WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kryptonite Corporation v. Rudl-Intl
Case No. DBIZ2002-00158
1. The Parties
Complainant is Kryptonite Corporation, a Massachusetts corporation, with its principal place of business at 320 Turnpike Street, Canton, Massachusetts, United States of America.
Respondent is Rudl-Intl, a sole-proprietorship existing under the laws of Ontario, Canada, with its principal place of business at 327 Mountbatten Ave., Ottawa, Ontario, Canada.
2. The Domain Name and Registrar
The Domain Name at issue is <kryptonite.biz>.
The registrar is Namescout Corporation. The registrar's address is 43 Anriga Drive, Nepean, Ontario, Canada K2E 7Y8.
3. Procedural History
This administrative proceeding has been commenced pursuant to the Start-Up Trademark Opposition Policy (the "STOP") for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules"), and the WIPO Supplemental Rules for Start-Up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
The complaint was received by email on April 27, 2002, and in hardcopy on April 30, 2002.
The response was received on June 12, 2002.
The WIPO Arbitration and Mediation Center (the "Center") appointed Mark V. B. Partridge as sole panelist on July 23, 2002. In accordance with the STOP Rules, paragraph 7, the above panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background
The Complainant, Kryptonite Corporation, is the owner of the trademark and trade name "KRYPTONITE". For thirty years, the Complainant has been in the business of designing, manufacturing, marketing, advertising, selling and distributing security products and accessories for two wheeled vehicles under the mark and trade name. Complainant was incorporated in 1973 as KBL Corporation, d/b/a Kryptonite Bike Lock Corporation and changed its corporate name to Kryptonite Corporation on April 24, 1985. Complainant has used the trademark and trade name continuously since May 1972, in the United States, and since 1976, in Canada.
Complainant owns sixteen United States Trademark Registrations and applications, and six Canadian Trademark and Registration Applications for the mark "KRYPTONITE". Including the United States and Canada, the Complainant owns registered trademarks for "KRYPTONITE" in over fifty countries and the European Union. The marks cover such things as locking mechanisms, bicycle parts, computer security devices, metal locks and security cable, bicycle helmets, lights, and reflectors, electronic locks and safety deposit boxes. Complainantís products are sold in nearly 20,000 retail outlets in the United States and throughout the world. Additionally, Complainant has received a great amount of media attention as well as numerous national and international awards for its products. In the past ten years, consumers have purchased over $375,000,000 of security products bearing the "KRYPTONITE" mark and name. Since 1991, Complainant has spent approximately one million dollars a year on marketing and advertising.
Respondent, Rudl-Intl, a sole proprietorship, registered the Domain Name <kryptonite.biz> with Namescout.com on March 27, 2002. Respondent claims it has been working for approximately two years to establish a marketing company, which it intends to call "Kryptonite Marketing."
There is no evidence of any communication between the parties.
5. Partiesí Contentions
Complainant asserts that the Respondentís Domain Name <kryptonite.biz> is identical to Complainantís "KRYPTONITE" mark and name. Complainant asserts that Respondent has no legitimate interests because the Domain Name does not comprise the Respondentís legal name or a name commonly used to identify Respondent, because Respondent has not used it in connection with a bona fide offering of goods and services, and because Respondent has not made a bona fide non-commercial or fair use of the Domain Name. Complainant also asserts that Respondent has registered and used the Domain Name in bad faith in order to prevent Complainant from reflecting its mark in a corresponding Domain Name.
Respondent asserts that they have a legitimate interest in the Domain Name because they have been developing a marketing company called "Kryptonite Marketing" for the past two years. Respondent further asserts that they have not registered and used the Domain Name in bad faith because the .BIZ extension had only been operational for a short time, and also because they received notification of the complaint only 17 days after their registration of the Domain Name was completed.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the STOP, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy ("UDRP") and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
A. Identical to a Trademark or Service mark
The Domain Name <kryptonite.biz> is identical to a mark in which the Complainant has rights. Complainant has a number of federal registrations for the mark "Kryptonite", and Respondentís Domain Name incorporates the mark in its entirety, without any changes. Complainant has therefore met the requirements of paragraph 4(a)(1) of the STOP.
B. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent has no legitimate rights or interests in respect to the Domain Name. Respondent is not engaged in any business under the KRYPTONITE name or mark, does not use the Domain Name and does not own any relevant trademark registrations.
In its response, Respondent contends that the Domain Name was registered with the intent of creating a web address corresponding to a marketing company that is going to be known as "Kryptonite Marketing". Respondent claims that it has been working on establishing this company for the past two years. The Panel issued a Procedural Order requesting further documentation to support the allegations of Respondent, including the following:
1. The specific nature of Respondentís "marketing" business;
2. Respondentís efforts to establish a marketing company called "Kryptonite Marketing" during the past two years;
3. The notice of a commitment allegedly received from an interested party prior to notification of this challenge;
4. An agreement reached between Leading Edge Marketing and Rudl International for the launch of a newly restructured company using the Kryptonite name;
5. The sale of Respondentís business on July 31, 2002.
Although Respondent submitted some documentation, the submissions failed to demonstrate any legitimate right or interest. Neither the email regarding the sale of <attractwomennow.com> nor the business certificate for a company called "Bulletproof Marketing" reference the word "Kryptonite" anywhere. Thus, I find that Respondent has failed to show any demonstrable plan to use the Domain Name for a bona fide purpose.
Respondent also offers evidence of third party use of the mark "Kryptonite". Respondent cites examples of other parties besides Complainant who also have rights in the mark, but that does not aid its cause. The fact that others could demonstrate a legitimate right or interest in the Domain Name does nothing to demonstrate that Respondent has such right or interests. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (October 12, 2000).
Lastly, Respondent also points to its registration of <kryptonite.ca> as evidence of its legitimate interests. This could be consistent with Respondentís plan to develop a company, but it could also be consistent with plans to trade off Complainantís fame and goodwill. As the site, which was registered in August 2001, is not in use, there is no way of determining Respondentís true intent. Nevertheless, the failure to make use of that domain name is consistent with Complainant's position that Respondent lacks and right or legitimate interest in the Domain Name.
Based on the record, this panel finds that Complainant has satisfied the requirement of paragraph 4(a)(2) of the STOP.
C. Bad Faith Registration and Use
Complainant has demonstrated that "KRYPTONITE" is a famous mark. Despite Respondentís claims otherwise, it knew or should have known of the mark as its trademark registrations are a matter of public record. In addition, based on the STOP IP Claim procedure Respondent must also have received actual notice of Complainantís mark before it registered the disputed domain name. See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (noting that the respondent was on notice of the complainantís rights when it registered the disputed domain name, because respondent received notice of complainantís IP Claim).
Under STOP paragraph 4(b)(ii), the Complainant may prove bad faith by showing the Respondent registered the domain name for the purpose of preventing Complainant from registering domain names reflecting its mark(s). There is no "pattern" of conduct requirement. Thus, Panels have found bad faith under STOP paragraph 4(b)(ii) when only one domain name was at issue. For example, in Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002), the Panel found bad faith given Respondentís knowledge of Complainantís prior rights and Respondentís lack of rights or interest in the mark.
Here, despite notice of Complainantís rights in <kryptonite.biz>, Respondent proceeded to register the domain name without demonstrating an interest in it and this suggests bad faith as the Respondent knew or should have known that there was a claim on file for "KRYPTONITE" and that its registration of the Domain Name would be challenged. Furthermore, Respondentís failure to submit evidence of a legitimate interest or demonstrable plan for good faith use, despite being given a second chance to do so, casts doubt on the credibility of its claim. This conduct raises a presumption of bad faith. See Interstellar Starship Services, Ltd. v. Epix, Inc., 184 F.3d 1107, 1111 (CA 9th 1999)(stating that the adoption of a designation with knowledge of its trademark status permits a presumption of intent to deceive). That presumption has not been rebutted here.
Accordingly, I find that Complainant has demonstrated bad faith registration on the part of the Respondent.
This Panel concludes that the Domain Name <kryptonite.biz> is identical to a trademark in which Complainant has rights, that Respondent lacks rights or legitimate interest in the Domain Name and that Respondent registered the Domain Name in bad faith. Therefore, the Panel finds in favor of Complainant and grants its request for the transfer of the <kryptonite.biz> Domain Name.
Mark V.B. Partridge
Dated: September 9, 2002