WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kenneth Cole Productions, Inc. v. Dotcomnetorg
Case No. DBIZ2002-00140
The Complainants are (1) Kenneth Cole Productions, Inc., a corporation existing under the laws of the State of New York, with its principal place of business located at 603 West 50th Street, New York, NY 10019, United States of America; and (2) Kenneth Cole Productions (LIC), Inc., a corporation existing under the laws of the Commonwealth of the Bahamas, with its principal place of business located at The Deanery, Cumberland Street, P.O. Box SS-6229, Nassau, Bahamas, which is a wholly-owned subsidiary of K.C.P.L., Inc., which in turn is a wholly-owned subsidiary of Kenneth Cole Productions, Inc.
The Respondent (the registrant identified in the relevant WHOIS record) is Dotcomnetorg, with a place of business located at 212 Old Bluefield Road, Princeton, West Virginia 24740, United States of America. Respondent identifies itself as Donna Lawhorn, presumably doing business as Dotcomnetorg.
2. Domain Name and Registrar
The domain name at issue is <kennethcole.biz>. The Domain Name was registered with Dotster.com (the "Registrar") on March 27, 2002.
3. Procedural History
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on April 26, 2002, and in hardcopy on May 10, 2002. The Complaint was made pursuant to the Start-Up Trademark Opposition Policy for .BIZ ("STOP"), adopted by Neulevel and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and is in accordance with the Rules under the STOP (the "STOP Rules") and the WIPO Supplemental Rules for STOP (the "WIPO Supplemental STOP Rules").
On May 13, 2002, the Center transmitted a Notification of a STOP Complaint and Commencement of Administrative Proceedings to the Respondent. The Center received the Response on May 31, 2002, within the 20 day period provided under the STOP Rules. On June 10, 2002, after clearing for any potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.
On June 25, 2002, after completing its review of the record, the Panel issued the following Order seeking additional submissions from the parties pursuant to STOP Rule 12:
"The central element of the Response is the assertion that, in registering the domain name <kennethcole.biz> (the "Domain Name"), Respondent was acting on behalf of an individual named Kenneth Richard Cole (referred to herein as "K.R. Cole" solely to avoid any confusion with Complainant). Although Respondent has included a letter from Complainant to K.R. Cole dated May 7, 2002, there is no indication in the record that Complainant was aware of K.R. Cole or his alleged relationship to Respondent at the time it submitted its Complaint on April 26, 2002.
The Complaint does not discuss the effect of Respondentís claim on this proceeding. That is not surprising given that Complainant could not have anticipated this particular defense. Investissement Marius Saradar S.A.L. v. John Naffah, WIPO Case No. D2000-0853 (November 22, 2000). Accordingly, the Panel requests that Complainant file a supplemental submission, on or before July 10, 2002, to address the following issues:
1. How, if at all, do the allegations concerning K.R. Cole affect Complainantís assertion that Respondentís registration of the Domain Name violates the Policy?
2. What is the effect, if any, of the fact that the Domain Name was registered by Respondent rather than by K.R. Cole?
Given that Rule 5 contemplates that a respondent will have the right to respond to a complaint, and that Rule 10(b) directs the Panel to treat the parties with equality, the Panel concludes that it is appropriate to give Respondent a right to respond to the Complainantís supplemental submission. Pacific Fence & Wire Co. v. Pacific Fence, WIPO Case No. D2001-0237 (June 11, 2001). Respondent shall submit its sur-reply, if any on or before July 25, 2002.
Each party shall limit its supplemental submission to the specific topics discussed above, and shall deliver its submission to the Center via email no later than 11 p.m., Greenwich Mean Time, on the due date, with a copy by email to the other party. Exhibits, if any, not available in electronic form shall either be scanned and sent with the email or shall be faxed to the Center and the other party with hard copies to follow by courier."
The request for supplemental submissions required the Complainants to respond by July 10, 2002, and provided Respondent with the opportunity to respond to the supplemental submissions by July 25, 2002. Complainants timely filed the requested supplemental submission; Respondent elected not to submit any further materials.
4. Factual Background
Complainants own numerous trademarks in the United States and throughout the world, including the mark "Kenneth Cole." Complainant Kenneth Cole Productions (LIC) owns trademark registrations in the United States for the mark "Kenneth Cole" including U.S. Registration Nos. 1,372,672 (clothes); 1,455,871 (miscellaneous service mark); 1,558,017 (handbags); 2,170,135 (jewelry and watches); 1,968,821 (sunglasses and eyeglasses); 1,458,352 (leather goods); 2,179,237 (clothes). Complainant Kenneth Cole Productions, Inc. owns similar trademark registrations in Japan, Argentina, Australia, Austria, Brazil, Benelux, Canada, China, Denmark, France, Germany, Greece, Guatemala, Hong Kong, Hungary, Indonesia, Mexico, Peru, Portugal, South Korea, Spain, Switzerland, Taiwan, and Venezuela. Complainants conduct business on the Internet; their main site is located at "www.kennethcole.com".
