WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kerusso Activewear, Inc. v. Private Registration / PrivacyP Case No. D2009-1086 1. The Parties
The Complainant is Kerusso Activewear, Inc., Fayetteville, Arkansas, United States of America, represented by Boyd D. Cox Attorney at Law, United States of America.
The Respondent is Private Registration, Private Registration, Panama City, Panamá; PrivacyP Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009. On August 13, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 14, 2009 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 August 19, 2009 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 August 24, 2009. 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” 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 August 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 18, 2009.
The Center appointed David Perkins as the sole panelist in this matter on September 25, 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 4.A. The Complainant
4.A.1 The Complainant has its principal place of business in Arkansas, United States of America. It is in the business of providing catalogue mail order, telephone and fax order, and computerized online shopping and ordering for a variety of goods.
4.A.2 The goods so supplied by the Complainant comprise men's, women's and children's clothing (namely, T-shirts, sweat shirts, shorts and caps); compact disc cases; calculators; mouse pads; lapel pins and jewellery; cups and mugs; carryall bags; messenger bags; book bags; backpacks; book marks; folders; bible covers; pencils and pens; personal diary journals and other products.
4.A.3 The Complainant has been carrying on this business for 22 years (since 1987) under the KERUSSO name and mark. The Complainant is the proprietor of the following United States registered trademarks:
Reg. No. Mark Class(es) Dates of Application / Registration
2,416,843
KERUSSO
25
Filed December 21, 19981
Registered January 2, 2001
2,829,385
KERUSSO
21
Filed October 28, 20022
Registered April 6, 2004
2,829,386
KERUSSO
18
Filed October 28, 20023
Registered April 6, 2004
2,829,387
KERUSSO
16
Filed October 28, 20024
Registered April 6, 2004
2,831,441
KERUSSO
14
Filed October 28, 20025
Registered April 13, 2004
2,831,442
KERUSSO (stylized)
16
Filed October 28, 20026
Registered April 13, 2004
4.A.4 The Complainant registered the domain name in 1998, which has resolved to the Complainant's website since registration. 4.B. The Respondent
In the absence of a Response, nothing is known of the Respondent except that the disputed domain name was registered on November 26, 2008 by PrivacyP and, according to the Registrar, is now registered in the name of Private Registration of Panama City. 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The Complainant is the proprietor of registered trademark KERUSSO in the United States for a variety of goods in Classes 14, 16, 18, 21 and 25. The Complainant's earliest date of first use in commerce in the United States of the KERUSSO trademark is January 1987.
5.A.2 The disputed domain name is identical to the Complainant's KERUSSO trademark but for changing the letter “E” to an “A”. Accordingly, the Complainant submits that the disputed domain name is confusingly similar to its KERUSSO trademark. Rights or Legitimate Interests
5.A.3 The Complainant says that the Respondent cannot demonstrate rights or legitimate interests in the disputed domain name by producing evidence of any of the circumstances set out in paragraph 4(c) the Policy.
5.A.4 Indeed, according to the Complainant, the Respondent is making unfair use of the disputed domain name for commercial gain to mislead / divert consumers looking for the Complainant's website to its own website which advertises third party websites of the Complainant's competitors. Registered and Used in bad Faith
5.A.5 The Complainant says that as at June 26, 2009 the disputed domain name was registered in the name of PrivacyP but had previously been registered in the name of Telecom Tech Corp. of Panama City. It has then been transferred again and is now registered in the name of Private Registration also of Panama City.
5.A.6 The original registrant, Telecom Tech Corp. of Panama, has been respondent in a number of complaints brought under the Policy, in all of which the respondent failed to file a response and the complainant succeeded. Those cases are:
1. F.D. Management, Inc v. Telecom Tech Corp,WIPO Case No. D2008-0235 which involved the disputed domain name .
2. Berlitz Investment Corporation v. Telecom Tech Corp,WIPO Case No. D2008-0267 which involved the disputed domain names and .
3. Axa S.A. v. Telecom Tech Corp,WIPO Case No. D2008-0764 where the disputed domain was .
4. Fundacion Santa Maria Ediciones SM v. Telecom Tech Corp,WIPO Case No. D2008-0961 where the disputed domain name was and the Complainant was the proprietor of registered trademarks for SM and E-ELE SM.
5. Lonely Planet Publications Pty Ltd v. Telecom Tech Corp,WIPO Case No. D2008-1016 where the disputed domain name was .
6. Microgaming Software Systems Limited v. Telecom Tech Corp.,WIPO Case No. D2008-0894 where the disputed domain name was .
5.A.7 The Complainant relies upon this as evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. 5.B. Respondent
As stated, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be relevant evidence of the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant has rights in the trademark KERUSSO which has been used in the United States since 1987 and which was first registered as a trademark in the United States in 2001.
6.6. The disputed domain name differs only in substitution of the letter “A” for “E”. It is visually and phonetically similar to the KERUSSO trademark and, thereby, confusingly similar to that trademark.
6.7 Accordingly, the Complaint satisfies paragraph 4(a)(i) of the Policy. Rights or Legitimate Interest
6.8 It is to be inferred from the Complaint that the Complainant has neither licensed the KERUSSO trademark to the Respondent nor otherwise authorised its use by the Respondent.
6.9 In the absence of a Response, the only evidence the Panel has is the use of the disputed domain name as described in paragraph 5.A.4 above. That is that the disputed domain name directs users to websites of the Complainant's competitors for which the Respondent is assumed to receive click through revenue. In the light of the Panel's finding of confusing similarity under paragraph 4(a)(i) of the Policy, such use of the disputed domain name is a commercial use which is designed to and which is likely to misleading divert consumers.
6.10 In the circumstances, there is no indication that the Respondent could demonstrate rights to or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy, or otherwise. Accordingly, the Complaint succeeds under paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.11 Although there is no supporting documentary evidence presented with the Complaint, the Complainant states that the disputed domain name was originally registered in the name of Telecom Tech Corp of Panama City. It was then transferred to PrivacyP and then transferred again to Private Registration, also having an address – through a box number – in Panama City.
6.12 If this is correct, and in the absence of a Response, it is fair to assume that the Complaint is accurate as to the identity of the original registrant of the disputed domain name, then there would appear to be a “pattern of conduct” evidencing the circumstances set out in paragraph 4(b)(ii) of the Policy.
6.13 In addition, on the undisputed facts relating to use of the disputed domain name (set out in paragraphs 5.A.4 and 6.9 above), there is also evidence of the circumstances set out in paragraph 4(b)(iv) of the Policy.
6.14 In the circumstances, the Complaint meets the twin 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 Complainant.
David Perkins
Sole Panelist
Dated: October 7, 2009
1 First used in commerce January 1, 1987
2 First used in commerce April 30, 2001
3 First used in commerce July 13, 2000
4 First used in commerce December 22, 1998
5 First used in commerce June 29, 1999
6 First used in commerce December 22, 1998
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