Rachel L. Warren and Elliott S. Kanbar, as Trustees of the Maurice
Kanbar Revocable Trust, dated June 7, 2001 v. Alexander Jager
Claim Number: FA2212002024787
Complainant is Rachel L. Warren and Elliott S. Kanbar, as Trustees of the Maurice Kanbar Revocable Trust, dated June 7, 2001 (“Complainant”), represented by Jessica H. Costanzo, California. Respondent is Alexander Jager (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mauricekanbar.com>, registered with eNom, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 20, 2022. Forum received payment on December 20, 2022.
On December 20, 2022, eNom, LLC confirmed by e-mail to Forum that the <mauricekanbar.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 December 22, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2023 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@mauricekanbar.com. Also on December 22, 2022, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Rachel L. Warren and Elliott S. Kanbar, as Trustees of the Maurice Kanbar Revocable Trust, dated June 7, 2001, are the Trustees of deceased businessman, Maurice Kanbar.
Maurice Kanbar, who passed away on August 20, 2002, was an internationally known businessman, philanthropist and inventor. Exhaustive online searches have found no other Maurice Kanbar in the world. By the time of his death, Maurice Kanbar established such a reputation in his name in multiple industries as to have acquired common law trademark rights in that name, such rights being an asset passing on his death to Complainant. In addition, the Kanbar name is used in his related businesses, such as Kanbar Entertainment and Kanbar Spirits, which are now owned by Complainant. Kanbar Entertainment has been used as a service mark for many films, including “Hoodwinked”, “Hoodwinked Too!”, “Seducing Charlie Barker” and “The Surrogate (aka Beautiful Dreamer”) and Kanbar Entertainment owns many related copyrights and trademarks. Complainant is also the owner of MK Enterprises, Inc., which is the registered owner of the domain name <kanbar.com>. As such, the Complainant has common law rights in the MAURICE KANBAR mark. Respondent’s <mauricekanbar.com> domain name is confusingly similar to Complainant’s MAURICE KANBAR trademark.
Respondent does not have rights or legitimate interests in the <mauricekanbar.com> domain name. Respondent is not licensed or authorized to use Complainant’s MAURICE KANBAR mark and is not commonly known by the domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use since the domain name resolves to an inactive website where it is offered for sale.
Respondent registered and uses the <mauricekanbar.com> domain name in bad faith. Respondent’s website establishes that the Respondent has clearly registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess Complainant’s out-of-pocket costs directly related to the domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Identical and/or Confusingly Similar
Complainant has shown that, through extensive marketing of goods and services by Maurice Kanbar during his lifetime, it has common law rights in the MAURICE KANBAR mark.
The Panel finds Respondent’s <mauricekanbar.com> domain name to be identical to Complainant’s MAURICE KANBAR mark because the inconsequential generic top-level domain name (“gTLD”) “.com” may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <mauricekanbar.com> domain name was registered on September 2, 2018, many years after Complainant has shown that MAURICE KANBAR had become distinctive as a common law trademark relating to multiple businesses of the late Maurice Kanbar. Complainant provides a screenshot of the website to which the domain name resolved as of December 16, 2022, stating:
“The Domain Name mauricekanbar.com Is For Sale! This premium domain name is available for purchase! Make an Offer. Fill out your offer for mauricekanbar.com below, to get in touch with the owner of this domain name.”
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <mauricekanbar.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s MAURICE KANBAR mark when Respondent registered the <mauricekanbar.com> domain name and that Respondent registered the domain name primarily for the purpose of selling the domain name registration to Complainant’s predecessor, the late Maurice Kanbar, who was then the owner of the trademark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(i).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mauricekanbar.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 16, 2023.
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