According to its website at "www.Dotcomnetorg.com", Respondent is a "one-stop domain source." Respondent offers services to assist in the registration, sale and transfer of domain names, as well as to establish and trade links. On March 27, 2002, Respondent registered the domain name <kennethcole.biz>.
On April 27, 2002, one day after Complainants sent the Complaint to the Center, Respondent sent Complainants an e-mail stating that the domain name was registered on behalf of K.R. Cole, a client of Respondent. Complainants then sent K.R. Cole a letter dated May 7, 2002, stating that Complainants had commenced a STOP proceeding against Respondent and that Complainants believed that the registration of the disputed domain name on K.R. Coleís behalf violated Complainantsí intellectual property rights in the mark "Kenneth Cole."
According to a letter from K.R. Cole to the Panel dated May 30, 2002, K.R. Cole, on March 1, 2002, asked Zane Lawhorn of Respondent (the Respondentís authorized representative in this proceeding) to place a bid on the domain name <kennethcole.biz> on K.R. Coleís behalf. Respondent placed a bid of thirty dollars on the Domain Name, which was unopposed. In his letter, K.R. Cole states that he is a self-employed insurance salesman who lives in Princeton, West Virginia and that he has purchased several domain names that he planned to develop (though he states that he has not pursued that development since the ".com meltdown last year").
5. Partiesí Contentions
Complainantsí original Complaint (prepared before Complainants knew of the existence of K.R. Cole) alleged as follows:
(1) The domain name <kennethcole.biz> is identical to Complainantsí "Kenneth Cole" trademark.
(2) Respondent has no rights or legitimate interests in the allegedly infringing domain name because:
(a) Respondent has not used the domain name in connection with a bona fide offering of goods and services in that the domain name is currently inactive and that, even if the website was active, Respondent has no legitimate interest in the domain name as Complainants have never licensed or transferred to Respondent any right or interest in the trademark;
(b) Respondent is not and has never been commonly known by the name "Kenneth Cole", and Respondent has not acquired any trademark or service mark rights in these names.
(3) Respondent registered and is using the Domain Name in bad faith because:
(a) Respondent knew or could reasonably foresee that any use of the domain name would inevitably be associated with the Complainants, and any commercial use of the website would cause a likelihood of confusion with Complainantsí mark and is thus illegitimate;
(b) Respondentís registration of the domain name makes it impossible for Complainants to register in the <.biz> domain and is therefore disruptive of Complainantsí business; and
(c) Respondent, who advertises on its website at "www.dotcomnetorg.com" "Get a Great Domain Name at a Great Price" and provides a link on the site stating "Domain Names for Sale," registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainants or to a competitor of the Complainants.
In its Response, Respondent argued as follows:
(1) Respondent registered the domain name on behalf of its client, K.R. Cole.
(2) K.R. Cole has a legitimate right and a legitimate interest with respect to the domain name as an individual who has been commonly known by the name "Kenneth Cole."
(3) Complainants have shown no evidence of bad faith. In particular, Complainants have not shown evidence that K.R. Cole intends to sell, rent or otherwise transfer the domain name, or that K.R. Coleís registration was intended to disrupt Complainantsí business.
In response to the Panelís request for further submissions, Complainants allege as follows:
(1) Dotster.comís initial registration of the Domain Name violated the STOP. Dotster.com did not have a legitimate commercial interest in the Domain Name and registered the Domain Name for the primary purpose of selling it to the highest bidder.
(2) Dotster.comís transfer of the name to Respondent and Respondentís subsequent allegation that the transfer was on behalf of K.R. Cole cannot overcome the bad faith of the initial registration. Respondent cannot obtain any rights to the Domain Name that Dotster.com did not have.
(3) Even if K.R. Cole had purchased the Domain Name from Dotster.comís auction, his registration would have been in bad faith. If K.R. Cole were seeking to make a legitimate commercial use of the Domain Name, he would have registered a name that did not seek to trade on the good will of Complainantsí marks. Furthermore, K.R. Cole has no bona fide business or commercial purpose for registering the name. There is no registered business in West Virginia under the name "Kenneth Cole," and K.R. Cole has not shown any preparations to use the Domain Name for commercial purposes.
6. Discussion and Findings
Paragraph 4(a) of the STOP provides that, to justify the transfer of a domain name, a complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical to a trademark or service mark in which the complainant has rights;
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and;
(3) that the respondent has registered or has been using the domain name in bad faith.
A. The Domain Name is Identical to Complainantsí Trademarks
Respondent does not contest, and the Panel so finds, that the domain name <kennethcole.biz> is identical to Complainantsí marks.
