD mark continuously in
commerce since 1979. Complainant has
registered its KUSHWOOD mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,709,871 issued April 15, 2003). Complainant’s USPTO registration cites a date of first use in
commerce as 1979.
Respondent
registered the <kushwood.com> domain name on December 8,
1996. Respondent’s domain name resolves
to a website that features links to competing furniture companies.
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.
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
Respondent registered the <kushwood.com> domain name prior to
Complainant’s registration of its KUSHWOOD mark with the USPTO, for the
purposes of Policy ¶ 4(a)(i), Complainant has established common law rights in
the mark, dating back to 1979. See SeekAm. 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 Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Fishtech v.
Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the
complainant had common law rights in the mark FISHTECH, which it had used since
1982).
Respondent’s <kushwood.com>
domain name is identical to Complainant’s KUSHWOOD mark. The mere addition of the generic top-level
domain “.com” is not enough to distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”); see also Kioti Tractor Div. v. O’Bryan Implement
Sales,
FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical
to Complainant's KIOTI mark because adding a top-level domain name is
irrelevant for purposes of Policy ¶ 4(a)(i).”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., 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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. See Parfums Christian Dior v. QTR Corp., D2000-0023
(WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has
failed to invoke any circumstance which could demonstrate any rights or
legitimate interests in the domain name); 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.”).
Respondent is
using the identical <kushwood.com> domain name to operate a
website that features links to competing furniture companies. Such competing use is not a use in
connection with 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). See Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
the respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with the complainant, was not a
bona fide offering of goods or services); see also Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the
respondent’s appropriation of the complainant’s mark to market products that
compete with the complainant’s goods does not constitute a bona fide offering
of goods and services).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<kushwood.com> domain name or authorized to register domain names
featuring Complainant’s KUSHWOOD mark. See
Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <kushwood.com> domain name, which is identical to
Complainant’s KUSHWOOD mark, to operate a website that features links to
competing furniture companies. Such use
constitutes disruption and is evidence that Respondent registered and used the
disputed 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 the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
The evidence
reveals that Respondent receives click-through fees for diverting Internet
users to competing websites. Since
Respondent’s domain name is identical to Complainant’s KUSHWOOD mark, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
The Respondent’s commercial use of the <kushwood.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant’s mark when the domain name
resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant).
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 <kushwood.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
April 25, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum