Deseret Digital Media v. Amir Cohen / Hush Privacy Protection Ltd.
Claim Number: FA1906001847442
Complainant is Deseret Digital Media (“Complainant”), represented by James T. Burton of Kirton McConkie, Utah, USA. Respondent is Amir Cohen / Hush Privacy Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kslclassified.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2019; the Forum received payment on June 11, 2019.
On June 13, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <kslclassified.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 June 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2019 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 email@example.com. Also, on June 18, 2019, 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 July 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant operates in the broadcasting and online classified industries.
Complainant holds a registration for the KSL CLASSIFIEDS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,650,426, registered January 8, 2019, on the basis of an application filed August 15, 2017.
Complainant first used the KSL CLASSIFIEDS mark in commerce on August 15, 2000, and has used the mark continuously since then.
Complainant has invested substantially in the KSL CLASSIFIEDS mark, as a consequence of which the mark has become synonymous with high quality, fair, free and legitimate classified services, and Complainant has built considerable goodwill in the minds of its customers by reason of its development of the mark.
Complainant has thus acquired rights in the mark under the common law running from August 15, 2000.
Respondent registered the domain name <kslclassified.com> on February 4, 2005.
The domain name is confusingly similar to Complainant’s KSL CLASSIFIEDS service mark.
Respondent is not authorized to use Complainant’s KSL CLASSIFIEDS mark.
Respondent has not been commonly known by the domain name.
Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
The webpage resolving from the domain name is parked and hosts pay-per-click links to other websites, from the operation of which links Respondent derives financial gain.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent registered the domain name primarily to sell it.
Respondent’s registration and employment of the domain name disrupts Complainant’s business.
Respondent registered and uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to demonstrate that Respondent has no rights to or legitimate interests in respect of 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."
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:
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the KSL CLASSIFIEDS service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Seychelles). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <kslclassified.com> domain name is confusingly similar to Complainant’s KSL CLASSIFIEDS service mark. The domain name incorporates the mark in its entirety, deleting only the space between its terms and the letter “s” while adding the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding the <wllsfago.com> domain name confusingly similar to the WELLS FARGO mark notwithstanding that the domain name omitted the letters “e” and “r” from the mark as well as the space between its terms). On the point of the irrelevance of deleting the space between the terms of the mark in creating the domain name, this is because domain name syntax does not permit the use of blank spaces.
See also Dell Inc. v. Protection of Private Person, FA 1681432 (Forum August 1, 2016), finding that:
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <kslclassified.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
In the circumstances before us, the question of Respondent’s rights to or legitimate interests in the contested domain name appears to turn on the point of time. The record before us reveals that, while Complainant has rights in its KSL CLASSIFIEDS mark by way of registration of the mark with the USPTO, the date of that registration, January 8, 2019, on the basis of an application filed August 15, 2017, falls nearly fourteen years after the date of Respondent’s registration of the questioned domain name on February 4, 2005.
If the facts ended there, we would therefore be obliged to find that Respondent’s rights in its domain name precedes in time Complainant’s rights in its mark, and, therefore, that Respondent’s rights in the domain name, being senior, carry the day under Policy ¶ 4(a)(ii).
However, Complainant, apparently anticipating the result, also offers that it has rights in its KSL CLASSIFIEDS mark under the common law running from August 15, 2000. However, while the Complaint recites familiar tokens associated with common law rights in a mark, the attachments to the Complaint are wanting of even the slightest proof in support of this claim. As a consequence, we are constrained to conclude that Complainant has failed to carry its prima facie burden on this question. See, for example, Healthgrades Operating Company, Inc. v. Erick Hallick, FA 1672836 (Forum June 9, 2016), finding that a UDRP complainant did not establish common law rights in a mark because it did not provide evidence of the public’s recognition of the mark as a source identifier, and concluding that:
[S]elf-serving commentary alone from a common law mark claimant is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind[s] of the general public.
The Panel therefore finds that Complainant has failed to satisfy the proof requirements of Policy ¶ 4(a)(ii).
Because Complainant has failed to meet its obligations of proof under Policy ¶ 4(a)(ii), it is unnecessary for us to examine Complainant’s contention that Respondent both registered and is now using the disputed <kslclassified.com> domain name in bad faith. See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum April 17, 2017) (finding that, because a UDRP complainant must prove all three elements set out in Policy ¶ 4(a), a complainant’s failure to prove any one of those elements makes inquiry into the remaining ones unnecessary). See also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into a respondent’s rights to or legitimate interests in a domain name or its registration and use of that domain name in bad faith where a UDRP complainant failed to satisfy the gateway proof requirements of Policy ¶ 4(a)(i)).
Complainant having failed to establish all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the domain name <kslclassified.com> REMAIN with Respondent.
Terry F. Peppard, Panelist
Dated: July 18, 2019
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