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Generic Top Level Domain Name (gTLD) Decisions |
Kuryakyn Holdings, Inc. v. Domain Deluxe
Claim Number: FA0411000371763
Complainant is Kuryakyn Holdings, Inc. (“Complainant”),
represented by Marsha Stolt, of Moss & Barnett, P.A., 4800 Wells
Fargo Center, 90 South Seventh Street, Minneapolis, MN 55402-4129. Respondent
is Domain Deluxe (“Respondent”),
16/F Cheung Kong Center, Hong Kong, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kuryakn.com>,
registered with The Registry At Info
Avenue d/b/a IA Registry.
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
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
24, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 29, 2004.
On
November 29, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the
domain name <kuryakn.com> is registered with The
Registry At Info Avenue d/b/a IA Registry and that Respondent is the current
registrant of the name. The Registry
At Info Avenue d/b/a IA Registry has
verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA
Registry 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
December 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 23, 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@kuryakn.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
January 3, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Judge Harold
Kalina (Ret.) 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 <kuryakn.com> domain name is confusingly similar to
Complainant’s KURYAKYN mark.
2. Respondent does not have any rights or
legitimate interests in the <kuryakn.com>
domain name.
3. Respondent registered and used the <kuryakn.com> domain name in bad
faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, a
manufacturer and distributor of motorcycle parts and accessories, is the
exclusive owner of two U.S. trademark registrations
that incorporate the
KURYAKYN mark, namely U.S. Reg. Nos. 1,963,632 for KURYAKYN USA (issued March
26, 1996) and 2,892,561 for KURYAKYN
(issued October 12, 2004). Complainant has
used the KURYAKYN mark in connection with its products continuously since at
least as
early as 1992. The KURYAKYN mark is used on parts, on packaging for
parts, on product catalogs, and on Complainant’s website at the
<kuryakyn.com> domain name.
Respondent
registered the <kuryakn.com>
domain name on January 17, 2002. The domain name resolves to a website that
contains links to numerous websites where competing
products are sold.
Respondent is not a licensee of Complainant nor is Respondent authorized to use
Complainant’s mark for any purpose.
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
established that it has rights in the KURYAKYN mark through registration with
the United States Patent and Trademark
Office and through continuous use of the
mark in commerce since 1992. See 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 Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that 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).
The <kuryakn.com> domain name is
confusingly similar to Complainant’s KURYAKYN registered trademark because the
disputed domain name merely removes
the letter “y” and adds the “.com” generic
top-level domain to Complainant’s mark. Respondent’s intentional misspelling of
the KURYAKYN
mark by removing the letter “y” does not distinguish the disputed
domain name from the mark. Respondent’s typosquatting does not
eliminate the
confusingly similarity between the domain name and Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth
“w” or the
omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by Complainant);
see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to Complainant’s
COMPAQ mark because the omission of the
letter “a” in the domain name does not significantly change the overall impression
of the
mark); see also State Farm Mut.
Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> is confusingly similar
to Complainant’s
STATE FARM mark); see
also Neiman Marcus Group, Inc. v. Party Night,
Inc., FA
114546 (Nat. Arb. Forum July 23, 2002) (finding the disputed domain name was a
simple misspelling of Complainant’s mark and was
a classic example of
typosquatting, which “renders the
domain name confusingly similar to the altered famous mark”).
Furthermore, the
addition of the “.com” generic top-level domain does not distinguish the
disputed domain name from the KURYAKYN mark.
See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8,
2001) (finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE
mark); see also
Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY
BY VICTORIA mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Further, because
Respondent has failed to submit a Response, Respondent has failed to propose
any set
of circumstances that could substantiate its rights or legitimate
interests in the disputed domain name. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which
could demonstrate any rights or legitimate interests in the
domain name); see also Vertical 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 the Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name redirects
unsuspecting Internet users to a website that provides links to services that
are in competition
with Complainant’s products. The Panel infers that
Respondent commercially benefits from this diversion by receiving pay-per-click
fees from advertisers when Internet users follow the links on its website.
Respondent makes opportunistic use of Complainant’s mark
in order to capitalize
on the goodwill and fame associated with the KURYAKYN moniker; thus, Respondent
fails to establish rights
or legitimate interests in the domain name. See Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally
and misleadingly
diverting users away from Complainant's site to a competing 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”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS
information indicates that the
registrant of the disputed domain name is known as “Domain Deluxe” and is not
known by the confusing
second-level domain that infringes on Complainant’s
KURYAKYN mark. Moreover, Respondent is not authorized or licensed to use
Complainant’s
mark for any purpose. 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 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"); see also MRA Holding, LLC v. Costnet, FA
140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that Respondent was not “commonly known
by”
the name GIRLS GON WILD or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s famous KURYAKYN mark
within a domain name to ensnare unsuspecting
Internet users. Respondent then
redirects the users to its website, which offers links to websites that sell
competing products.
The Panel infers that Respondent commercially benefits from
this diversion by receiving pay-per-click fees from advertisers when
Internet
users follow the links on its website. Such infringement is what the Policy was
intended to remedy. Accordingly, the Panel
finds that Respondent registered and
used the <kuryakn.com> domain
name in bad faith under Policy ¶ 4(b)(iv). See
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when
the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Respondent has
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet
users to businesses that offer
services that compete with those offered by Complainant. Respondent’s use of
the <kuryakn.com> domain name
establishes that Respondent registered and used the domain name for the purpose
of disrupting the business of a competitor
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent acted in bad
faith by attracting Internet users to a website
that competes with
Complainant’s business); see also
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat.
Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent,
Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business); see also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent diverted business from
Complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive”).
Respondent’s
removal of a single letter from Complainant’s KURYAKYN mark, resulting in a
domain name that is confusingly similar to
the mark, is evidence of bad faith
registration and use of the disputed domain name. Respondent diverts Internet
users who accidentally
mistype Complainant’s mark to Respondent’s competing
website. The Panel finds that Respondent engaged in the practice of
typosquatting,
which is evidence that Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off
traffic from its intended
destination, by preying on Internauts who make common typing errors.
Typosquatting is inherently parasitic
and of itself evidence of bad faith”); see also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003) (finding that Respondent registered and used the
<zonelarm.com> domain name in bad
faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark. "Typosquatting,
itself is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy 4(a)(iii).").
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark and
simply removes a single letter,
suggests that Respondent knew of Complainant’s rights in the KURYAKYN mark.
Additionally, Complainant’s
trademark registration, on file at the United
States Patent and Trademark Office, gave Respondent constructive notice of
Complainant’s
mark. Moreover, the domain name resolves to a website that
provides links to Complainant’s competitors. Thus, the Panel finds that
Respondent chose the <kuryakn.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use
pursuant to Policy ¶
4(a)(iii). See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic bad
faith’”); see also Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”); see
also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous
mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the
domain
names); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph
4(b) sets forth certain circumstances, without limitation,
that shall be
evidence of registration and use of a domain name in bad faith); see also Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status
that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <kuryakn.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
January 14, 2005
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