WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kenneth Terrell D/B/A K-9 University v. Brandy Oliver
Case No. D2002-0768
1. The Parties
The Complainant in this administrative proceeding is Kenneth Terrell, DBA K-9 University, having a principal place of business in Massachusetts, United States of America.
The Respondent in this administrative proceeding is Brandy Oliver, d/b/a K9 University, of Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <k9u.com>, which is registered with Network Solutions, Inc., in Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on August 15, 2002, and in hard copy on August 19, 2002.
On August 22, 2002, the Center determined that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "Supplemental Rules").
A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was transmitted to the Respondent on August 23, 2002. At that time, the Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for the Response. The Response was timely received by the Center on September 11, 2002, by email.
Both Complainant and, in response, Respondent, have submitted supplemental filings with the Center. After reviewing Complainant's filing, the Panel concludes that there is no new information provided that could not have been anticipated at the time of filing the Complaint and, therefore, elects not to admit or consider either supplemental filing.
4. Factual Background
Complainant operates a business for obedience and behavioral training for dogs under the name K-9 University. Complainant asserts that he started this business in October 1993 and that he has been using the mark K-9 UNIVERSITY since the inception of his business.
In October 2000 and May 2001, Complainant obtained ownership of two Federal Trademark Registrations for K-9 UNIVERSITY® and Logo (Regs. 75806209 and 2473304, respectively). Complainant has registered the domain names <k-9university.com> and <k9university.com> on July 18, 2001 and November 20, 2000.
On January 6, 1998, Respondent obtained the registration for the domain name <k9u.com>.
Complainantís attorney may have had one or more telephone conversations with Respondent and requested that the Respondent transfer the inactive domain to Complainant. Complainantís attorney sent a letter dated April 12, 2002, to Respondent.
Respondent has not complied with Complainantís request to cease and desist.
5. Partiesí Contentions
Complainant asserts that he has operated a business providing dog obedience and behavior training since 1993, and that the abbreviation "K9U" is shorthand for his trade name and registered trademark, K-9 University.
Complainant asserts that Respondent was not using the domain name <k9u.com> until after Complainantís attorney contacted her to request transfer of the domain name. Complainant alleges that Respondent renewed the subject domainís registration in order to prevent Complainant from registering and using same.
Respondent provides a website for online classrooms and information on dog-related subjects. Currently there are some 20 classrooms, averaging 130 people registered in the class.
Respondent asserts that she had no knowledge of Complainant's business at the time of registration of <k9u.com> and points out that Complainant has offered no evidence that he was operating a business under that name at that time or before.
Respondent has furnished an affidavit from another dog obedience school owner (Courteous Canine) attesting to discussing plans for a dog obedience school to be established under the name "K9U" in 1998 and 1999, and a copy of a logo for K9U.
Respondent acknowledges receiving about 3 telephone calls after registration of <k9u.com> and that one or more of the calls could have been from Complainant's attorney. However, Respondent asserts that each caller was told that the domain name was not then active but that she planned to activate it soon in connection with the existing web site, "doggiedoor.com". She denies telling anyone, as alleged by Complainant, that she would let the registration for <k9u.com> expire.
Respondent has provided evidence showing other users of the name "K9U", including a website at <k9u.net> and "Canine University of Ohio" which maintains a website at <ohk9u.com>.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist 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."
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.
B. Application of Paragraph 4(a) to the Facts
I. Identical or Confusingly Similar to Trademark or Service Mark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has established its trademark rights by its registration of K-9 UNIVERSITY and logo. The trademark is not identical to the domain name <k9u.com>, and the Panel is not convinced by Complainant's showing of alleged confusing similarity, which rests on the assumption that that K-9 UNIVERSITY will automatically be associated with "K9U" because schools such as Boston University have become known as "BU". Complaint offers no proof to support the assumption, and the Panel finds no justification for making it without supporting evidence. In light of the findings below regarding legitimate interest and bad faith registration and use, however, there is no need to make any finding on this issue.
II. Respondentís Rights and Legitimate Interests in the Domain Name
Under Paragraph 4(a) of the Policy, Complainant must prove that the Respondent has no legitimate interest in the domain name. Here, Complainant, who has the burden of proof, argues that his attorney contacted Respondent and only thereafter did Respondent make any use of the domain name. Complaint offers no proof, however, as to when Respondent first began use of the <k9u.com> domain name as a web site or the nature of that use.
Respondent asserts that her business has become commonly known as "K9U" and that she has a legitimate interest in the domain name and has had plans for that legitimate use since registering the name in 1998. As noted, she has supplied an affidavit from a colleague attesting to discussions in 1998 and 1999, with Respondent and to seeing a K9U logo at about that same time.
Given the affidavit and the absence of any proof on the issue from Complaint, the Panel finds that Respondent has demonstrated that before she received any notice regarding Complainant's asserted rights to the K9U trademark, she had used or was making preparations to use the <k9u.com> domain name in connection with a bona fide offering of services, namely on line information and classes of interest to dog owners.
III. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must show that the domain name both has been registered and is being used in bad faith.
As explained above, Complainant has offered no evidence suggesting that Respondent's initial registration of <k9u.com> was made for anything other than a legitimate purpose. Further, it is undisputed that Complainant did not file its applications for trademark registrations until later.
As the Panel has found that Respondent has demonstrated a legitimate interest to the domain name, it therefore follows that Complainant cannot establish bad faith registration and use by the Respondent.
C. Reverse Domain Name Hijacking
Respondent requests a finding by the Panel that the Complaint was brought in an attempt at Reverse Domain Name Hijacking. Such a finding would require the Panel to determine that the Complaint was brought in bad faith. The Panel determines that there is an insufficient basis for such a finding. Respondent concedes that the Complaint was not brought primarily to harass and rests her argument on what was allegedly said (or not said) in a telephone conversation with Complainant's counsel, the content of which is in dispute. The Panel declines to find Reverse Domain Name Hijacking.
The Panel finds that Complainant has not shown the requirements of paragraph 4(a) of the Policy. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel declines to direct the Registrar to transfer the disputed domain name to the Complainant.
Roderick M. Thompson
Dated: October 4, 2002