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1. Parties and Contested Domain Name
The parties in this case are the National Kidney Foundation, a non-profit organization domiciled at 30 E33rd st, New York, NY, USA,
and Los Girasoles/Jorge Clapes, domiciled 103 Ave. Norte y P Gral, San Salvador. The disputed domain name is nkf.org, registered
with Network Solutions, Inc. (NSI).
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on July 25, 2000. The hardcopy of the
Complaint Form was received on August 10, 2000. Payment was received on August 10, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions. Inc, the Whois
database contains all the required contact information but the billing contact, the contested Domain Name resolves to an inactive
Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy
of the Registration Agreement on July 25, 2000. The requested information was received July 26, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph
2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent
on August 11, 2000. That date is the commencement date of the administrative proceeding.
On August 11, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of
commencement of the administrative proceeding.
On August 23, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was
received on August 24, 2000.
The complaint, official notification and all the annexes were sent by UPS to the respondent's various addresses. According to the
UPS tracking system, all were delivered.
On August 29, 2000, the Clerk's Office contacted Mr. Richard Hill, and requested that he acts as panelist in this case.
On August 29, 2000, Mr. Richard Hill, accepted to act as panelist in this case and filed the necessary Declaration of Independence
and Impartiality.
On August 29, 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Hill, allowing him to access the Complaint
Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On August 29, 2000, the parties were notified that Mr. Richard Hill had been appointed and that a decision was to be, save exceptional
circumstances, handed down on September 11, 2000.
3. Factual Background
In 1998, the National Kidney Foundation of Northern California (an affiliate of the complainant) registered the disputed domain name
in order to redirect visitors to the web site http://www.kidney.org.
In June 1999, it was decided that the ownership of the disputed domain name should be transferred to the complainant. Because of
what appear to be a series of clerical errors, the transfer was never completed, payments to NSI for the domain name were not made
on time, and NSI cancelled the domain name registration.
On March 8, 2000 the respondent registered the contested domain name.
On March 13, 2000 the complainant contacted the respondent, requesting return of the domain name. There was subsequent correspondence,
but no agreement was found, so the complainant initiated this action.
4. Parties' Contentions
The complainant contends that it has a valid trademark, which trademark includes the letters "NKF". It contends that the respondent
has no rights or legitimate interests in the disputed domain name because this name became available (and was registered by the respondent)
only because of clerical errors on the claimant's part. It also contends that it is suffering injury and harm from the fact that
the redirection from the disputed domain name to the complainant's web site is no longer working; this redirection is no longer working
because the respondent has registered this name after the original registration expired.
The respondent contends that it has a right to the contested domain name because it was available for use, that it has plans to develop
a web site using that name, and that these plans have been delayed while the dispute concerning the name is resolved.
5. Discussion and Findings
In accordance with article 4(a) of the ICANN Policy the complainant must prove all of the following:
- The contested domain name is identical or confusingly similar to a trademark in which the complainant has rights, and
- The respondent has no rights or legitimates interests in the contested domain name, and
- The respondent registered and used the contested domain name in bad faith.
As will be seen below, the present case is rather similar to AF-0257 (irenegari.com), which is cited (appropriately) by the respondent.
Similarity between the trademark and the domain name
The respondent's trademark consists of a highly stylized rendition of the three letters NKF. The letters themselves only constitute
part of the mark, not the mark itself. The registration can be viewed at:
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75378459
and
http://trademarks.uspto.gov/cgi-bin/ifetch4?ENG+REG+3+991311+4+0+106950+F+1+3+1+WM%2fNKF
It is not obvious to this panel that the mere letters "nkf" are confusingly similar to a mark that consists of a highly stylized
rendering of those letters. The complainant does not present any evidence that would prove such confusing similarity.
The panel holds that the complainant has failed to satisfy its burden of proof on this point.
Lack of rights or legitimate interests in the contested domain name
Complainant explains in detail how it lost, through a series of clerical errors on its own part, control of the disputed domain name.
It appears to believe that this is sufficient to establish that the respondent has no rights or legitimate interests in the name.
However, such is not the case. Under the ICANN Policy, the complainant must prove that the respondent has no rights, not prove that
it itself has some rights.
Once the complainant's registration had lapsed, the disputed domain name became available, and the complainant has not alleged, much
less provided evidence to prove, that the respondent does not have a legitimate use for the disputed domain name.
On the contrary, the respondent alleges that it has plans to develop a legitimate web site at the disputed domain name, which is
a defense in accordance with article 4(c)(i) of the ICANN Policy. On the basis of the evidence presented, the panel has no reason
to doubt the respondent's assertion in this respect.
Thus the complaint fails on this ground also.
Bad faith registration and use of the contested domain name
Complainant alleges that the "injury and harm" it has suffered from the loss of the contested domain name suffice to prove that the
respondent acted in bad faith, particularly given that the respondent has not yet used the contested domain name.
But article 5(b) of the ICANN Policy gives some (non-exhaustive) examples of what constitutes bad faith, namely:
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark
in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
Complainant does not allege, much less provide evidence to prove, that respondent is engaging in either of these behaviors, or in
any other behavior that might be held to constitute bad faith.
The fact that the complainant is allegedly suffering "injury and harm" due to the fact that it lost control of the disputed domain
name does not constitute bad faith behavior by the respondent. Registering an available domain name with the intent to develop a
legitimate web site clearly does not constitute bad faith behavior, even if such registration prevents someone else from using the
domain name, unless some other factors (such as those cited above) are present. And no evidence of any such other factors has been
presented (or even alleged to exist).
Thus the complaint fails on this ground also.
6. Conclusions
The panel holds that the complainant has failed to prove that the disputed domain name is confusingly similar to its registered trademark,
that it has failed to prove that the respondent has no legitimate interests in the domain name, and that it has failed to prove that
the respondent acted in bad faith. Therefore, the complaint is dismissed.
7. Signature
Geneva, Switzerland, 31 August 2000
(s) Richard Hill
Presiding Panelist
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