WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION K and K Promotions, Inc. v. Mark DeMarco o/a Old Emporium & Exposition Case No. D2010-0402 1. The Parties
The Complainant is K and K Promotions, Inc. of Las Vegas, Nevada, United States of America, represented by Weide & Miller, Ltd., United States of America.
The Respondent is Mark DeMarco o/a Old Emporium & Exposition of Niagara Falls, Ontario, Canada. 2. The Domain Names and Registrars
The disputed domain name is registered with DomainsAtCost Corporation. The disputed domain name is registered with NameScout Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2010. On March 16, 2010, the Center transmitted by email to DomainsAtCost Corporation and NameScout Corp. a request for registrar verification in connection with the disputed domain names. On March 18, 2010,
NameScout Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 24, 2010, DomainsAtCost Corporation 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 March 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2010. The Response was filed with the Center on April 9, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on April 19, 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. 4. Factual Background
The disputed domain name was registered on December 28, 2006. The disputed domain name was registered on May 4, 2009. 5. Parties' Contentions A. Complainant
The following is summarized from the Complaint:
The Complainant is the owner of registered trademarks for EVEL KNIEVEL and KNIEVEL. Those marks (another other related intellectual property) have become famous worldwide and are well recognized even to the present day due to the famous motorcycle jumps and daredevil feats performed by Evel Knievel from the late 1960s to the late 1970s which brought Evel Knievel worldwide notoriety and made the Evel Knievel name synonymous with daredevils. The Complainant owns rights in and uses its Evel Knievel marks on or in connection with a vast range or products and services. The Complainant also owns and operates a website at “” which contains, inter alia, a website featuring information, photographs, and multimedia about Evel Knievel, motorcycles, motorcycle stunts, stunt memorabilia and stunt performers.
The disputed domain names are confusingly similar to the Complainant's marks. The substantive portion (“EvelKnievel”) of each disputed domain name is identical to the Complainant's world famous and registered mark EVEL KNIEVEL. The disputed domain names also look and sound the same as the Complainant's marks, are used in the same channels of trade, and in relation to the same services.
The Respondent has no rights or legitimate interests in the disputed domain names. The disputed domain names were registered decades after the Complainant's marks achieved world-wide fame. There is no relationship between the Respondent and the Complainant. The disputed domain name reverts to a “parking” page. The domain name leads to a website displaying various memorabilia, most of which has no association or connection to Evel Knievel. Included in this “museum” are bicycles, guitars, puppets, and Nazi paraphernalia, much of which is not authentic.
The disputed domain names were registered and have been used in bad faith. Panels acting under the Policy have held that registration of a domain name incorporating another's famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith. Given the fame of the Complainant's marks long before the date when the Respondent registered the disputed domain names, combined with the confusing similarity between the disputed domain names and the Complainant's marks, as well as the fact that the Respondent has unauthorized photographs of the late Evel Knievel on one of his websites, it is clear that the Respondent had knowledge of the Complainant's trademark rights when he registered the infringing domain names. The Respondent has made no bona fide offering of goods or services. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites or other on-line location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or of a service promoted on the Respondent's websites. B. Respondent
The following is summarized from the Response:
The Complainant has, since the 1980s, contacted the Respondent, its lawyer, and various family members in efforts to purchase the Respondent's Evel Knievel Collection and, from 1997 onwards, the Respondent's Evel Knievel Museum located in Niagra Falls, Ontario, Canada.
The Respondent says that he has spoken at length with the Complainant, prior to and after his late father's funeral service in December 2007. The Respondent's Evel Knievel Museum Collection, including the disputed domain names, are for sale.
The Respondent has been contacted by “Christian Audegier and associates”, who informed the Respondent that they had purchased the Evel Knievel name and trademark for an apparel line soon to be made public. The Respondent has been contacted regarding the use of its Evel Knievel Museum for a film and photo shoot for that product. C. Possible Settlement
On April 9, 2010, the Center sent an email to the Respondent noting that it was unclear from the Respondent's email to the Center (which has been treated as the Response for the purpose of this dispute) whether that email was intended as an offer for settlement. The Center noted that the Complainant may wish to explore a suspension of the proceedings to explore a possible settlement, and was invited to submit such a request within three days. No response was received in relation to that communication and, as such, the proceedings continued. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
The Complainant provides copies of registration certificates, evidencing the registration of its EVEL KNIEVEL mark in Canada, and on the principal register of the USPTO. From this, it is clear that the Complainant has trademark rights for the purpose of paragraph 4(a)(i) of the Policy. The Panel also accepts, and the Respondent does not deny, the Complainant's contention that its marks are well-known.
Both of the disputed domain names similarly incorporate “evelknievel”. The only difference between the disputed domain names and the Complainant's mark is therefore the respective addition of the common terms “entertainment” and “museum”. It is common for disputes under the Policy to involve domain names which wholly incorporate a mark and add descriptive terms. See, for example: Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696; America Online, Inc. v. East Coast Exotics,WIPO Case No. D2001-0661; and the cases cited therein. It is also a common statement that the entire incorporation of a complainant's mark in a domain name may be sufficient to establish confusing similarity – See e.g. Dr. Ing., supra.
The addition of the respective terms “entertainment” and “museum” do not avoid confusing similarity in this case, which involves the addition of those terms to a well-known mark.
For these reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
The suggestion from the Respondent's correspondence is that it might claim rights or legitimate interests based on operating the “Evel Knievel Museum” in Niagra Falls Ontario. Beyond what can be seen at the disputed domain name(s), the Respondent provided no direct evidence of operating such a museum. However evidence to this effect is provided in the Complaint.
