WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kimmelrama, Inc., Lotzi, Inc., Hachacha, Inc. v. 1315 East B, Brett Warren Case No. D2009-0556 1. The Parties
The Complainants are Kimmelrama, Inc., Lotzi, Inc., Hachacha, Inc. of Los Angeles, California, United States of America, represented by Kilpatrick Stockton, LLP, United States.
The Respondent is 1315 East B, Brett Warren of McCook, Nebraska, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2009. On April 28, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 29, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on June 4, 2009. 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. 4. Factual Background
The Complainants are the joint owners of United States trademark registrations for the marks JACKHOLE INDUSTRIES and JACKHOLE, each issued by the United States Patent and Trademark Office on March 2, 2004 (U.S. Reg. No. 2,818,803), for use with entertainment services. The Complainants use the marks in connection with a production company known as Jackhole Industries, formed in 1999 by writer Daniel Kellison, and performers, producers and writers Jimmy Kimmel and Adam Carolla.1 Jackhole Industries has been involved in the production of a number of television shows, including, among others, Jimmy Kimmel Live, The Man Show, and Crank Yankers.
The Complainants are the current owners of the domain name and operate a website at that address. In 1999, Jimmy Kimmel, one of the Complainant's owners, initially registered the disputed domain name, ; however, the Respondent acquired the disputed domain name after it was allowed to lapse in or about 2007. Since acquiring the disputed domain name, the Respondent has made no active use of it. 5. Parties' Contentions A. Complainants
The Complainants maintain that the disputed domain name is identical and confusingly similar to the Complainants' JACKHOLE INDUSTRIES and JACKHOLE marks, in which the Complainants assert rights through federal registration and through continuous and exclusive use of the marks in commerce since 1999 in connection with the creation and production of a number of popular and successful television shows.
According to the Complainants, the Respondent lacks rights or legitimate interests in the disputed domain name because it has not been authorized by Complainants' to use Complainants' marks, has not been commonly known by the disputed domain name, and has made no active use of the domain name for more than two years.
The Complainants further assert that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainants, in view of the circumstances under which the Respondent appropriated the disputed domain name, which incorporates the Complainants' marks in their entirety, there can be no doubt that the Respondent was aware of the Complainants' rights in the JACKHOLE INDUSTRIES mark and that the Respondent's intent was to capitalize on the goodwill in the mark. The Complainant's assert that the Respondent's passive holding of the disputed domain name for more than two years further shows that the Respondent is acting in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the domain name is identical to the Complainants' JACKHOLE INDUSTRIES mark and confusingly similar to the Complainants' JACKHOLE mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. There is no question that such is the case here.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainants have not authorized the Respondent to use the Complainant's marks, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects the Respondent's registration of a domain name that incorporates each of the Complainant's marks in its entirety and is identical to the Complainants' JACKHOLE INDUSTRIES mark, followed by the passive holding of the domain name for more than two years.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Further there is no evidence in the record of the any use of the disputed domain name by the Respondent, or of demonstrable preparations by the Respondent to make any use, either commercial or noncommercial, of the disputed domain name. As a result, the Panel finds no basis in the record upon which the Respondent could assert rights or legitimate interests in the disputed domain name under the safe harbor provisions of paragraph 4(c) of the Policy. The Complainants' prima facie showing under paragraph 4(a)(ii) of the Policy thus stands unrebutted.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
It is a reasonable inference from the record that the Respondent knew of and had in mind the Complainant's marks when registering the disputed domain name. The Complainants' marks are arbitrary and distinctive, and the record reflects the marks to be strongly associated in the public mind with the Complainant's production company and its founding members.
The Respondent's registration of a domain name incorporating the Complainant's marks with knowledge of the Complainant's rights in the mark is here evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. Further, the Respondent's passive holding of the disputed domain name for more than two years, examined in light of the overall circumstances of this case, supports the conclusion that the Respondent is acting in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Accordingly, and absent any explanation from the Respondent, the Panel finds that the Respondent more likely than not registered the disputed domain name in bad faith in order to exploit the Complainant's trademark rights, and that the Respondent's passive holding of the disputed domain name since its registration indicates that the Respondent is acting in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
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 be transferred to the Complainants.
William R. Towns
Sole Panelist
Dated: June 18, 2009
1 Each of the Complainants is owned by one of these three founders of Jackhole Industries.
2 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
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