KSA International, Inc. v. AJ Brown a/k/a Stellar Media Services
Claim Number: FA0603000664062
Complainant is KSA International, Inc. (“Complainant”), represented by Miriam Trudell, of Sheridan Ross P.C., 1560 Broadway, Suite 1200, Denver, CO 80202. Respondent is AJ Brown a/k/a Stellar Media Services (“Respondent”), 6815 Valley Circle Blvd., Unit 76, West Hills, CA 91307.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <crackernomics.com> and <crackernomics.net>, registered with Go Daddy Software, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 22, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <crackernomics.com> and <crackernomics.net> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@crackernomics.com and postmaster@crackernomics.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <crackernomics.com> and <crackernomics.net> domain names are identical to Complainant’s CRACKERNOMICS mark.
2. Respondent does not have any rights or legitimate interests in the <crackernomics.com> and <crackernomics.net> domain names.
3. Respondent registered and used the <crackernomics.com> and <crackernomics.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, KSA International, Inc., has continuously and extensively used the CRACKERNOMICS mark in connection with a children’s board game since early 2005. Complainant’s board game seeks to help young children understand business and economics and uses crackers as a form of currency for the game. Hence, Complainant coined the CRACKERNOMICS mark as a play on words by combining the term “cracker” with an abbreviated version of the term “economics.” Complainant has plans to sell other products featuring the CRACKERNOMICS mark, including books, certificates of completion, software, videos, games, clothing and related merchandise. Complainant has filed an application for a trademark registration for the CRACKERNOMICS mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78/721,258 filed September 27, 2005).
Complainant alleges that it met with Respondent regarding a possible business venture pertaining to Complainant’s board game on September 23, 2005 and September 24, 2005. Respondent claimed to have the ability to distribute the board game throughout the entire West Coast region of the United States. Complainant maintains that it never discussed the registration of the disputed domain names with Respondent. At the close of the September 24, 2005 meeting, Respondent signed a Confidentiality Agreement promising to keep the subject matter of the meetings confidential.
Respondent registered the disputed domain names on September 30, 2005. Respondent then orally agreed to transfer the domain names to Complainant. Complainant subsequently paid Respondent $100.00 in cash for the transfer, but Respondent never transferred the disputed domain names. The <crackernomics.com> and <crackernomics.net> domain names resolve to a search engine featuring links to various third-party websites unrelated to Complainant. The bottom of the website contains the language, “parked free, courtesy of GoDaddy.com.”
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant is not required to have registered the CRACKERNOMICS mark with the relevant governmental authority in order to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has continuously and extensively used the
CRACKERNOMICS mark in connection with a children’s board game since early
2005. Complainant has made substantial
efforts to distribute the board game around the United States. Therefore, Complainant’s CRACKERNOMICS mark
has acquired secondary meaning sufficient to establish common law rights in the
mark under Policy ¶ 4(a)(i). See S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
Mar. 13, 2003) (holding that the complainant established rights in the
descriptive RESTORATION GLASS mark through proof of secondary meaning
associated with the mark); see also Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant
had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark).
Respondent’s <crackernomics.com> and <crackernomics.net> domain names are identical to Complainant’s CRACKERNOMICS mark, because each wholly incorporates Complainant’s mark and merely adds a generic top-level domain. Panels have consistently held that generic top-level domains are irrelevant in determining whether a domain name is confusingly similar to a mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, Respondent’s domain names are identical to Complainant’s CRACKERNOMICS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that
Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie
case in support of its allegations, the burden then shifts to Respondent to
show it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the respondent to demonstrate that such a right or legitimate interest does
exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the disputed
domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel
to draw adverse inferences from the respondent’s failure to reply to the
complaint). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent has registered the <crackernomics.com> domain name as “Stellar Media Services” and the <crackernomics.net> domain name as “AJ Brown.” The WHOIS information lists “AJ Brown” as the administrative contact for both domain names. Because there is no other evidence establishing that Respondent is commonly known by the disputed domain names, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Furthermore, Respondent is using the disputed domain names,
which wholly incorporate Complainant’s CRACKERNOMICS mark, to operate a website
displaying links to various third-party websites unrelated to Complainant. In WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003), the panel found that respondent’s
use of the <weddingchannel.com> domain name, which it found identical to
the complainant’s WEDDING CHANNEL mark, to redirect Internet users to websites
unrelated to Complainant’s mark, presumably to earn referral fees for each
diverted consumer, was not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). Here, Respondent is operating a website at the disputed domain
names in a similar fashion and, therefore, Respondent is not using the disputed
domain names in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered to sell the disputed domain names to Complainant for $100 immediately after registering them, an amount which Complainant claims is in excess of out-of-pocket costs. In addition, Complainant paid Respondent for the transfer of the disputed domain names but Respondent has yet to transfer the disputed domain names to Complainant. Respondent’s offer to sell the disputed domain names to Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Because Respondent has registered two domain names wholly
incorporating Complainant’s CRACKERNOMICS mark, Respondent has prevented
Complainant from registering a domain name including its mark and has
established a pattern of such conduct.
In Neiman Marcus Group, Inc. v. Chandrika Jain, FA 302418 (Nat.
Arb. Forum Sept. 15, 2004), the panel found that the respondent’s registration
of the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net>
domain names prevented the complainant from reflecting its NEIMAN MARCUS mark
in the corresponding domain names and thus constituted bad faith registration
and use under Policy ¶ 4(b)(ii).
Therefore, by registering two domain names including Complainant’s mark
and preventing Complainant from reflecting its mark in these domain names,
Respondent has registered and used the <crackernomics.net> and
<crackernomics.com> domain names in bad faith pursuant to Policy ¶
4(b)(ii). See YAHOO!
INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of
two domain names incorporating the complainant's YAHOO! mark)
Moreover, Respondent has registered and is using the <crackernomics.com>
and <crackernomics.net> domain names in bad faith pursuant
to Policy ¶ 4(b)(iv), because Respondent is attempting to attract, for
commercial gain, Internet users to a search engine featuring links to various
third-party websites unrelated to Complainant.
In Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat.
Arb. Forum June 3, 2003), the panel found that respondent’s registration and
use of several domain names confusingly similar to the complainant’s BANK OF
AMERICA mark to operate search engine websites was in bad faith. Specifically, the panel stated that “[s]ince
the disputed domain names contain entire versions of Complainant’s marks and
are used for something completely unrelated to their descriptive quality, a
consumer searching for Complainant would become confused as to Complainant’s affiliation
with the resulting search engine website.” Id. Likewise, Respondent is
taking advantage of consumer confusion as to the source, affiliation,
sponsorship or endorsement of the disputed domain name and profiting from the
goodwill associated with the CRACKERNOMICS mark. Therefore, Respondent’s use of the disputed domain names
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crackernomics.com> and <crackernomics.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 8, 2006
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