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Generic Top Level Domain Name (gTLD) Decisions |
Michael DeHaas d/b/a KC HiLiTES, Inc. v.
KC Lights
Claim Number: FA0307000166018
PARTIES
Complainant is Michael DeHaas d/b/a KC HiLiTES, Inc., Williams, AZ
(“Complainant”) represented by Christopher
T. Pierson of Lewis and Roca LLP. Respondent is KC Lights, Kansas City, MO
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at issue are <kclights.com> and <daylighters.com> registered with Alldomains.com Inc. and <kcautomotive.com> registered with Network Solutions, Inc.
PANEL
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.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on July 2, 2003; the
Forum received
a hard copy of the Complaint on July 7, 2003.
On July 3, 2003 and July 9, 2003,
respectively, Alldomains.com Inc. confirmed by e-mail to the Forum that the
domain names <daylighters.com> and <kclights.com> are registered with Alldomains.com Inc. and
that Respondent is the current registrant of the names. Alldomains.com Inc. has
verified
that Respondent is bound by the Alldomains.com Inc. 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 July 16, 2003, Network Solutions, Inc.
confirmed by e-mail to the Forum that the domain name <kcautomotive.com> is registered with Network Solutions, Inc.
and that Respondent is the current registrant of the name. Network Solutions,
Inc. has
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and has thereby agreed to resolve domain-name
disputes brought by
third parties in accordance with the Policy.
On July 16, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”),
setting
a deadline of August 5, 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@kclights.com, postmaster@daylighters.com
and postmaster@kcautomotive.com by e-mail.
A timely Response was received and
determined to be complete on August 4, 2003.
A timely Additional Submission by
Complainant was received on August 11, 2003, and a timely Additional Submission
by Respondent was
received on August 17, 2003.
On August 15, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The disputed domain names registered
by Respondent, i.e., <kclights.com>,
<daylighters.com> and <kcautomotive.com> are
confusingly similar to KC HiLITES’ marks KC®, KC HiLITES, DAYLIGHTER® and KC
DAYLIGHTER®.
2. KC HiLITES owns a federally
registered service mark for KC, Registration No. 1,287,807. KC HiLITES has been continuously using the
KC mark since 1970.
3. KC HiLITES has been continuously
operating under this trade name since 1970.
KC HiLITES was incorporated on May 11, 1975, in the State of Arizona.
4. KC HiLITES owns a federally
registered service mark for DAYLIGHTER, Registration No. 1, 295,962. KC HiLITES has been continuously using the
DAYLIGHTER mark since 1972.
5. KC HiLITES owns a federally
registered service mark for KC DAYLIGHTER, Registration No. 1,478,569. KC HiLITES has been continuously using the KC
DAYLIGHTER mark since 1987.
6. Respondent KC Lights registered the
disputed domain name <kclights.com> on December 9, 1999. It registered the disputed domain name <daylighters.com>
on May 28, 2002. The disputed domain
name <kcautomotive.com> was registered by Respondent on September
15, 1999.
7. Complainant registered and uses
these marks for the following goods and services: auxiliary driving lights, fog lights, road racing lights and
flood lights, all for use on automotive vehicles; auxiliary driving lights
for
mounting on automotive vehicles for off-road competition; and covers for
off-road automotive lamps.
8. The only difference between the KC
HiLITES’ mark and the disputed domain KC Lights is the absence of the syllable
“Hi.” Otherwise, both domain names
possess a “KC” syllable and a “LITE” or “LIGHT” syllable, which would be the
same. The absence of the “Hi” syllable
has no effect in distinguishing the marks and thus compels a finding of
confusing similarity. A Registrant that
simply adds generic terms (lights) to Complainant’s trademark cannot avoid a
finding that domain name to be confusingly
similar to a trademark in which
Complainant has rights. Furthermore,
there would be little benefit for Respondent in using the <kclights.com>
domain name if there was not at least some degree of confusing similarity
between the two.
9. Respondent has registered the plural
of the DAYLIGHTER® by adding an “s.” It
has been held that adding the plural suffix “s” does not detract from the
overall impression of the dominant name in the case,
here the famous mark
DAYLIGHTER®. Thus, Respondent’s
disputed domain name <daylighters.com> is confusingly similar.
