Teton Outfitters, L.L.C. v. Edward Warren
Claim Number: FA1709001749367
Complainant is Teton Outfitters, L.L.C. (“Complainant”), represented by Danielle I Mattessich, of MERCHANT & GOULD P.C., Minnesota, USA. Respondent is Edward Warren (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <klimclearance.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 September 18, 2017; the Forum received payment on September 18, 2017.
On September 19, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <klimclearance.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017 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 firstname.lastname@example.org. Also on September 19, 2017, 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 October 12, 2017, 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.
Operating under the KLIM mark, Complainant designs, develops, manufactures and markets motor sports apparel for snowmobile and motorcycle riders.
Complainant holds a registration for the KLIM mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,565,810, registered January 20, 2009.
Respondent registered the domain name <klimclearance.com> on April 7, 2017.
The domain name is confusingly similar to Complainant’s KLIM mark.
Respondent has not been commonly known by the domain name.
Respondent is neither licensed nor otherwise authorized to use the KLIM mark in a domain name.
Respondent is not using the domain name to make either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent employs the domain name to divert Internet users seeking Complainant’s website to a website of its own in order to sell counterfeit versions of Complainant’s products at prices lower than those of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name is an attempt to attract Internet users by creating a likelihood of confusion among them as to the possibility of Complainant’s sponsorship of or affiliation with it.
Respondent knew of Complainant and its rights in the KLIM mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See 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). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the KLIM trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <klimclearance.com> domain name is confusingly similar to Complainant’s KLIM trademark. The domain name incorporates the entire mark, adding only the generic term “clearance,” which relates to an aspect of Complainant’s business, plus 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, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and a top-level domain, the differences between the domain name and its contained trademark being insufficient to differentiate one from the other for purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <klimclearance.com> domain name, that Respondent is not affiliated with Complainant or with its sales of KLIM branded merchandise, and that Respondent is neither licensed nor otherwise authorized to use the KLIM mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Edward Warren,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum August 16, 2017) (finding, under Policy ¶ 4(c)(ii), that a respondent had no rights to or legitimate interests in disputed domain names where the relevant WHOIS information was unrelated both to the domain names and that respondent’s use of the same).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <klimclearance.com> domain name to divert Internet to the website resolving from it in an attempt to sell counterfeit versions of Complainant’s products. This employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ (c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those parts of the Policy. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services and no legitimate noncommercial or fair use existed where a respondent used a website resolving from a contested domain name to sell products branded with a UDRP complainant’s mark, and where counterfeit products of that complainant were being resold without authorization).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We have found the <klimclearance.com> domain name to be confusingly similar to Complainant’s KLIM trademark. And we are persuaded by the evidence that Respondent’s use of the domain name, as alleged in the Complaint, is an effort to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum October 23, 2008) (finding, under Policy ¶ 4(b)(iv), that a respondent’s attempt to gain commercially by creating confusion among Internet users as to the possibility of a UDRP complainant’s connection with the website resolving from a disputed domain name by selling counterfeit products there showed that respondent’s bad faith in registering and using the domain name).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the KLIM mark when it registered the offending domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Mycoskie, LLC v. William Kelly, FA 1488105 (Forum April 23, 2013):
[T]he Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby GRANTED.
Accordingly, it is Ordered that the <klimclearance.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 18, 2017
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