Kenco Group, Inc. v. Anna Hamburg
Claim Number: FA2103001939356
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kenco-group.com>, registered with NameCheap, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2021; the Forum received payment on March 29, 2021.
On March 31, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <kenco-group.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 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@kenco-group.com. Also, on April 12, 2021, 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 May 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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
Complainant, Kenco Group, Inc., operates a logistics management company for materials handling, transportation, and warehousing. Complainant asserts rights in the KENCO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 5,279,858, registered Sep. 5, 2017). Respondent’s <kenco-group.com> domain name is confusingly similar to Complainant’s KENCO mark, only differing by the addition of a hyphen, the generic term “group,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <kenco-group.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the KENCO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses an email account associated with the disputed domain name to pass off as Complainant.
Respondent registered and uses the <kenco-group.com> domain name in bad faith. Respondent’s use of an email account to pass off as Complainant disrupts Complainant’s business and likely leads to commercial gain for Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Kenco Group, Inc. (“Complainant”), of Chattanooga, TN, USA. Complainant is the owner of the domestic registration for the mark KENCO which it has continuously used since at least as early as 2011 in connection with its logistics management and advisory consulting in the field of materials handling, transportation, warehousing, and related goods and services. Complainant also owns the registration for the domain name <kencogroup.com> which it has continuously used since its registration in 1997.
Respondent is Anna Hamburg (“Respondent”), of Coral Gables, FL, USA. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. The Panel notes that the disputed domain name was registered on or about January 23, 2021.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 asserts rights in the KENCO mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 5,279,858, registered Sep. 5, 2017). The Panel here finds Complainant has rights in the KENCO mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <kenco-group.com> domain name is confusingly similar to Complainant’s KENCO mark, differing only by the addition of a hyphen, the generic term “group,” and the “.com” gTLD. Addition of a hyphen and a generic term does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark and appends the ‘.com’ top-level domain.”). Complainant also notes that the disputed domain name is nearly identical to Complainant’s own <kencogroup.com> domain name. The Panel here finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <kenco-group.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the KENCO mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record identifies “Anna Hamburg” as the registrant of the disputed domain name and there is no evidence provided to indicate that Respondent was ever authorized to use the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent uses an email account associated with the disputed domain name to pass off as Complainant. Using an email account to pass off as Complainant does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant provides screenshots of the emails sent to various Internet users from “Jim Kennedy,” using an email account associated with the disputed domain. The Panel here finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <kenco-group.com> domain name in bad faith. Respondent uses an email account associated with the disputed domain name to pass off as Complainant. Such use qualifies as bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Complainant provides screenshots of the emails that Respondent sent to various Internet users as evidence of Respondent’s bad faith. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent registered and uses the <kenco-group.com> domain name in bad faith as Respondent attempts to pass off as Complainant to attract commercial gain. In particular, Respondent uses an email account to pass off as Complainant, displaying bad faith attraction to commercial gain under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As previously noted, Complainant provides evidence of Respondent’s attempts to pass off as Complainant through emails to various other Internet users. The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <kenco-group.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 20, 2021
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