Deseret Digital Media v. Jacob Korman / Korman Services
Claim Number: FA1909001863090
Complainant is Deseret Digital Media (“Complainant”), represented by James T. Burton of Kirton McConkie, Utah, USA. Respondent is Jacob Korman / Korman Services (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ksl.cloud>, registered with Wild West Domains, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2019; the Forum received payment on September 19, 2019.
On September 20, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <ksl.cloud> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 September 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2019 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@ksl.cloud. Also on September 24, 2019, 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.
A timely Response was received and determined to be complete on October 21, 2019.
On October 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is Utah’s oldest radio station that was founded in 1922, both on AM and FM platforms, that simulcasts a format of all-news during key hours on weekdays and talk programming the rest of the time. Complainant has rights in the trademark KSL through its use in commerce since 2000 and its trademark registration with the United States Patent and Trademark Office (“USPTO”) dated October 16, 2018. Respondent’s <ksl.cloud> domain name, registered on August 25, 2019, is identical to Complainant’s KSL mark as it includes the mark in its entirety.
Respondent has no rights or legitimate interests in the <ksl.cloud> domain name. Respondent is not authorized to use Complainant’s KSL mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a parked website that contains a list of multiple click-through links and states that the domain name is for sale. Such a use indicates that Respondent registered the disputed domain name with the sole intent to sell it and profit from Complainant’s mark.
Respondent registered and uses the <ksl.cloud> domain name in bad faith. Respondent registered the domain name with the sole intent to sell it for commercial gain. Respondent also attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondents’ website. Finally, Respondent was aware or should have been aware of Complainants’ rights in the KSL mark prior to registering the disputed domain name.
B. Respondent
Respondent is a thirty-nine year old person who has Cerebral Palsy. Despite this disability, Respondent is a productive member of society who purchases domain names and sells them in conjunction with hosting services that it offers through another of its websites. Respondent has never sold a domain name for more than $11.00. Respondent wanted to register the <ksl.cloud> domain name for its company, Korman Services and the letters “KSL” would stand for “Korman Services Links”. Respondent’s disputed domain name is not confusingly similar to the KSL mark as the mark is not featured at the resolving website nor is there any content to create a likelihood of confusion. Further, Respondent was unable to develop the disputed domain name’s resolving website as a result of Complainant rushing to file this action before it ever attempted to contact Respondent.
Respondent has legitimate interests in the <ksl.cloud> domain name. Respondent intended to use the disputed domain name to indicate the acronym of the business name, Korman Service Links. Furthermore, Respondent was unable to develop a website for the domain name due to Complainant’s quick action in filing the Complaint less than one month after Respondent registered the domain name. Additionally, Respondent’s disability causes it to take a longer time to develop a website. Respondent also does not intend to deceive or capture traffic away from Complainant’s website. Furthermore, there is no evidence that Respondent wants to sell the domain name to the highest bidder as Complainant claims.
Respondent did not register or use the <ksl.cloud> domain name in bad faith. There is no evidence that Respondent attempted to sell the domain name to the highest bidder. In fact, after the Complaint was filed, Respondent asked Complainant to donate $1,000.00 to a charity for people with Respondent’s disability in exchange for a transfer of the domain name just to show how disinterested he was in personal gain. The resolving website at Respondent’s disputed domain name provides no indicia of an intent to deceive or profit from Complainant’s mark. Finally, Respondent had no knowledge of Complainant’s rights in the KSL mark as Respondent lives in Dallas, Texas which is over 1,200 miles from Complainant’s city of Salt Lake City, Utah.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name was not registered or used by Respondent in bad faith.
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.
Preliminary Issue – Identification of Proper Complainant
It is a foundational requirement of Policy ¶ 4(a)(i) for the Complainant to demonstrate its ownership of rights in a trademark to which it claims that a disputed domain is confusingly similar. Therefor, the evidence of record must support such claim of trademark rights in the named Complainant. In the present case, Complainant is named as “Deseret Digital Media” and a copy of a trademark registration certificate is submitted into evidence relating to the claimed KSL mark. However, the submitted certificate identifies the owner as “Bonneville International Corporation”. Although the Policy does not have as strict evidentiary requirements as courtroom litigation, it is incumbent upon a complainant, and its representative, to adequately support such a critical element of proof as the ownership of asserted trademark rights.
