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Kofi of Kofrica ent, Inc. v. Bubois [2004] GENDND 1351 (16 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kofi of Kofrica ent, Inc. v. Bubois

Case No. D2004-0683

1. The Parties

The Complainant is Kofi of Kofrica ent, Inc., Malibu, California, United States of America.

The Respondent is Bubois, Belmont, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <kofi.com> and <kofi.info> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2004. On August 27, 2004, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain names at issue. On August 27, 2004, Network Solutions, LLC, transmitted by email to the Center its verification response in which it was noted that the registrant of record for the disputed domain names is not the entity specified in the Complaint as Respondent. The Center, via email of September 1, 2004, notified Complainant of this and other deficiencies, which were later corrected by Complainant. As amended, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2004.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on October 12, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant owns U.S. trademark registrations for the following marks:

KOFI, as used for men’s clothing (Reg. No. 1797994);

KOFI, as used for entertainment in the nature of live performances by a singer, etc. (Reg. No. 2513876);

KOFI ENTERTAINMENT, as used for audio recording, video, motion picture film, and television production (Reg. No. 2770545); and

K.O.F.I. (KEEPING OUR FAMILIES INFORMED), as used for providing emergency breaking news, etc. (Reg. No. 2850842).

In May 1999, Complainant spoke with Respondent. He informed Respondent that he was a recording artist whose legal name was “Kofi” and that he had a trademark/service mark pending for the name “Kofi.” The Respondent asked Complainant to make him an offer for the domain name <kofi.com>.

The disputed domain name <kofi.com> was registered on April 28, 1999, and <kofi.info> on August 8, 2003.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain names <kofi.com> and <kofi.info> are identical to the Complainant’s federally registered marks.

Complainant further urges that Respondent has no rights or legitimate interests in respect of the domain names since: (1) there is no evidence of the Respondent’s use of the domain names in connection with a bona fide offering of goods/services; (2) Respondent has no legitimate business or organization that has been commonly known by the domain names; and (3) Respondent’s domain names are not being used; they are “parked.”

With respect to the “bad faith” registration and use factor, Complainant contends that Respondent’s failure to provide a proper organization name when registering the domain names and the inclusion of false fax and telephone number are evidence of bad faith. According to Complainant, there is no business called “Bubois.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that the domain names <kofi.com> and <kofi.info> are legally identical to the mark KOFI. The inclusion of the top-level domains .com and .info has no trademark significance. It is also clear that Complainant, through its use and ownership of the above-noted U.S. registrations, has rights in the mark KOFI.

B. Rights or Legitimate Interests

The Complainant has alleged that Respondent has never used the domain names in any manner and is not known by them. As Respondent did not respond to Complaint, the Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence that any of the circumstances set forth in the relevant Policy is applicable to the instant dispute.

C. Registered and Used in Bad Faith

The Panel is aware that KOFI is a common Ghanaian name. However, given the fact that Respondent is located in the United States, and in the same state as Complainant, it seems more probable that Respondent had Complainant’s mark in mind when he registered the disputed domain names.

The Panel concludes that the disputed domain names were registered and used in bad faith. The providing of false contact information has been found by many other UDRP panels to support such a determination. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003 (WIPO February 18, 2000). Further, the passive holding (what Complainant refers to as “parking”) of domain names is also evidence of the requisite “bad faith.” See Telstra.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <kofi.com> and <kofi.info> be transferred to the Complainant.

Jeffrey M. Samuels
Sole Panelist

Date: October 16, 2004