The Kittinger Company Inc. v. James Fisgus (AF00108a and b)

This is a domain name dispute under the ICANN Uniform Domain Name Dispute Resolution Policy (the "UDRP"). The domain registrations at issue in this panel decision are kittengerfurniture.com and kittenger.com, both registered by Network Solutions, Inc. This case is closely related on the facts to The Kittinger Company, Inc. v. Kittinger Collector (AF00107a and b).

The Parties

The Complainant is Kittinger Company, Inc. whose place of business is at 2495 Main Street, Buffalo, NY 14214 and is represented by counsel in this matter (Magavern, Magavern & Grimm, LLP of Buffalo, NY). Respondent is James Fisgus d/b/a Kittinger Collec tor, with a place of business at 10876 Hillside Road Alta Loma, CA 91737 and is represented by counsel in this matter (Ladas & Parry, Los Angeles, CA).

Procedural History

The Complaint was filed electronically on February 4, 2000. The details of the procedural record are found in the letter dated March 10, 2000 from Emmanuelle Letourneau of eResolution to the panelist (attached hereto). In addition to the filings detaile d in the attached letter, the Parties requested permission to submit additional pleadings. The panelist granted the request and the Complainant's Rebuttal was filed on March 28, 2000 and the Respondent's Response to Complainant's Rebuttal was filed on Ap ril 11, 2000. The panel also received an e-mail exchange between the parties on April 14, 2000.

Factual Background

The Complainant is a manufacturer of furniture and is the owner by assignment of Canadian Trademark Reg. No. TMA 278,127 for KITTINGER. Complainant is also owner of a U.S. trademark application for KITTINGER. Complainant is the owner of U.S. Reg. No. 1, 124,516 for KITTINGER OLD DOMINION, the renewal application for which is pending due to a USPTO request for provision of details concerning nonuse of the mark. All of Complainant's marks are for office furniture, dining room furniture, living room furni ture and bedroom furniture. Respondent contests the ability of Complainant to benefit from the priority of the above registrations due the long history of serial assignments and period of nonuse.

The Complainant is attempting to revive the fortunes of the Kittinger Company, which had fallen on hard times and ceased operations for a period. Respondent is in the business of purchasing, re-conditioning and re-selling furniture that was manufactured by the Complainant's predecessors. Both Parties would likely agree that the Kittinger name is associated with high quality colonial reproduction furniture. The Parties disagree on whom may use variations on the Kittinger name as a domain name.

Under the UDRP paragraph 4(a) the Complainant bears the burden of proving that:

Therefore the question before this panel is whether the Complainant has met its burden with respect to the three elements.

(i) The panel finds that Complainant has met its burden with respect to the first element. Although there appear to be issues regarding whether the trademark rights of the Complainant have survived the series of assignments and nonuse, Complainant is the owner of a subsisting Canadian Registration for KITTINGER, a mark that is nearly identical to the kittenger.com domain name at issue. Respondent admits that the domain was adopted because the Kittinger name is frequently spelled Kittenger.

With respect to the second domain at issue, kittengerfurniture.com, the panel finds that the domain name is confusingly similar to a trademark of the Complainant. The panel bases this finding on the evidence that Complainant owns a trademark KITTINGER fo r furniture goods and that the domain partly represents a common miss spelling of the mark. When considered as a whole the domain is confusingly similar to Complainant's mark.

(ii) The panel finds that Complainant has failed to meet its burden with respect to establishing that the Respondent has no rights or legitimate interests in the domain names at issue. Respondent has used its domains in connection with a business based o n the acquisition, re-conditioning and re-sale of used Kittinger furniture. This is a legitimate business that Respondent has operated for many years. The Respondent is entitled to use the name Kittinger and variations thereof in a fair, nominative sens e to describe the furniture is sells and has made accommodations at the request of Complainant to prevent possible confusion. Moreover, this panel is bound by the UDRP paragraph 4(c) which states in relevant part:

The panel finds that the evidence submitted demonstrates that: the Respondent used the domain names at issue in connection with a bona fide offering of goods and services before notice of this dispute; the Respondent is commonly known by the name Kittinge r Collector; and, the Respondent's use of the domains at issue is fair-use and not intended to divert customers or tarnish the trademark rights of the Complainant. Accordingly, the panel finds the Complainant has not met its burden with respect to this element.

(iii) The panel finds that the Complainant has failed to meet its burden in establishing that the domains at issue were registered and are being used in bad faith. The UDRP lists the following circumstances as evidence of a registration and use in bad f aith in paragraph 4(b):

(i) The panel finds that the domains at issue were not acquired for the purpose of sale to Complainant or a competitor of Complainant and that the evidence supports the finding that the domains are not for sale.

(ii) The panel finds that the Respondent has not registered the domain names at issue to prevent the Complainant from reflecting its mark in a corresponding domain name nor has Respondent engaged in a pattern of such conduct. The panel notes that the Res pondent has registered 4 domain names that are the subject of UDRP proceedings. The two domain names at issue in the decision at hand and the kittinger.com and kittingercollector.com domain names at issues in Case No. AF 00107 (a) and (b). The panel fin ds that the evidence submitted does not show that domain registrations of Respondent constitute a pattern of conduct intended to block Complainant's access to domain names that correspond to its marks.

(iii) The panel finds that the evidence submitted does not support the conclusion that Respondent registered the domain names at issue to disrupt the business of a competitor. The evidence submitted shows that the Parties are not in competition, as the C omplainant does not sell used furniture.

(iv) The panel finds that the evidence does not show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark. Respondent has taken reasonab le steps to avoid potential confusion at the request of Complainant. The evidence shows that the Respondent seeks to distinguish its business from that of Complainant by only offering for sale furniture manufactured by Complainant's predecessors prior to 1995 and actively works to prevent possible confusion.

As the Complainant has failed to prove any of the listed indicia of bad faith or any other compelling evidence of bad faith, the panel finds that the Complainant has not met its burden with respect to this element.

Conclusion

For the foregoing reasons, the panel concludes that the Complainant has not met its burden of proof under the UDRP paragraph 4 (a)(ii) and (iii). Accordingly, the panel finds the domain names kittengerfurniture.com and kittenger.com should not be transfe rred to Complainant.

May 8, 2000

(s) Merton E. Thompson

Presiding Panelist