The Complainant is Alfwear Inc., of Murray, Utah, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, of United States of America.
The Respondent is Registrant : Privacy Admin / Registrant : Gregory, Ricks, Motherboards.com, of College Station, Texas, United States of America.
The disputed domain name <kuhl.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2008. On October 7, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 7, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 17, 2008.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 18, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is the owner of registrations for the trademark KÜHL in the United States and several foreign countries, as evidenced by Complainant's submission of copies of certificates of registration and/or computer database printouts from the relevant trademark registration offices. As a non-exhaustive listing: Complainant has registered KÜHL on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1990375, dated July 30, 1996, in International Classes (ICs) 25 and 32, covering, inter alia, “rugged outdoor clothing” (claiming first use of February 1, 1994, and first use in commerce of August 17, 1994); Complainant has registered KÜHL at the Canadian Intellectual Property Office, registration number TMA663162, dated April 24, 2006, and registration number TMA569334, dated May 24, 2002, and; Complainant has registered the KÜHL mark in Korea and Japan. (Complaint, Annexes 5 & 6)
Complainant has since 1994 used the KÜHL trademark in connection with the promotion and sale of outdoor clothing (notarized Declaration of Kevin Boyle, co-founder and president of Complainant) (Complaint, Annex 4). Complainant has sales of approximately $10 million per year. Complainant operates commercial Internet websites at “www.kuhl-usa.com” and “www.kuhlclothing.com” where, inter alia, it offers clothing for online sale and purchase. Complainant also distributes its clothing to various third-party retail outlets.
When the Complaint was initially filed October 6, 2008, the registration information regarding the disputed domain name (from a Moniker.com WHOIS database printout submitted by Complainant) referred to a privacy service and registrant number. The registrar's verification report of October 7, 2008, indicated that the database had been updated on October 7, 2008, reflecting a new registrant number and the name of an individual registrant, Gregory, Ricks. Because of the timing of this change in the registrant data, and in the absence of an explanation from Respondent, the Panel does not consider the real party in interest Respondent to have changed as a consequence of the update. For the sake of completeness and to assure that any order to transfer covers the intended Respondent, the Panel identifies the initial registrant information, “Registrant : Privacy Admin”, and the updated registrant information, “Registrant : Gregory, Ricks”, as the Respondent in this proceeding. Complainant submitted an amendment to its Complaint to reflect the aforesaid change to the registration information. Further references herein to Respondent include “Registrant : Privacy Admin” and “Registrant : Gregory, Ricks”. According to the registrar's verification report, the initial record of registration for the disputed domain name was created on March 21, 1996.
The disputed domain name has been used to direct Internet users to a “link farm” webpage headed “Kuhl.com” with “find something interesting” in smaller letters underneath. There are links to “Kuhl clothing”, and there are also links to Skiing Clothes, Mountaineering Boots, Hiking Clothing, Hiking Pants, Rock Climbing, Merino Wool Clothing and Athletic Pants. Clicking through on those links redirected Internet users to outdoor clothing products (and suppliers) directly competing with Complainant's products. (Complaint, including Annex 7)
According to information furnished by Complainant, Gregory Ricks has been the respondent in at least four previous administrative proceedings under the Policy, and transfer of the disputed domain name(s) was ordered in each of those proceedings.1
The Registration Agreement in effect between Respondent and Moniker Online Services, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant asserts rights in the trademark KÜHL based on use in commerce since 1994 in the United States (and in foreign countries), and as evidenced by various trademark registrations.
Complainant contends that the disputed domain name is identical or confusingly similar to its trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that it has not authorized Respondent to use its trademark in a domain name, that Respondent was not commonly known by the disputed domain name, and that Respondent's use of the disputed domain name to redirect Internet users to competing goods (and suppliers) does not constitute legitimate noncommercial or fair use of the disputed domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith by using it for commercial gain to confuse Internet users regarding Complainant's role as source, sponsor, endorser or affiliate of Respondent's website. Complainant further contends that Respondent has engaged in a pattern of registering the marks of third parties as domain names so as to prevent the trademark owners from registering those domain names.
