WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gene Klein a/k/a Gene Simmons, Gene Simmons Company,

and Kiss Catalog, Ltd. v. Darryl Boyd

Case No. D2001-0183

 

1. The Parties

1.1 The Complainants are Gene Klein a/k/a Gene Simmons, a citizen of the United States of America, Gene Simmons Company, a corporation organized and existing under the laws of the State of Delaware, United States of America, having its principal place of business in New York, United States of America, and Kiss Catalog, Ltd., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business in New York, United States of America. Complainant Gene Klein is an officer, director and principal shareholder of Complainant Gene Simmons Company. Complainant Kiss Catalog, Ltd. owns all rights to the musical group KISS of which Mr. Klein is a member. Since on or before 1970, Complainant Gene Klein has been known professionally and as a member of the musical group KISS as Gene Simmons. Pursuant to the Policy, paragraph 4(f) Complainant petition this Panel to consolidate their disputes.

1.2 The Respondent is Darryl Boyd, an individual having an address in Redondo Beach, California, United States of America.

 

2. The Domain Names and Registrar

The domain names at issue are <kisscatalog.com>, <kisscatalog.net>, <kisscatalog.org>, <kisscatalogltd.com>, <kisscatalogltd.net>, <kisscatalogltd.org>, <genesimmonsco.com>, <genesimmonsco.net>, <genesimmonsco.org>, <genesimmonscompany.com>, <genesimmonscompany.net>, <genesimmonscompany.org>, <kissarmydepot.net>, and <kissarmydepot.org>, which domain names are registered with Register.com, based in New York, New York, United States of America.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on

February 1, 2001, and the signed original together with four copies was received on February 5, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainants, dated February 5, 2001.

3.2 On February 21, 2001, the WIPO Center sent Complainants an email asking it to confirm that the domain names did not contain the prefix "www." as had been indicated in the Complaint. On February 26, 2001 Complainants confirmed that none of the domain names at issue included the prefix "www.".

3.3 On February 12, 2001, a Request for Registrar Verification was transmitted to the registrar, Register.com requesting it to: (1) confirm that the domain names at issue are registered with Register.com; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.

3.4 On February 20, 2001, Register.com confirmed by reply e-mail that the domain names at issue are registered with Register.com, are currently in active status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.5 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainants.

3.6 No formal deficiencies having been recorded, on February 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainants, Register.com and ICANN), setting a deadline of

March 19, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Register.comís confirmation. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

3.7 On March 26, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.

3.8 On April 10, 2001, in view of the Complainants' designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.

 

4. Factual Background

4.1 Complainant Gene Klein is the owner of a trademark registered with the United States Patent and Trademark Office ("USPTO") for the mark GENE SIMMONS. The registration issued on November 17, 1981. Complaint, Annex D, Exhibit A. Complainant Kiss Catalog, Ltd. is the owner of registrations for the trademark KISS, which trademarks were issued by the USPTO on January 4, 1977, and

May 23, 1995, and for the trademark KISS ARMY, which trademark was issued by the USPTO on June 9, 1998. Complainant Kiss Catalog, Ltd. is also the owner of several other trademarks incorporating the mark KISS. Complaint, Annex D, Exhibit B.

4.2 Complainants have used the above-described marks in connection with performances, recordings, appearances and products of and associated with the musical group KISS.

4.3 On June 19 and 20, 2000, Respondent registered the domain names <kisscatalogltd.com>, <kisscatalog.com>, <genesimmonsco.com>, and <genesimmonscompany.com>. Complaint, Annex A.

4.4 Thereafter, Complainant Gene Klein received a faxed offer to sell the domain names set out in paragraph 4.3, above. Complaint, Annex B, and Annex D, paragraph 5. Complainantsí attorneys contacted Respondent, who offered to sell the above described domain names for $2,000 plus other consideration by the musical group KISS. Complaint, Annex D, paragraph 5.

4.5 On November 15, 2000, Respondent registered the balance of the domain names at issue.

4.6 To date, Respondent has not used the domain names to develop a web site or sites.

 

5. Partiesí Contentions

5.1 Complainants contend that Respondent has registered domain names which are identical or confusingly similar to the trademarks registered and used by Complainants Gene Klein and Kiss Catalog, Ltd., that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

5.2 Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

6.1 Complainants petition the Panel pursuant to paragraph 4(f) to consolidate their disputes. Paragraph 4(f) provides in pertinent part: "In the event of multiple disputes . . . either [Respondent] or the complainant may petition to consolidate the disputes before a single Administrative Panel. . . .[The Panel] may consolidate before it any or all such disputes in its sole discretion . . . ." The Uniform Rules, Rule10(e) provides in pertinent part that "[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules." As the Panel is given broad discretion to consolidate disputes properly brought under the Policy, and as Complainants have presented facts which demonstrate the interrelationships present among the three Complainants, the Panel exercises its discretion to consolidate the disputes set out in the Complaint, all of which are subject to the Policy.

6.2 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the disputes: "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."

6.3 Since the Complainants 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 Complainants have met their 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.

6.4 Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:

1) that the domain names registered by the Respondent are identical or confusingly similar to trademarks or service marks in which the Complainants have rights; and,

2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,

3) that the domain names have been registered and are being used in bad faith.

6.5 The fact that Respondent has attached additional words to the trademarks that are descriptive of the names under which two of the Complainants transact business does not alter the fact that the domain names at issue are confusingly similar to trademarks in which the Complainants have rights. A.P. Møller v. Web Society, ICANN Case No. D2000-0135. Accordingly, the Panel finds that the domain names at issue are confusingly similar to trademarks in which Complainants have rights.

6.6 Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the domain names at issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue.

6.7 Complainants have alleged and produced evidence in support of the allegation that Respondent has offered to sell to Complainant Gene Klein four of the domain names at issue for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain names. This constitutes bad faith registration and use under Paragraph 4(b)(i) of the Policy. World Wrestling Federation v. Bosman, D1999-0001.

6.8 In addition, following contact by Complainantsí counsel, Respondent proceeded to register the offending portions of the four domain names in the remaining generic Top Level Domains (gTLDs) in which the names had not yet been registered. This is an attempt to prevent the owners of the trademarks from reflecting the marks in corresponding domain names, and the practice here with 14 domain names evidences a pattern of such conduct. This constitutes bad faith registration and use under paragraph 4(b)(ii) of the Policy. ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, ICANN Case No. D2000-0034.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the trademarks in which the Complainants have rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <genesimmonsco.com>, <genesimmonsco.net>, <genesimmonsco.org>, <genesimmonscompany.com>, <genesimmonscompany.net>, and <genesimmonscompany.org> be transferred to the Complainant Gene Klein, and that the domain names <kisscatalog.com>, <kisscatalog.net>, <kisscatalog.org>, <kisscatalogltd.com>, <kisscatalogltd.net>, <kisscatalogltd.org>, <kissarmydepot.net>, and <kissarmydepot.org> be transferred to Complainant Kiss Catalog, Ltd.

 


 

M. Scott Donahey
Sole Panelist

Dated: April 16, 2001