10. Respondent has registered the
disputed domain name <kcautomotive.com>, which uses the federally
registered KC® in conjunction with the generic work “automotive.” A Registrant that simply adds generic terms
to Complainant’s trademark cannot avoid a finding that the domain name is
confusingly
similar to a trademark in which Complainant has rights.
11. Respondent has no rights or
legitimate interest in the disputed domain names <kclights.com>, <daylighters.com>
and <kcautomotive.com>.
Respondent has been aware of the famous name KC HiLITES used in
conjunction with automotive auxiliary lighting and related accessories. Respondent’s disputed domain names and
websites divert Internet consumers searching for KC HiLITES and imply a
business relationship
that does not exist.
Use of the domain names by Respondent could cause substantial damage to
the rights and property of Complainant.
12. Although for a period of time
Respondent was an authorized distributor of KC HiLITES products, he is no
longer and has no affiliation
with KC HiLITES whatever. Even if Respondent were an authorized
retailer of Complainant’s products, this in itself is not sufficient to give
Respondent a right
to use these trademarks as domain names. A licensee or a dealer, agent or distributor
of (among others) products of the trademark owner or of a compatible products
does not
per se have a right to a
domain name which includes that trademark.
The mere fact that Respondent sells KC HiLITES’ products is not
sufficient for Respondent to claim a legitimate interest in the disputed
domain
names.
13. The disputed domain names were registered
and are being used in bad faith.
Respondent knew of Complainant’s marks KC®, KC HiLITES, DAYLIGHTER® and
KC DAYLIGHTER® given the widespread use and fame of these
marks. In fact, Respondent was familiar with the
marks prior to registering the domain names because much of Respondent’s
business is based
upon re-selling products made by KC HiLITES.
14. Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its site or other
on-line locations by creating
a likelihood of confusion with Complainant’s KC
HiLITES marks as to the source, sponsorship, affiliation, or endorsement of
Respondent’s
websites. Respondent’s
retention of these domain names causes confusion and could lessen Complainant’s
rights to use and profit by its registered
marks and established names.
15. Evidence of the bad faith use is
that, when a consumer types in <kclights.com>, <daylighters.com>
or <kcautomotive.com>, the Internet user is directed to the
websites for KC Lights, not KC HiLITES.
Obviously, the motive is financial gain by trying to create a likelihood
of confusion with KC HiLITES’ goodwill.
16. Consumers who visit Respondent’s
websites likely assume that they can purchase KC HiLITES’ products. However, Respondent sells many brands and
consumers may buy other manufacturers’ goods.
The fact that Respondent is “baiting” consumers to its website and
likely “switching” them to other brands further establishes Respondent’s
bad
faith.
17. Disclaimers are inadequate because
of initial interest to dispel the substantial likelihood of confusion between
Respondent’s disputed
domain names and Complainant’s marks.
B. Respondent
1. The disputed domain names are not
identical or confusingly similar to Complainant’s marks.
2. Respondent originally registered the
KCLights domain name to sell flash cards (small flat flashlights) and book
light products. Respondent resides in
Kansas City, Missouri, and wanted to sell light products. Respondent chose the domain name
KCLights. “KC” is used for Kansas City,
and “Lights” is used for selling lighting products. Assuming a similarity, both the abbreviation “KC” and the word
“Lights” are generic. Complainant
assisted in the promotion of Respondent’s site, which enhanced the confusion of
the Internet user. Complainant provided
a link from its website to Respondent’s website, which further could cause
confusion to the user. Complainant’s
actions assisted in causing similarity to be confusing to the user. Complainant could have refused to assist
Respondent or to ship Complainant’s products, which promoted Respondent’s
business.
3. Even if there were customer
confusion over the company’s name, Complainant has had ample opportunity to
register both as a trademark
and a domain name KCLights. Respondent registered the fictitious name
KCLights with the State of Missouri in December 1998. Respondent’s sole proprietorship is named KCLights. Respondent offers various lighting products
and other automotive accessories under this business. Any confusion generated is the result of Complainant’s assistance
in promoting the website by use of a CD-ROM provided by Complainant
reflecting
Complainant’s artwork of their products.
Complainant encouraged the promotion of its product on Respondent’s
site.