The Respondent did not reply to the Complainant's contentions.
The Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to Respondent by email and express courier to the address provided in its record of registration. The express courier tracking record indicates that the documents transmitted by the Center were successfully delivered.
The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the owner of trademark registrations in the United States of America and other countries for the term KÜHL, and has used that term in connection with advertising and selling outdoor clothing products in commerce (see Factual Background, supra). The Panel determines that Complainant has rights in the trademark KÜHL.
In its application for trademark registration at the USPTO, Complainant claimed that it commenced use of the KÜHL mark on February 1, 1994. In U.S. law, the mere assertion of date of first use in a trademark application does not create an evidentiary presumption of first use.2 However, Complainant has submitted substantial unrebutted evidence in this proceeding to substantiate its claim of first use in 1994. That unrebutted evidence is sufficient to establish common law rights in the trademark dating back to 1994.
The disputed domain name, <kuhl.com>, directly incorporates Complainant's KÜHL trademark, eliminating the umlaut over the letter “u”, and adding the generic top level domain (gTLD) identifier “.com”. Based primarily on the nearly identical visual impressions, the Panel determines that the disputed domain name is confusingly similar to Complainant's trademark. Because the disputed domain name is confusingly similar to the trademark, the Panel need not further decide whether it is identical to the trademark for purposes of the Policy.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its KÜHL trademark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent is using the disputed domain name and Complainant's trademark to direct Internet users to links to products (and suppliers) directly competitive with those of Complainant. Respondent is acting solely as a conduit to third party offers of products, and is presumably receiving some form of compensation for click-throughs to such third party offers. Respondent is taking advantage of the goodwill associated with Complainant' s mark to offer products of third parties, including direct competitors of Complainant. This does not constitute a bona fide offering of services within the meaning of Paragraph 4(c)(i) of the Policy. See, e.g., MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, and Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537.
Respondent is not making fair use of Complainant's trademark. Respondent is using the domain name in a way that misleads Internet users for commercial gain.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “[respondent has] 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 [the respondent has] engaged in a pattern of such conduct”; or “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent's] website or location or of a product or service on your website or location” (id., paragraph 4(b)(ii) and (iv)).
The initial record of registration of the disputed domain name was created on March 21, 1996. There is insufficient evidence in this proceeding for a determination whether Respondent was the initial registrant in 1996 of the disputed domain name. Ordinarily, should rights in a trademark arise after the registration of a disputed domain name, a finding of bad faith registration is effectively precluded because the registrant could not be taking unfair advantage of trademark rights that the complainant does not possess. Although the USPTO registered Complainant's trademark after the record of registration was initially created, the Panel has determined that Complainant acquired common law trademark rights in 1994. Therefore, the 1996 initial registration of the disputed domain name does not preclude a finding of bad faith because Complainant's trademark rights arose earlier than 1996.
Respondent has used the disputed domain name, which is confusingly similar to Complainant's trademark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent's website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent's website. While Respondent's website is being addressed by a domain name confusingly similar to Complainant's trademark, the content on Respondent's website links to offers of goods directly competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competition. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent also appears to have engaged in a pattern of registering domain names incorporating the trademarks of third parties to prevent their registration of those marks in domain names. Respondent has also acted in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <kuhl.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: December 2, 2008
1 As referred to by Complainant: BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882 (transfer of domain name <bme.com>); Cedar Trade Associates, Inc. v. Gregg Ricks, NAF Case No. 93633 (transfer of domain name <buypc.com>); Abt Electronics, Inc. v. Gregory Ricks, NAF Case No. 904239 (transfer of domain name <abt.com>); and Lexington Rubber Group, Inc. v. Gregory Ricks, NAF Case No. 1047280 (transfer of domain name <lexingtonmedical.com>).
2 The dates of first use and first use in commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy notes: “The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant.” [footnote omitted] 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.) McCarthy also notes: “In inter partes proceedings, a trademark registration resulting from a use-based application is proof of use only as of its filing date, not of the date of first use alleged in the application.” [footnote omitted] (Id.)