Exercising its own discretion to conduct the independent investigation of publicly available information, this Panel has reviewed the assignment records of the asserted trademark registration at the USPTO website and found that it was assigned from Deseret Digital Media, Inc. to Bonneville International Corporation on March 30, 2018. As such, Deseret Digital Media, the named Complainant in this case, was not the owner of the submitted trademark registration at the time this Complaint was filed.
Against this backdrop, the Panel takes note of a statement in the Complaint that “KSL is owned by Bonneville International and operated by Deseret Digital Media” although it submits no evidence to support this. However, the Respondent has not disputed or otherwise addressed this statement and, as the operator of the KSL radio station, it seems reasonable to presume that Deseret Digital Media has at least an implied license to use the KSL mark. UDRP precedent has allowed for cases to be brought by a party having common ownership or some other close legal relationship with a trademark owner. See Miele, Inc. v. Absolute Air Cleaners and Purifiers, D2000-0756 (WIPO Sep. 11, 2000) (“The Panel finds that the Complainant, through its affiliation with its grandparent corporation which owns the trademark registration, has rights in and duties concerning the mark MIELE “) andYMCA of Metropolitan Chicago v. Robert Milideo, FA 1693986 (Forum Oct. 19, 2016) (“Rights in a trademark can also arise from a license granted by the legal owner of a trademark to another party such that the latter may use the mark.”) As Complainant has identified its relationship with the registered owner of the KSL trademark and indicated that it is the operator of the KSL radio station, and as Respondent has not contested Complainant’s standing to bring the present case, the Panel deems it proper to move forward with Deseret Digital Media as the named Complainant.
Complainant claims rights in the KSL mark based upon its longstanding use and its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the KSL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <ksl.cloud> domain name is identical or confusingly similar to the KSL mark, as the name fully incorporates the mark. While Complainant does not assert this, the Panel notes that the disputed domain name also contains the “.cloud” generic top-level domain (“gTLD”). In any event, such changes are typically not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Vishay MCB Industrie S.A.S. v. Zox Marketing, FA 1845106 (Forum June 26, 2019) (“it is well accepted that the addition of a gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i).”) The Panel therefore determines the <ksl.cloud> domain name is identical to the KSL mark per Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <ksl.cloud> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the KSL mark in any way. Even where a Response has been submitted, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the <ksl.cloud> domain name as “Jacob Korman / Korman Services,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. While Respondent contends that it registered the <ksl.cloud> domain name to reflect its planned business name Korman Service Links (“KSL”), no evidence is submitted to support this claim or that Respondent is commonly known by this planned name. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <ksl.cloud> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <ksl.cloud> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that this confusingly similar name resolves to a parking page which is being used to obtain click-through revenue by linking to third-party websites. Use of a domain name that is confusingly similar to a complainant’s trademark to provide links to third party websites for commercial gain is, in the absence of remedial circumstances, not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends the domain name resolves to a parked website displaying only pay-per-click links.
As Complainant has made out a prima facie case and as Respondent has not met its shifted burden, the Panel finds, upon a preponderance of the evidence, that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
In considering the question of bad faith under Policy ¶ 4(a)(iii), panels typically require, as a foundational element, that a complainant submit evidence that the respondent actually knew, or in some cases should have known of the complainant’s trademark at the time it acquired the domain name in dispute. See Hair Club for Men, Ltd., Inc. v. Junaid Syed, Hair Club USA, D2019-2025 (WIPO Oct. 14, 2019) (“Bad faith may be found where the Respondent knew or should have known of the Complainant’s registration”). Complainant asserts that “at the time Respondent registered and began using the Domain Name, Respondent was well aware of (or, at a minimum, should have been) the Mark.” In support, it cites to its USPTO registration and the “long-standing reputation” of its mark. However, it has only submitted into evidence a copy of its USPTO registration certificate and three archived screenshots of its www.ksl.com website from 2000. For its part, Respondent claims that he “had never heard of KSL” and that he lives in Dallas, Texas, which is quite far from Salt Lake City. He also points out that broadcasts of Complainant’s AM, FM, and TV stations are not available in Dallas, Texas.
