DECISION

Daedong-USA, Inc., Kioti Tractor Division v. O'Bryan Implement Sales

Claim Number:  FA0311000210302

PARTIES

Complainant is Daedong-USA, Inc., Kioti Tractor Division, Wilson, NC (“Complainant”) represented by Cheryl A. Marteney, of Ward and Smith, P.A., P.O. Box 867, New Bern, NC 28563-0867.  Respondent is O'Bryan Implement Sales, 2000 West Fifth Street, Owensboro, KY 42301 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kioti.com>, registered with Domaindiscover.

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 13, 2003; the Forum received a hard copy of the Complaint on November 19, 2003.

On November 14, 2003, Domaindiscover confirmed by e-mail to the Forum that the domain name <kioti.com> is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 November 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 2003 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@kioti.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 22, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."  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 any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <kioti.com> domain name is identical to Complainant’s KIOTI mark.

2. Respondent does not have any rights or legitimate interests in the <kioti.com> domain name.

3. Respondent registered and used the <kioti.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant-Daedong-USA, Inc. registered the KIOTI mark with the United States Patent and Trademark Office (“USPTO”) on January 30, 1996 (Reg. No. 1953100).  Complainant-Kioti Tractor Division is contractually bound, pursuant to a licensing agreement, to protect the trademark rights in the KIOTI mark within the U.S.  Complainant uses the KIOTI mark in connection with the manufacturing, marketing, and selling of KIOTI tractors, related attachments, and repair parts.

Respondent registered <kioti.com> on March 12, 1998.  Complainant entered into a Dealer Sales and Service agreement with Respondent in 1999, in which Respondent is authorized to deal in Complainant’s products.  However, the agreement prohibits Respondent from using Complainant’s trademarks unless authorized in writing.  Complainant has not authorized such use.  Respondent uses the disputed domain name to sell KIOTI products, as well as other products.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the KIOTI mark through registration with the USPTO and continuous use in commerce since 1993.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).

Respondent’s domain name, <kioti.com>, is identical to Complainant’s KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the top-level domain “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may accept all reasonable inferences of fact in the allegations of Complainant, without the benefit of a Response.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Additionally, there is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating, “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Panels have held that even licensed resellers of goods lack rights and legitimate interests in domain names that encompass another’s mark.  See Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v. Aebersold, FA 113316 (Nat. Arb. Forum July 10, 2002) (“Respondent cannot use Complainant’s trademark in a domain name when the Respondent, even though selling Complainant’s goods, has no permission to use the trademark as the domain name”); see also Ullfrotté AB v. Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000) (finding that although Respondent legitimately sells goods originating from Complainant, this does not give him the right to register and the use the mark as a domain name without the consent of the holder of the trademark).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

At the time Respondent registered the disputed domain name, a licensing agreement had yet to be formed.  Nonetheless, the fact that Respondent registered the KIOTI mark within a domain name, and later became a licensed reseller of KIOTI products evidences Respondent’s knowledge of Complainant’s rights in the KIOTI mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Respondent used the disputed domain name in bad faith because under its licensing agreement, Respondent was forbidden to use the KIOTI mark without express authorization from Complainant.  See Hewlett-Packard Co. v. OfficeOnWeb Ltd., FA 151537 (Nat. Arb. Forum May 21, 2003) (holding that Respondent’s unauthorized use of the LASERJET mark to operate as a reseller of Complainant’s products constituted bad faith use and registration pursuant to Policy ¶ 4(b)(iv)); see also Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum Mar. 1, 2000) (holding that the registration of a domain name in violation of a license agreement is evidence that the domain name was registered and used in bad faith).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <kioti.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  December 29, 2003

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