Kelly Properties, LLC v. Nanette Quines
Claim Number: FA1701001713597
Complainant is Kelly Properties, LLC (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine LLP, Ohio, USA. Respondent is Nanette Quines (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kellyocg.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2017; the Forum received payment on January 20, 2017.
On January 21, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <kellyocg.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kellyocg.net. Also on January 23, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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:
1. Complainant has registered the KELLYOCG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,796,923, registered June 1, 2010). Respondent’s domain name <kellyocg.net> is confusingly similar to the KELLYOCG mark as the domain name merely adds the generic top-level domain (“gTLD”) “.net.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name or authorized to use the KELLYOCG mark in any manner. Respondent’s domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain name is used to resolve to a website attempting to pass off as Complainant.
3. Respondent has registered and is using the domain name in bad faith. Respondent’s domain name is being used to intentionally attempt to attract internet users for commercial gain. Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
B Respondent:
1. Respondent has not submitted a Response in this proceeding.
1. Respondent’s <kellyocg.net> domain name is confusingly similar to Complainant’s KELLYOCG mark.
2. Respondent does not have any rights or legitimate interests in the <kellyocg.net> domain name.
3. Respondent registered or used the <kellyocg.net> domain name in bad faith.
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."
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.
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(f), 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 (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.”).
Complainant claims to have rights in the KELLYOCG mark based on registration of the mark with the USPTO (Reg. No. 3,796,923, registered June 1, 2010). See Compl., at Attached Annex 4. Panels routinely find, and this Panel finds, that a complainant has rights in a mark based on registration of the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s domain name is confusingly similar to the KELLYOCG mark. Panels have found confusing similarity where a domain name merely differed from another’s mark through the addition of the gTLD. See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel finds that Respondent’s domain name is confusingly similar to the disputed domain name.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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
name.”).
Complainant claims that Respondent has not been commonly known by the disputed domain name or authorized to use the KELLYOCG mark in any manner. WHOIS information associated with the disputed domain name identifies Respondent as, “Nanette Quines,” which does not appear to resemble the disputed domain name. See Compl., at Attached Annex 1. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). The Panel finds that Respondent has not been commonly known by the disputed domain name.
Complainant next contends that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website that appears identical to Complainant’s own website located <kellyocg.com>. Compare Compl., at Attached Annex 5 & 7. Further, Respondent appears to have prompted users to submit job applications after which Respondent requests personal information such as banking information. See Compl., at Attached Annex 8. Panels have held that a respondent using a domain name for the purposes of phishing and passing off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum November 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). The Panel finds that Respondent has not used the domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that Respondent’s use of the domain name, to resolve to a website similar to Complainant’s and attempting to phish for personal information, demonstrates an attempt to confuse and attract internet users for commercial gain. Again, Respondent’s domain name resolves to a website identical to Complainant’s and Respondent appears to attempt to phish for personal information through job applications associated with the domain name. See Compl., at Attached Annex 5, 7, 8. Panels have held that using a confusingly similar domain to resolve to a website identical to that of a complainant has done so in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of Respondent’s wholesale reproduction of Complainant’s website at the disputed domain name it is inconceivable that Respondent could have registered the <kellyocg.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kellyocg.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 6, 2017
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