B. Respondent Has a Legitimate Interest in the Domain Name
Complainants offer four arguments supporting their position that Respondent does not have a legitimate interest: (1) Respondent cannot claim a legitimate right to the domain name because Respondent obtained the domain name from a party that lacked a legitimate right to the domain name; (2) K.R. Cole could use a domain name other than <kennethcole.biz>; (3) K.R. Cole has not shown any indication that he intends to use the domain name for commercial purposes; and (4) K.R. Coleís registration is an attempt to capitalize on the good will associated with Complainantsí name. None of Complainantsí arguments are sufficient to prove that Respondent lacks a legitimate interest in this Domain Name.
Complainant does not fully explain its theory that Dotster.com (the Registrar) itself violated the STOP in its registration of this Domain Name and its subsequent transfer to the Respondent. Even if the Registrar were to be treated as a prior registrant of the Domain Name, and even if the Registrar had no legitimate interest (factual and legal issues which this Panel need not reach), the fact that Respondent may have obtained the Domain Name from a party that lacked a legitimate right to the Domain Name, without some showing that Respondent colluded with the prior registrant to violate Complainantsí rights, is irrelevant to the question of whether the current Respondent has a legitimate interest in the Domain Name. Otherwise, the purchaser of a domain name would bear the burden of proving that every prior owner of the domain name had a legitimate interest in the domain name. It also would require the Panel to assess the interests of parties that are not before it, which would be impractical and not consistent with the letter or spirit of the STOP.
Focusing then on the current registrant, Respondent has provided evidence that it registered the Domain Name on behalf of a client whose name is "Kenneth Cole." The STOP specifically provides that evidence that a party has been commonly known by a domain name is sufficient to demonstrate a legitimate interest in the domain name. STOP para. 4(c)(iii); see also G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537 (July 20, 2001) (Respondent A.R. Mani had a legitimate interest in the domain name <armani.com> because it was his personal name). Just as in the <armani.com> case, K.R. Coleís personal name is identical to the Domain Name, and thus K.R. Cole has a legitimate interest in the Domain Name.
The more difficult question is whether Respondent is entitled to a finding of a legitimate interest by virtue of its clientís interest. Assuming that Respondent was acting as K.R. Coleís agent, there is no basis in the STOP not to consider the legitimate interests and rights of the ultimate party in interest, here, K.R. Cole. Furthermore, despite the Panelís express request for additional submissions on this question, Complainants were unable to cite any precedent for the proposition that only the registrantís interests, and not its clientís, should be considered in these circumstances. Accordingly, and because Respondent has submitted documentary evidence that K.R. Cole actually exists and specifically retained Respondent to register this Domain Name, the Panel finds that Complainants have not proven that Respondent lacks a legitimate interest in the Domain Name. Cf. Investissement Marius Saradar S.A.L. (despite claim that respondent registered domain name <saradar.com> on behalf of an individual named Jim Saradar, panel found no legitimate interest because Complainant cast doubt on existence of a Jim Saradar and respondent offered to sell domain name to complainant without any mention of a Jim Saradar).
Complainantsí remaining arguments are easily disposed of. Their assertion that K.R. Cole could have chosen a different domain name is irrelevant. If K.R. Cole is indeed known as "Kenneth Cole" (another issue that may be ripe for discovery in any subsequent proceedings), then there is no reason that he must adopt a different domain name such as <kennethrcole.biz>. Similarly without merit is Complainantsí contention that K.R. Cole has not demonstrated a commercial use. That issue is not properly considered in the context of a STOP proceeding; rather, challenges premised on the failure to satisfy the commercial or business use requirement must be brought under the Restrictions Dispute Resolution Policy ("RDRP"). See RDRP para. 4(c)(3)(a) ("[u]sing or intending to use the domain name exclusively for personal, noncommercial purposes" does not constitute a bona fide business or commercial use).
A. Did Respondent Register or Use the Domain Name in Bad Faith?
In light of the above finding, it is unnecessary for the Panel to reach the question of bad faith registration or use.
Complainants have failed to establish that Respondent has no rights to or legitimate interest in the <kennethcole.biz> domain name. Accordingly, the Panel denies Complainantsí request that the domain name <kennethcole.biz> be transferred. This decision is without prejudice to any issues that may be raised in an RDRP proceeding or in a UDRP proceeding.
David H. Bernstein
Dated: August 12, 2002
1. There is no evidence in the record to support a finding that Respondent was not acting as a bona fide agent for K.R. Cole. That issue, of course, may be a ripe one for discovery in the event the parties pursue this matter in future proceedings.
2. On the use of precedent in UDRP, STOP and related proceedings, see Koninklijke Philips Electronics N.V. v. Relson Ltd., WIPO Case No. DWS2002-0001 (June 14, 2002).