University of Northwestern-St. Paul v. Anna Sakidon
Claim Number: FA2304002040606
Complainant is University of Northwestern-St. Paul (“Complainant”), represented by Jeffrey R. Cadwell of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Anna Sakidon (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ktis.fm>, (‘the Domain Name’) registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on April 18, 2023; Forum received payment on April 18, 2023.
On April 18, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <ktis.fm> 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 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@ktis.fm. Also on April 24, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 has rights in the KTIS and KTIS-FM marks based upon common law rights due to use since 1949. Additionally, Complainant has rights in the 98.5 KTIS & Design trademark based upon registration with the United States Patent and Trademark Office (e.g. Reg. No. 3,484,329, registered August 12, 2008). The Domain Name was previously owned by the Complainant before it let it lapse in 2018.
The Domain Name registered in 2022 is identical or confusingly similar to the registered 98.5 KTIS & Design mark as well as the common law KTIS and KTIS-FM marks (hereinafter referred to as KTIS marks). The Domain Name shares the dominant KTIS portion of the registered 98.5 KTIS & Design mark, the entirety of the KTIS mark, and is substantively identical to the KTIS-FM mark with the only change being the addition of the “.FM” country code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the Domain Name since Respondent is not authorized to use Complainant’s KTIS marks and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the Domain Name to mimic a former version of the Complainant’s web site using its 98.5 KTIS & Design mark as a masthead attempting to pass itself off as Complainant.
Respondent registered and uses the Domain Name in bad faith. Respondent has actual knowledge of Complainant’s rights in the KTIS marks. Respondent is disrupting Complainant’s business by passing off as Complainant and diverting internet users to Respondent’s infringing website for commercial gain. Respondent has been the subject of other adverse decisions under the UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the KTIS and KTIS-FM marks based upon common law rights. Additionally, Complainant has rights in the 98.5 KTIS & Design trademark based upon registration with the United States Patent and Trademark Office (e.g. Reg. No. 3,484,329, registered August 12, 2008).
The Domain Name registered in 2022 has been used to mimic a previous version of the Complainant’s web site using its 98.5 KTIS & Design trademark as a masthead to appear to be an official site of the Complainant. The Respondent has been the subject of other adverse decisions under the UDRP.
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”).
The Domain Name consists of the Complainant's KTIS mark (in which the Respondent owns common law rights through use since 1949) merely adding the ccTLD .fm. The Domain Name was previously owned by the Complainant before it let the Domain Name lapse in 2018.
A ccTLD such as .fm does not serve to distinguish the Domain Name from the Complainant’s mark. See CloudFlare, Inc. v [Registrant], FA 1624251 (Forum Aug. 1, 2015).
Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason apart from the web site attached to the Domain Name to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial so it cannot be legitimate noncommercial fair use.
The web site attached to the Domain Name purports to offer radio services using the Complainant’s 98.5 KTIS & Design mark as its masthead and a site mimicking a former version of the Complainant’s web site so as to appear to be an official site of the Complainant. The Panel finds this use of a version of the Complainant’s web site to be deceptive. Passing off as Complainant is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”).
The Respondent has not answered this Complaint and has not rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s 98.5 KTIS & Design mark in its masthead to purport to offer competing services. The use of the Complainant’s 98.5 KTIS & Design mark and a copy of a previous version of its web site shows the Respondent has actual knowledge of the Complainant and its business, rights and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to her website by creating a likelihood of confusion with the Complainant's KTIS trade mark as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it under Policy 4(b)(iv) and likely to disrupt the business of the Complainant under Policy 4(b)(iii). See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006)(finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
Further the Respondent has been the subject of other adverse decisions under the UDRP evidencing a pattern of bad faith activity. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ktis.fm> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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