WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Amazing Kreskin v. Gerry McCambridge
Case No. D2000-1730
1. The Parties
Complainant is The Amazing Kreskin d/b/a Kreskin, Inc., ("Complainant" or "Kreskin"), a New Jersey Corporation with a principal place of business at 8 Soder Road North Caldwell, New Jersey 07006 USA.
Respondent is Gerry McCambridge d/b/a Mystical Minds Inc. ("Respondent" or "McCambridge"), a New York Corporation with a principal place of business at 187 Seaman Neck Road, Dix Hills, New York 11746 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "kreskin.com" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.
3. Procedural History
On October 12, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint. The Complainant paid the required fee.
On December 18, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On December 22, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On January 10, 2001, the Center received the Response of Respondent. On January 12, 2001, the Center sent an Acknowledgment of Response.
On January 21, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant is owner of service marks duly registered by the United States Patent and Trademark Office. The service marks on which the complaint is based are: KRESKIN Reg No. 2,258 764 and Reg No. 2,258,765 both in connection with entertainment services featuring extra-sensory perception, in Class 41 (US CLS.100, 101 and 107). Respondent registered the domain name "kreskin.com" on or about April 2, 2000.
Complainant and Respondent both engage in the business of entertaining the public as persons with exceptional abilities relating to future predictions through the medium of extra-sensory perception, hypnosis and other techniques generally referred to as determining the operations of another personís mind. Thus, Complainant and Respondent are competitors.
Respondent has provided an automatic link or reference on the website located at "www.kreskin.com" to another website, "www.mentalist.com", owned by Respondent. The website at "www.kreskin.com" serves no other purpose than to immediately divert the userís Internet browser to "www.mentalist.com" and currently includes no content save the words "BEING FORWARDED TO MENTALIST.COM" and a banner advertisement.
The website at "www.mentalist.com" promotes Respondentís services (and those of another person) as a mentalist or hypnotist, precisely the same types of services and entertainment offered by Complainant under the well-known mark KRESKIN. Neither the website at "www.kreskin.com" nor the website at "www.mentalist.com" contains any disclaimer or other statement explaining that the services advertised by those website are not offered, sponsored, or affiliated with Complainant. Therefore, consumers who have been diverted to Respondentís websites may believe the websites are offered, sponsored, or affiliated with Complainant.
Respondent recently posted a message on the "www.kreskin.com" website soliciting the sale of the Domain Name. This sale was to be accomplished by the submission of "bids" by potential purchasers, and Respondentís offer did not limit the amount of those bids to Respondentís out-of-pocket costs related to the Domain Name.
Respondent alleges that the website "www.kreskin.com" contains a hyperlink to redirect any potential consumers seeking The Amazing Kreskinís services, allowing them instant access to the Complainantís own website. The website "www.kreskin.com" contains a statement as a disclaimer explaining that the services are not offered or sponsored by the Complainant.
The Respondent admits that after being approached by numerous magicians, mentalists, psychic services, and other private parties for ownership of the Domain Name, the Respondent did offer the name for sale. The internal ĎHit Counterí on Respondentís website "www.kreskin.com" indicated that "www.kreskin.com" was not generating many hits from Internet browsers. Neither Complainant nor his legal staff submitted a bid for the Domain Name, indicating that they would pay Respondentís out-of-pocket costs related to the Domain Name or any other amount.
On January 5, 1998, Complainant created the website "www.amazingkreskin.com" for promoting himself and his mentalist act. Complainant did not register the Domain Name "kreskin.com" or establish a website at "www.kreskin.com". The Domain Name remained unregistered for over two years before the Respondent registered it on April 2, 2000.
Respondent alleges that the Complainant performs on television and for theatres across the United States, while the Respondent performs at private house parties. Therefore, Respondent alleges that he is not in direct competition with Respondent.
Respondent has posted his personal feelings and certain facts about The Amazing Kreskin on the "www.kreskin.com" website, which have since been removed.
5. Partiesí Contentions
A. Complainant contends that he has a registered service mark in KRESKIN. Complainant further contends that the Domain Name is identical with and confusingly similar to the KRESKIN mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent does not contest Complainantís assertion that it has a registered mark in KERSKIN or that the Domain Name is identical with and confusingly similar to the mark. Respondent asserts that the phrase "kreskin" has become generic or descriptive and is a reference to anyone who performs mind-reading.
Respondent contests Complainantís assertions that Respondent has no rights or legitimate interest in the Domain Name.
Respondent contests Complainantís assertion that Respondent registered and used the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that 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) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant contends that he has a registered service mark in KRESKIN. Complainant further contends that the Domain Name is identical with and confusingly similar to the KRESKIN mark pursuant to the Policy paragraph 4(a)(i).
Respondent does not contest Complainantís assertion that he has a registered mark in KERSKIN or that the Domain Name is identical with and confusingly similar to the mark. Respondent asserts that the phrase "kreskin" has become generic or descriptive and is a common reference to anyone who performs mind-reading.
Respondent argues that just as the word "Houdini" became a word in the English dictionary to mean "escape," and "Nostradamus" means the same as "future predictor," the word "Kreskin" is synonymous with the word "mentalist." Respondent asserts that in todayís culture, "The Amazing Kreskin" is a man, and the word "kreskin" has come to be synonymous with any person who claims to read minds, knows other peoples thoughts, or can predict the future. The domain name "kreskin.com" represents the meaning of the word, not the man. The man is represented by his own domain name "amazingkreskin.com".
The Respondent alleges that the general public is using the word "Kreskin" instead of the word psychic or mind reader, they were not making a reference directly to the man, George Kresge a.k.a. The Amazing Kreskin, just the social meaning. Respondent further alleges that Complainant, George Kresge, goes by the name "The Amazing Kreskin", not "Kreskin". Complainantís own website "www.amazingkreskin.com" has many examples indicating that fact. When he writes for publications, he never uses Kreskin, he always uses The Amazing Kreskin.
Prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047.
The question as to whether a mark is or has become generic such that the Complainant should not be seen to have "rights" in respect of the mark has been presented to a number of Panels. While there exists a split in the decisions whether such defenses should be entertained, the Sole Panelist believes that under the Policy the propriety and the wisdom of analyzing such defenses is beyond the purview of the Panel. The courts or regulatory authorities are better able to grapple with the interaction between registered service marks or trademarks and the defense that the marks have become generic or descriptive. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. The Sole Panelist notes that the appropriate procedure would be for the Respondent to seek relief from the courts or the administrative body which registered the service mark or trademark, such as through a cancellation proceeding. Therefore, the Sole Panelist accepts the registered service mark as prima facie evidence of the existence of the mark without analysis of Respondentís assertions that the KRESKIN mark is descriptive or generic. 402 Shoes Inc d.b.a. Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-0223. For purposes of this proceeding, the Complainant has enforceable rights in the service mark KRESKIN. If the Sole Panelist were to analyze whether "kreskin" has become generic or descriptive, the existing record would be found to be inadequate to support such a finding. Both parties would be required to submit additional evidence.
Complainant further contends that the Domain Name is identical with and confusingly similar to the KRESKIN mark pursuant to the Policy paragraph 4(a)(i).
The Sole Panelist notes that the entirety of the mark KRESKIN is included in the Domain Name.
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998). The addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain name.
Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the KRESKIN mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainant for the use of the KRESKIN mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent admits that the Domain Name has only been used to attract Internet users to the "www.kreskin.com" website, which is linked to Respondentís "www.mentalist.com" website. This does not constitute the offering of bona fide goods or services. Respondent does not contend that he has been commonly known as "Kreskin." Therefore, the criteria necessary to prove the nonexclusive methods under paragraphs 4(c)(i) or (ii) have not been met.
Respondent argues that the content on his "www.mentalist.com" included comments regarding Complainant and contains a disclaimer, which keeps the link with "www.kreskin.com" from being misleading to the Internet user. Complainant asserts that Respondentís use of the Domain Name in the context of promoting services identical to those provided by Complainant, infringes Complainantís service mark unfairly and in violation of law. Complainant further asserts that Respondentís acts constitute an intentional diversion of consumers seeking a website related to Complainant. Instead, the website refers such consumers to Respondentís site for the purpose of enriching Respondent and disparaging Complainant.
Of critical importance on the Internet is the routing or diversion of traffic to oneís website. The use of a registered trademark in a domain name allows the entity registering the domain name to capture traffic and point or divert it to another website.
However, Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the companyís name or trademark. See Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer who is unsure about a companyís domain name will often guess that the domain name is also the companyís name . . . . [A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." (citations omitted)). Thus, consumers would expect to find an official website at a domain name comprised of the KRESKIN mark.
In addition, the Domain Name is confusingly similar in that the offending domain name is misleading. The Domain Name "kreskin.com" suggests an association or relationship to Complainant, which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., WIPO Case No. D2000-0167. Respondent's use of the Domain Name and the "www.kreskin.com" website creates a likelihood of initial interest confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant.
The use of a disclaimer by Respondent is not sufficient to remedy initial interest confusion, especially when it appears on another website to which the Internet user has been directed. Even though a misdirected user may become aware that the "www.kreskin.com" and "www.mentalist.com" websites are not affiliated with the Complainant, the fact remains that the Respondent's improper and unauthorized use of the KRESKIN mark diverts persons seeking Complainantís official website. This initial interest confusion violates Complainantís rights in his service mark. See Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion and noting that "Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership," and that even where people realize, immediately upon accessing the complained-of website, that they have reached a site operated by someone other than the trademark owner, the infringing website will still have gained a customer by appropriating the goodwill of the trademark owner).
Respondent indicates that his negative comments about Complainant have been removed from his "www.mentalist.com" website. All that remains is self-promotion. From this evidence, the Sole Panelist concludes that the primary purpose of Respondentís website is to promote his own services, making it commercial in nature.
Having found that the attraction of Internet users through the Domain Name is misleading and that Respondentís primary purpose is commercial, the criteria of paragraph 4(c)(iii) have not been met.
The Sole Panelist finds that file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Complainant alleges that Respondent has attempted to sell the Domain Name for more than his out-of-pocket expenses. By soliciting bids on the "www.mentalist.com" website. Respondent admits that he did put the Domain Name up for sale. Apparently, Complainant did not offer to purchase the Domain Name for any amount. There is no evidence in the file that Respondentís primary purpose was to sell the Domain Name to Complainant. Therefore, the criteria of paragraph 4(b)(i) are not satisfied.
Complainant has offered no evidence required under paragraph 4(b)(ii).
Complainant further alleges that Respondent has intentionally attempted to disrupt Complainantís business by posting disparaging statements on the "www.mentalist.com" website. While the messages posted by Respondent were critical of Complainant, there is no indication that the criticism has had any effect of Complainantís business. Therefore, the criteria of paragraph 4(b)(iii) are not satisfied.
The Sole Panelist has concluded above that Respondent has intentionally attracted Internet users to Respondentís website by linking the "www.kreskin.com" website to the "www.mentalist.com" website. The Sole Panelist has also found that the link creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website. The purpose of Respondentís website is self-promotion and, therefore, commercial in nature. Therefore, the criteria of paragraph 4(b)(iv) have been met. The Sole Panelist finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Name "kreskin.com" is confusingly similar to Complainantís registered service mark KRESKIN, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to The Amazing Kretskin.
Richard W. Page
February 11, 2001
San Diego, California