Kantola Productions LLC v. Domain Magic, LLC
Claim Number: FA0701000893604
Complainant is Kantola Productions LLC (“Complainant”), represented by Ross
Walsmith, of Kantola Productions LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kantolaproductions.com>, registered with Intercosmos Media Group.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 25, 2007.
On January 22, 2007, Intercosmos Media Group confirmed by e-mail to the National Arbitration Forum that the <kantolaproductions.com> domain name is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 January 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2007, 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@kantolaproductions.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a provider of informational and training videos and study guides.
In connection with the provision of these goods and related services, Complainant has registered the KANTOLA PRODUCTIONS LLC trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,260,417, issued July 13, 1999).
Respondent registered the disputed domain name on November 16, 2005.
The disputed domain name resolves to no content.
Respondent’s <kantolaproductions.com> domain name is confusingly similar to Complainant’s KANTOLA PRODUCTIONS LLC mark.
Respondent does not have any rights or legitimate interests in the domain name <kantolaproductions.com>.
Respondent has registered and now uses the <kantolaproductions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
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 in bad faith.
Complainant asserts rights in the KANTOLA PRODUCTIONS LLC trademark
through its registration with the USPTO.
That registration and subsequent use of the KANTOLA PRODUCTIONS LLC mark
is sufficient to establish Complainant’s rights in the mark pursuant to Policy
¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003): “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.” See also U.S. Office of Pers. Mgmt. v. MS
Tech. Inc., FA 198898 (Nat. Arb. Forum
Dec. 9, 2003): “[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that determination.”
Complainant alleges, and Respondent does not deny, that Respondent’s domain name is confusingly similar to Complainant’s mark. The disputed domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” and eliminates the letters “llc.” The addition of the gTLD “.com” and the exclusion of the letters “llc” fail to distinguish the disputed domain name from the protected mark for purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark).
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. In instances where Complainant has made out a prima facie case in support of its allegations, the burden shifts to Respondent to set forth substantial evidence establishing rights to or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
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).
It is undisputed on the record before us that Respondent’s domain name resolves to no content. Respondent’s failure to associate any content with its domain name registration is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that respondent might be capable of doing otherwise); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to the complaint and had made no use of the domain name there in question).
An examination of Respondent’s WHOIS information reveals
that the registrant of the disputed domain name is “Domain Magic, LLC.” Lacking evidence indicating otherwise, we conclude
that Respondent is not commonly known by the disputed domain name pursuant to
Policy ¶ 4(c)(ii).
See 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.” See also Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny that it has failed to use the disputed domain name actively since registering it in November 2005. In the circumstances here presented, this failure to provide content associated with its disputed domain name is indicative of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
To this we would add that it appears that Respondent
registered the domain name <kantolaproductions.com>
with at least constructive knowledge of
Complainant’s rights in the KANTOLA PRODUCTIONS LLC trademark by virtue of Complainant’s prior
registration of that mark with the USPTO. Registration of an identical or confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <kantolaproductions.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 2, 2007
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