4. The disputed domain name <kcautomotive.com>
has no similarity to KC HiLITES, other than the letters “K” and “C.” Complainant should have no rights to
ownership of these letters. No
confusion exists by the consumer regarding this domain name.
5. Respondent has rights and a
legitimate interest in the disputed domain names.
6. During a three-year period, as a
distributor of Complainant’s products, Respondent’s business has been
established and was and is
a bona fide business that promoted in good faith
Complainant’s products as well as other manufacturer products. Respondent registered the business with the
State of Missouri in December 1998 and has been known by the domain name
KCLights in selling
all types of automotive accessories.
7. It is not Respondent’s intent to
divert the consumer. A disclaimer is
shown on the website. Complainant
accepted the disclaimer over the three-year period. Warranty information is shown which specifically lists the
manufacturer as KC HiLITES. Warranty
information for other products is also on the site.
8. Complainant provided the trademark
logo “KC” on Respondent’s site.
Respondent does not tarnish the trademark by offering to sell
Complainant’s goods. Complainant has always provided Respondent with
assistance
in the promotion of Respondent’s site.
Complainant provided “drop shipment” (shipped directly to the consumer)
for Respondent.
9. The disputed domain names were not
registered in bad faith nor are they being used in bad faith. The <kclights.com> domain name
was registered to sell flash cards and book lights. The <kcautomotive.com> domain name was registered to
sell automotive accessories including roll bars, and grill and brush
guards. This site was not fully
developed. Therefore it was linked to <kclights.com>. The <daylighters.com> domain
name was registered to increase sales of Complainant’s product. As a then-authorized distributor, Respondent
did not realize that this was not acceptable.
KC HiLITES is a manufacturer which sells its products to distributors. Respondent was trying to increase sale of
the products.
10. Respondent contacted KC HiLITES in
December 1998, as a result of the Internet user searching Respondent’s site for
Complainant’s products. Respondent
asked Complainant who they were and what they sold. Complainant explained its
products. Respondent informed
Complainant that consumers were coming to its site looking for Complainant’s
product and whether it was interested
in setting Respondent up as a
distributor. Complainant initially declined. Respondent continued to sell flash cards on
its site. Respondent contacted KC
HiLITES again and Complainant agreed to set Respondent up as a distributor. The first shipment was in April, 1999. Respondent has never offered the sale of any
of the domain names.
11. Internet users are directed to 320
sites when searching for KCLights. KC
HiLITES is second among the results.
The Internet user has a choice of which site to access. The financial gain is the result of goods
sold to the consumer of KC HiLITES’ products as well as other manufacturers’
products.
12. Respondent’s intent is not to bait
the customer who initially wishes to purchase KC HiLITES’ products. The consumer does have the option to buy its
product. Respondent has been in the business
of selling products for over three years.
Respondent is in the business of selling lighting and other automotive
accessories. Therefore, Respondent
offers other types and brands of lights.
13. KC HiLITES approved respondent’s
disclaimer. The disclaimer was placed
on the site at the request of Complainant.
Complainant never requested that the disclaimer be moved to a different
location on the site. Complainant authorized
Respondent to sell its goods for over three years. Complainant assisted in the promotion of Respondent’s site by
providing a CD-ROM of artwork of the products and reimbursing Respondent
for
advertisement costs which advertised Respondent’s Internet site and used
Complainant’s logo “KC.”
14. Complainant KC HiLITES contacted Respondent
by registered mail in May 2003 with notification they would no longer provide
“drop shipment”
of its product.
Complainant offered Respondent $5,000.00 for the domain name <kclights.com>. Complainant provided Respondent with other
distributors to use if Respondent did not wish to sell the domain name. Respondent replied that KCLights is a
business and not just a domain name.
This was Complainant’s last contact with Respondent.
C. Additional Submission by Complainant
1. Complainant has proved the three
required prongs for transfer of the disputed domain names.
2. Respondent competes in the same
market as KC HiLITES. It is established
that competitors in the same markets are held to know about each other and that
such knowledge at the time of registration,
by itself, constitutes per se bad faith registration.
3. Respondent contends that his use of
“KC” mark in his domain names refers to Kansas City. Respondent supports this proposition by including examples of
other websites using the same letters.
Respondent, however, never used “KC” (meaning Kansas City) in
conjunction with his website until after the Complaint herein was filed. Respondent just added five links to the main
website at <kclights.com> that include the letters “KC.”
