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Generic Top Level Domain Name (gTLD) Decisions |
Keslow Television Industries Inc. v.
Michael Levy Productions
Claim
Number: FA0410000346298
Complainant is Keslow Television Industries Inc. (“Complainant”),
represented by Felicia S. Ennis of Robinson Brog Leinwand Green Genovese & Gluck PC, 1345 Avenue of the Americas-31st
Floor, New York, NY 10105. Respondent
is Michael Levy Productions (“Respondent”),
526 E. 20th Street, Apt. 6E, New York, NY 10009.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <keslowdigital.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that has acted independently and impartially and to the
best of his knowledge has no known conflict in serving
as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
18, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 19, 2004.
On
October 19, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <keslowdigital.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 ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
October 26, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 15, 2004 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@keslowdigital.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 1, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Louis E.
Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <keslowdigital.com>
domain name is confusingly similar to Complainant’s KESLOW mark.
2. Respondent does not have any rights or
legitimate interests in the <keslowdigital.com> domain name.
3. Respondent registered and used the <keslowdigital.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Keslow Television Industries Inc., offers
electronic broadcast-quality camera equipment for rent to the broadcasting
community and
independent production companies.
Complainant was founded in 1992 by Mark Keslow and is based in New York City. Since 1992, Complainant has used the KESLOW
mark continuously and extensively in association with its business and spends
approximately
$30,000-$50,000 annually in advertising and promotion.
Complainant registered the <keslow.com> domain name in 1999 for it
website, which Complainant uses to advertise and promite
its business
nationally and worldwide. Furthermore,
Complainant is a member of the Producton Equipment Rental Association (PERA), a
worldwide trade organiztion, and has
hosted and sponsored numerous seminars on
new technology in the industry. Some of
Complainant’s clients include ABC Televition, NBC Olympics, ESPN and CBS
Sports, and leaders in the music and recording industries
such as Sony Music and
Sony Electronics.
Respondent registered the <keslowdigital.com> domain name on October 29, 2003. For a period of time, Respondent used the
disputed domain name to divert Internet users to a webpage that posted
offensive images,
such as a baby holding up its middle finger. However, after Complainant sent a cease and
desist letter to Respondent on or about March 24, 2004, Respondent began using
the disputed
domain name to redirect Internet users to a website for Liman
Video Rental (LVR), which is a video equipment rental business in direct
competition
with Complainant. The LVR website does
not mention Respondent or Complainant.
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.
Complainant has
used its KESLOW mark continuously since 1992 in association with the video
equipment rental industry and has spent
$30,000-50,000 annually in promoting
its mark. Complainant has hosted and
sponsored several seminars on new technology in the industry and is a member of
the production Equipment
Rental Association (PERA). Therefore, the Panel finds that Complainant has established
secondary meaning in the KESLOW mark and that Complainant has common law
rights
in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary
meaning was established); see also
S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
Mar. 13, 2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark
through proof of secondary meaning associated with the
mark).
The <keslowdigital.com>
domain name registered by Respondent is confusingly similar to Complainant’s
KESLOW mark because it incorporates Complainant’s mark
in its entirety, adding
only the generic or descriptive term “digital.” Furthermore, the generic or descriptive term “digital” describes
the type of camera commonly offered for rent by Complainant. The Panel determines that the mere addition
of a generic or descriptive term to Complainant’s mark does not distinguish the
domain
name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant
combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with
a
generic term that has an obvious relationship to Complainant’s business).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <keslowdigital.com>
domain name. Respondent failed to
respond to the Complaint and, therefore, the Panel assumes that Respondent
lacks rights and legitimate interests
in the disputed domain names. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights or legitimate interests pursuant
to Policy ¶
4(a)(ii). See 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
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name).
Furthermore,
Complainant has made a prima facie showing on this issue and Respondent
failed to respond, so the Panel is entitled to accept all reasonable
allegations and inferences
in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to
admitting the truth of
complainant’s assertion in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
Respondent has
used the <keslowdigital.com> domain name to divert Internet users
to a website that promoted the products and services of a third party in
competition with Complainant.
Respondent’s use of a domain name confusingly similar to Complainant’s
KESLOW mark to redirect Internet users interested in Complainant’s
products and
services to a competitor of Complainant is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that
compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat.
Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate
interests in a domain name that used
Complainant’s mark to redirect Internet
users to a competitor’s website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation
of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”).
Moreover,
Complainant argues that Respondent is not commonly known by the <keslowdigital.com>
domain name, and there is no evidence to suggest that Respondent is
commonly known by the disputed domain name.
Furthermore, Complainant has not given Respondent permission to use
Complainant’s KESLOW mark. Thus,
Respondent does not have rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
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); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
made use of the <keslowdigital.com> domain name by attempting to
attract Internet users seeking Complainant’s KESLOW goods and services to a
competing commercial website
by creating a likelihood of confusion between the
KESLOW mark and the content of the website at the <keslowdigital.com>
domain name. The Panel finds that
Respondent’s practice of diversion for commercial gain is evidence of bad faith
registration and use pursuant
to Policy ¶ 4(b)(iv). See Identigene, Inc.
v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
Respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that Complainant is the source of or
is sponsoring the services
offered at the site); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that
Respondent intentionally attempted to attract Internet users to his website for
commercial
gain by creating a likelihood of confusion with Complainant’s mark
and offering the same chat services via his website as Complainant);
see
also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that
Respondent had engaged in bad faith use and registration by linking the
domain
name to a website that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial
gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s marks).
Complainant’s
business entails offering electronic broadcast-quality camera equipment for
rent, and Respondent’s <keslowdigital.com> domain name links to a
website for another video equipment rental business. The Panel finds that Respondent’s use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
offering goods and services similar to Complainant’s goods and services is
evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that
competes with Complainant’s
business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of
Policy ¶ 4(b)(iii)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <keslowdigital.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 13, 2004
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