Next, in support of its bad faith claim, Complainant claims that Respondent is targeting its KSL mark and seeking to profit from the disputed domain name by having it resolve to a pay-per-click website with links to other companies. Use of a domain name to resolve to a page of third-party links, both competitive and unrelated links, can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). However, this is not a blanket rule as all of the facts and circumstances of each case are different and must be carefully considered.
Complainant asserts that “Respondent has never used the domain for a legitimate use, which strongly indicates that the Respondent registered the disputed domain name “to attract KSL consumers to Respondent’s Website through the use of the Mark and/or to extort money from a would-be purchaser of the Domain Name.” In retort, Respondent claims that it has a good faith intent to use the mark as it fits with its planned name “Korman Services Links”. But, as noted above, no evidence is provided to support this. However, Respondent does point out that the present Complaint was filed without prior notice of the dispute to Respondent and within twenty-five days after the disputed domain name was filed. As such, Respondent claims that “Complainant had a quick trigger on filing this action” and that it did not have sufficient time to implement its planned business strategy. Prior panels have found that the passage of only a short period of time may counsel against a finding of bad faith when all of the other circumstances of the situation are taken into account. For example, in a case where the disputed domain name redirected users to a parking page and the name had been registered for a short period of time, one Panel noted that “[s]uch facts alone do not indicate bad faith.” Intesa Sanpaolo S.p.A. v. Xavier Dylan, 102599 (CAC Sep. 10, 2019). That decision went on to hold that “[i]t is not, in the Panel's opinion, indicative of bad faith for a domain name registrant to fail to immediately direct the disputed domain name to an active page within a few months of registration.” Id. See also, Capital One Financial Corp. v. AWT / Joe M, FA 1855882 (Forum Sep. 2, 2019) (claim denied where “the Disputed Domain Name was registered only about two months ago.”); Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v Kannan Murali / Digital Intelligence LLC, FA 1819680 (Forum Dec. 31, 2018) (where the disputed domain name was registered within a few months of the complaint, the Panel stated that “[w]hile there is no specific minimum time period required to support an inference of bad faith based upon passive holding, a longer period of inactivity would provide stronger support for such an inference.”) Here, the <ksl.cloud> domain name was registered on August 25, 2019 and Complainant initiated this case on September 19, 2019. Further, the screenshot of Respondent’s website, provided by Complainant, indicates that the page does not mention the letters “KSL” apart from the appearance of the disputed domain and the links therein do not appear to relate in any way to radio or TV broadcasting. There is also no evidence that Complainant’s KSL mark is known outside of the geographic reach of Complainant’s broadcast region. As such, it does not appear to be more likely than not that Respondent knew of, or was targeting Complainant’s KSL mark when it registered, or in its use of the disputed domain name.
Finally, there is insufficient evidence to support Complainant’s claim that “Respondent registered the domain with the sole intent to sell the Domain Name” or that it sought to “extort money from a would-be purchaser of the Domain Name”[i]. Complainant does claim that Respondent offered to voluntarily transfer the domain name upon Complainant’s donation of $1,000 to a charity related to cerebral palsy but any claim that this supports bad faith conduct is undercut by the above conclusion that Respondent was not specifically targeting or seeking to profit from Complainant’s mark.
In light of all of the circumstances of this case, this Panel cannot conclude, by a preponderance of the evidence presented, that Respondent registered or uses the disputed domain name in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ksl.cloud> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: October 28, 2019
[i] Complainant claims that Respondent is seeking to sell the disputed domain name “to the highest bidder” and that its “website states that the Domain Name is for sale”. The Panel notes that the submitted screenshot of Respondent’s pay-per-click page contains what appears to be a registrar-provided promotional link stating “Would you like to buy this domain?” followed by a “Learn More” button. This, alone, does not appear to support Complainant’s above-quoted claims.
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