4. The test for bona fide use is well
settled. Previous panels have
considered the issue of whether an authorized sales or service agent of
trademarked goods can use the trademark
at issue in its domain name. The standard for determining whether such
activities constitute the bona fide offering of goods and services is: (1) Respondent must actually be offering the
goods or services at issue; (2) Respondent must use the site to sell only the
trademarked
goods; otherwise, it could be using the trademark to bait Internet
users and then switch them to other goods; (3) The site must accurately
disclose the registrant’s relationship with the trademark owner; it may not,
for example, falsely suggest that it is the trademark
owner, or that the
website is the official site, if, in fact, it is only one of many sales agents;
and (4) Respondent must not try
to corner the market in all domain names, thus
depriving the trademark owner of reflecting its own mark in a domain name.
5. The domain names have been
registered and are being used in bad faith.
When a consumer types in <kclights.com>, <daylighters.com>
or <kcautomotive.com>, the Internet user is directed to the
websites for KC Lights, not KC HiLITES.
The motive is financial gain by creating a likelihood of confusion with
KC HiLITES.
6. Consumers who visit Respondent’s
websites likely assume that they can purchase KC HiLITES’ products. However, because Respondent sells many
brands, consumers may buy other manufacturers’ goods. The result is that Respondent is “baiting” consumers to its
website and likely “switching” them to other brands further establishes
Respondent’s bad faith.
D.
Additional Submission by Respondent
1. Complainant has failed to prove the
required three elements for each domain name that it seeks to have
transferred. The domain name <kclights>
may be similar, however, both “KC” and “lights” are generic terms that
Complainant should not have sole ownership of.
“KC” stands for Kansas City, and “lights” for the type of products sold. The <kcautomotive.com> domain
name has no similarity to KC HiLITES other than the letters “K” and “C.” There is no confusion to the Internet user
regarding these names. This is an attempt by Complainant to force Respondent
out of business
because Respondent refused to sell the domain name <kclights.com>
for $5,000.00 to Complainant.
2. Respondent competes in the same
market because Complainant set Respondent up as a distributor, promoted
Respondent’s site and even
provided a link from Complainant’s site to Respondent’s
site. The authorized distributorship
lasted over three years. Respondent did
not compete in the same market at the time of registration of the domain name <kclights.com>. Respondent has proven this by supplying
proof that Respondent sold flash light and book light products. Complainant seems to be ignoring this fact.
3.
The <kcautomotive.com>
domain name is not similar to KC HiLITES other than the letters “K” and
“C.” Respondent has every right to use
this abbreviation for Kansas City.
4. Respondent has a legitimate interest
in the domain names. Respondent offers
a product to the consumer and has for over three years. Prior to selling Complainant’s goods,
Respondent sold other products via the Internet. Complainant has never had a problem with Respondent selling other
manufacturer products. Other
distributors of Complainant also sell other manufacturer products. The site has always had a disclaimer that it
was an authorized distributor for KC HiLITES’ products. The site does not falsely suggest that it is
the trademark owner. It has always
listed KC HiLITES’ address on the warranty page. Respondent has not tried to corner the market in all domain
names. Complainant has been in business
much longer than Respondent and, therefore, could have selected various domain
names. Complainant is not deprived of
reflecting its own marks in domain names.
It has registered its domain name <kchilites.com>.
5. Reverse domain hijacking should be
determined. Complainant was informed
when Respondent contacted it how the domain name was derived and what
Respondent was selling. Complainant
stated that the names were different and it did not have a problem with
Respondent’s domain name. Respondent
never once attempted to sell the domain names.
The Complaint was brought in bad faith as an attempt to harass and force
Respondent out of business due to Respondent’s refusal to
sell the domain name <kclights.com>
for $5,000.00
FINDINGS AND DETERMINATIONS
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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.
Complainant has provided evidence of
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the
KC mark (Reg. No. 1,287,807 registered July 31, 1984) related
to auxiliary driving lights, fog lights, road racing lights and flood
lights for
use on automotive vehicles and the DAYLIGHTER mark (Reg. No. 1,295,962
registered on September 18, 1984) related to auxiliary
driving lights for
mounting on automotive vehicles for off-road vehicles. This does establish Complainant’s rights in
the KC and DAYLIGHTER marks for purposes of Policy Paragraph 4(a)(i).[1]
In addition, Complainant has been using
the trade name KC HiLITES continuously since 1970 and was incorporated under
that name in
Arizona on May 11, 1975.
