Complainant is L. R. Oliver & Co., Inc. of Michigan, United States of America, represented by Raggio & Dinnin PC, United States of America.
Respondent is WASCO Manufacturing Inc., Monroe, Georgia, United States of America, represented pro se.
The disputed domain name <kutzall.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2010. On March 22, 2010, the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the disputed domain name. On March 25, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2010. The Response was filed with the Center on April 15, 2010.
The Center appointed Mark Partridge as the sole panelist in this matter on April 30, 2010. 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.
On May 27, 2010, the Panel issued Procedural Order No. 1 requesting: (i) whether Respondent received any correspondence or other contact by Complainant prior to the filing; (ii) whether at any time prior to the proceeding Complainant was aware of Respondent's registration of <kutzall.com> but did not object to the registration; (iii) whether Respondent knew that Complainant did not consent to Respondent's registration of use of the <kutzall.com> domain name prior to this proceeding; (iv) whether Respondent did not respond of otherwise ignored contact by Complainant prior to this proceeding; and (v) the dates of renewal for the <kutzall.com> domain name.
On June 4, 2010, Respondent submitted an email response to Procedural Order No. 1.
On June 11, 2010, Complainant submitted its reply to Procedural Order No. 1. Complainant's reply contained several assertions which were outside the scope the Procedural Order and as such will not be considered by the Panel.
Complainant is the owner of U.S. Trademark Registration Nos. 3,617,992 for KUTZALL and 1,245,750 for KARBIDE KUTZALL both with first use dates of July 28, 1980.
The Domain Name registration was initially created on September 27, 1996.
Complainant sent letters to Respondent on December 3, 2008, February 9, 2009 and December 30, 2009 demanding the transfer of the Domain Name.
Respondent did not respond to any of Complainant's letters.
Complainant makes the following contentions:
The Domain Name is identical to Complainant's trademark for KUTZALL and is confusingly similar to Complainant's trademark for KARBIDE KUTZALL. The Complainant became aware of the Respondent's registration of the Domain Name in late 2007.
Respondent has no rights or legitimate interests in the Domain Name because it obtained the domain name on September 27, 1996 and has not used the domain in any manner since that date. Respondent is in effect cybersquatting on the domain name to the detriment of Complainant and its legitimate trademark rights. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Respondent has never been commonly known by the Domain Name and has not acquired rights in the Domain Name. Respondent has no rights or legitimate interest in the Domain Name.
The Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant for valuable consideration is excess of Respondent's out of pocket costs.
Respondent ignored all correspondence and attempts of contact by Complainant to transfer the Domain Name without third party intervention.
Respondent has made no attempt to use the Domain Name in a commercial manner since 1996 which shows bad faith on the part of Respondent.
Respondent makes the following contentions:
Complainant registered the trademark KUTZALL for the sole purpose of pursuing this complaint.
Respondent has been a distributor of Karbide Kutzall products since 1995. Respondent has been featuring Karbide Kutzall products continuously since 1996. Respondent secured the Domain Name with the plan to establish an on-line storefront specifically for reselling the Complainant's products to the general public. Respondent had been waiting on implementing the website unit it could find a shopping cart program it could install and operate successfully.
There has never been any action by Respondent to misrepresent or tarnish the Karbide Kutzall trademark.
Respondent has offered Karbide Kutzall products on its website at “www.taxidermy.com”.
There was never any plan to sell the domain name to another party.
The Panel finds that Complainant possesses established legal rights in its KUTZALL trademark by reason of its long use and in its registered of KUTZALL and KARBIDE KUTZALL marks in the United States, both of which claim a first use date of 1980.
The Panel finds <kutzall.com> is identical to Complainant's KUTZALL trademark and confusingly similar to Complainant's KARBIDE KUTZALL trademark. The addition of the “.com” suffix does not impact on the analysis of whether a disputed domain name is identical or confusingly similar to the disputed domain name (see Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617). The Panel notes that while the KUTZALL registration is relatively recent its claimed first use date is July 28, 1980 well before Respondent registered the Domain Name.
Therefore, the Panel finds Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Complainant must make a prima facie showing that Respondent has no rights or legitimate interests in the <kutzall.com> Domain Name. Here, Complainant has met its prima facie burden by alleging that Respondent owns no trademark or trade name registrations for the disputed Domain Name; is not generally known by the Domain Name; and has not used the Domain Name in a manner that would provide Respondent with rights to the Domain Name.
Respondent asserts that since it was an authorized distributor1 and reseller of the Complainant's product it was entitled to use the Domain Name to sell the KUTZALL product. However, Respondent has not provided any evidence that Complaint permitted Respondent obtain the Domain Name for its own use. In fact, Respondent was aware of the objections of Complainant as evidenced by the demand letters sent by the Complainant. Some previous UDRP panels have held that in certain circumstances distributors are not entitled to obtain domains which incorporate the name of products they are selling. See, Herbalife International of America v. myherballife.com, WIPO Case No. D2002-0101 (“registration of the domain name was contrary to Respondent's obligations as an independent distributor of Complainant's products”).
In light of Complainant's persuasive evidence that Respondent was never authorized to own the Domain Name, the Panel finds Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant's evidence establishes that Respondent registered the disputed Domain Name knowing the Complainant's rights in the marks thereby preventing the use of the Domain Name by the Complainant. Panelists have held that the passive holding of a domain name may be an indicator of bad faith use. Respondent registered <kutzall.com> with actual and constructive knowledge of Complainant's rights in the KUTZALL mark and with the sole purpose of creating confusion with Complainant's mark for Respondent's illegitimate profit. Accordingly, the Panel finds Respondent registered and used the disputed Domain Name in bad faith.
Further, Respondent had 14 years to establish a website at the Domain Name but failed to do so. Its claim that is was waiting for “a shopping cart program that we could install and operate successfully” rings false particularly given that the Respondent's primary website <taxidermy.com> has operated an online store since 1999.2 Such passive holding of domain names has been held to be a non-legitimate use. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and PRL USA Holdings, Inc. v. Liming Wang, WIPO Case No. D2009-1040.
The Panel finds that Respondent registered and used the Domain Name with knowledge of Complainant's rights and objections to its use, that Complainant made objections upon learning of the Domain Name, that Respondent was not authorized to use Complainant's name and mark as a Domain Name, that the registration of the Domain Name disrupts Complainant's business, and that Respondent has unreasonably refused to comply with Complainant's legitimate demands for transfer of the Domain Name. The Panel further concludes that such circumstances constitute bad faith use and registration in violation 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 <kutzall.com> be transferred to the Complainant.
Dated: June 30, 2010
1 There is some contention whether or not Respondent is an authorized distributor of Complainant's products. Based on the evidence that Respondent has sold Complainant's products continuously since 1996 the Panel will assume the Respondent is at least a legitimate, if not officially authorized, distributor.
2 A review of the Wayback Machine shows on November 15, 1999 the website <taxidermy.com> had section for ordering. A review of the Wayback Machine results for the <kutzall.com> website has been parked since 1999.