Thus, the Panelist finds and determines that, by virtue of its actual
use, Complainant has common law trademark rights in its name.[2]
The Panelist finds and determines that
the disputed domain names <kclights.com> and <daylighters.com>
are substantially identical and confusingly similar to Complainant’s common law
and federally registered marks.
In the first instance, <kclights.com>
is almost identical to Complainant’s common law mark.
In the second instance, <daylighters.com>
is confusingly similar to Complainant’s DAYLIGHTER mark because the disputed
domain name appropriates Complainant’s mark and merely
adds the letter “s” to
the end of the mark. The addition of
the letter “s” does not significantly distinguish this disputed domain name
from Complainant’s mark.[3]
The conclusion, however, with respect to <kcautomotive.com>
is different. The Panelist finds and
determines that this disputed domain name is not confusingly similar to
Complainant’s KC mark.
Complainant argues that Respondent has
registered this disputed domain name using the federally registered trademark
KC® in conjunction
with the generic word “automotive.” It contends that simply adding generic terms
to Complainant’s mark does not avoid a finding that the domain name is
confusingly similar
to a trademark in which Complainant has rights.
The difficulty with Complainant’s
argument is that the mark KC, of itself, is generic.[4] Respondent has provided numerous examples of
the general and widespread use of the letters “KC” on the Internet and
otherwise.[5]
Complainant contends that its argument is
supported by such authority as Caterpillar Inc. v. Roam the Planet, Ltd.,
WIPO Case No. 2000-0275 (June 7, 2000) (catmachines.com)
wherein it was held that adding the generic word “machines” to Complainant’s
trademark did not serve to distinguish the domain name
from the mark CAT).
The mark “CAT” is far different from the
mark “KC” because, of itself, it has a specific famous connotation, which “KC”
does not. Thus, even Webster’s
Ninth New Collegiate Dictionary (1983) p. 213 , contains the mark “CAT” defined as “trademark
– used for a Caterpillar tractor.”
Accordingly, while Complainant has
established that the first of the required three prongs of the Policy as to <kclights.com>
and <daylighters.com>, it has not done so with respect to <kcautomotive.com>.
The Panelist finds and determines that
Respondent has no rights to or legitimate interests in the disputed domain
names <kclights.com> and <daylighters.com>. This is because Complainant terminated its
oral, authorized distributor agreement with Respondent because of consumer
confusion and
additional problems with the distributorship. Respondent’s prior use of the disputed
domain names does not grant Respondent rights to or legitimate interests in the
domain names.[6] Moreover,
Respondent lacks rights to and legitimate interests in the disputed domain
names because Respondent sells competing goods
alongside Complainant’s
products.[7]
The Panelist finds and determines that Respondent’s
use of the disputed domain names <kclights.com> and <daylighters.com>
to sell Complainant’s goods alongside Complainant’s competitor’s goods
evidences registration and use of the domain names in bad
faith. Accordingly, it is found and determined that
Respondent has intentionally attempted to attract Internet users to
Respondent’s website
for commercial gain by creating a likelihood of confusion
with Complainant’s marks as to the source, sponsorship, affiliation or
endorsement of Respondent’s website, which is evidence of bad faith
registration and use pursuant to Policy Paragraph 4(b)(iv).[8]
It is further found and determined that
Respondent’s use of a disclaimer does not absolve Respondent’s bad faith
registration and
use of the disputed domain names because of the initial
interest attraction of the consumer.
Respondent has charged Complainant with
attempting to reverse hijack the disputed domain names.[9]
The Panelist declines to so find because
Complainant’s marks were federally registered and, thus, presumptively valid.
This, in the Panelist’s view, is
demonstrable evidence of Complainant’s good faith and justification.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to <kclights.com> and <daylighters.com>.
Accordingly, it is Ordered that the <kclights.com> and <daylighters.com>
domain names be TRANSFERRED from Respondent to Complainant.
Having failed to establish all three
elements required under the ICANN Policy, the Panelist concludes that relief
shall be DENIED as to <kcautomotive.com>.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: August 29, 2003
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