The Complainant provides (undated) screen shots of the Respondent's websites at and . The first website indicates that the website reverted at one stage to a “parking” website hosted by D. The second website relates to the Respondent's museum. Its homepage contains photographs of Evel Knievel and evidently relates to the Respondent's museum. It also contains photographs of the Respondent's museum, which show that the museum contains various displays of items unrelated to the Complainant, including bicycles, guitars, puppets, and Nazi paraphernalia. Of the memorabilia in the museum relating to Evel Knievel, the Complainant provides affidavit evidence that most of the claimed memorabilia is not authentic or is fraudulent. The Complainant does not explain why it believes this memorabilia not to be authentic.
Paragraph 4(c) of the Policy sets out illustrative examples of where rights or legitimate interests may be found. Two of those examples are not relevant in this case: There is no evidence that the Respondent is commonly known by the disputed domain names (paragraph 4(c)(ii)). The evidence does not indicate that the Respondent is making a noncommercial or fair use of the disputed domain names (paragraph 4(c)(iii). Paragraph 4(c)(i) however provides that rights or legitimate interests may be found where the Respondent, before notice of the dispute, used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
In this case, there is no evidence that the disputed domain name is being used at all. As evidenced in the Complaint, it merely reverted to a “parking” website, containing various links unrelated to the Complainant, such as “Satellite Television”, “Film School”, “Tv” and “Watch Tv”. There is no relationship between the content of this website and the Complainant. There is no evidence of demonstrable preparations to use this disputed domain name. It might be reasonable to think that the Respondent intended to use this disputed domain name in connection with its museum, as much as it does the second disputed domain name. But, if it did, there is no evidence that the Respondent made attempts to do so, and the Respondent does not make any such claim itself. The Panel also notes that, at the date of this decision, this disputed domain name does not revert to any active website. The Respondent's use of suggests to the Panel that the Respondent may well have been motivated to register for much the same reason. As such, the discussion below in relation to , in this Panel's view, also applies in relation to in so far as the Respondent may have registered the latter in anticipation of such future use.
As noted above, the Respondent has used in connection with a “museum” containing various items relating to the Complainant, as well as other items with no relationship to the Complainant. The evidence indicates that the Respondent is making a type of commercial service in relation to its museum. This is suggested by the limited statements made by the Respondent, including that it has put its museum up for sale, and that the Respondent has entertained approaches for (what the Panel has inferred is) a commercial photo shoot.
Does this give the Respondent a right or legitimate interest in that disputed domain name? That is, should it be determined that the Respondent has such rights or legitimate interests because the disputed domain name describes the nature of the Respondent's museum? On balance, the Panel considers that the Respondent does not have rights or legitimate interests in this respect, for the following reasons:
Firstly, the evidence indicates that the Respondent is essentially acting as what this Panel would find akin to an unauthorised reseller of the Complainant's reputation, to the extent that its museum relates to the Complainant. As such, the Panel considers that the principles developed in other cases relating to resellers can be applied in this case. Those principles are summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) which relevantly provides as follows: “A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner.” WIPO Overview, paragraph 2.3. In this case, while the Respondent may be actually making an offering (entry into its museum), the nature of its museum, and by extension its website, relate of a miscellany of matters not necessarily connected with the Complainant. There is also nothing on the Respondent's website that accurately discloses its relationship with the Complainant. In this way, there is an inference that the Respondent registered the disputed domain names to exploit the value of the Complainant's mark in relation to the Respondent's business as a whole.
While the Respondent's museum relates to Evel Knievel, it also relates to a grab bag of other items. But the Respondent did not register a domain name that relates to those other items. The evidence indicates that it only registered the Complainant's mark. The Panel infers that this was because that there was more value in registering that mark in a domain name because it might attract more consumers. This suggests that the Respondent registered the Complainant's mark to exploit its trademark value. Such a use cannot be a basis for a right or legitimate interest under the Policy.
Secondly, in a number of previous cases under the Policy dealing with the trademarks of museums, it has been found that the registration of a domain name incorporating that mark, in full knowledge of the complainant's mark, is sufficient for a finding that a respondent lacks rights or legitimate interests. See e.g. Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian,WIPO Case No. D2001-0879; The Trustees of the British Museum, The British Museum Company Limited v. Oakwood Services Inc,WIPO Case No. D2007-1145. There is no doubt in this case that the Respondent registered the disputed domain name knowing full well of the Complainant's reputation – the disputed domain name was clearly registered for the purpose of identifying Evel Knievel.
Thirdly, the Panel has also taken into account the Respondent's decision not to respond directly to the Complainant's claims against it on this ground. This decision reinforces a finding against the Respondent on this ground.
In making the observations above, the Panel notes that it gives little weight to the Complainant's arguments that the Respondent's museum contains material which is not authentic or which is fraudulent. The Complainant provides no evidence or explanation for this claim (other than an affidavit, which merely repeats the claim made in the Complaint). There is also little evidence about the extent to which the Respondent makes any claim that its exhibits are authentic. In any event, in this proceeding it is not necessary for the Panel to make a finding of the authenticity of material contained in the Respondent's museum.
For the reasons set out above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
There is no doubt that the Respondent was aware of the Complainant's mark before it registered the disputed domain names. For the reasons set out above in relation to rights or legitimate interests, it was clearly the Respondent's intention to register the disputed domain names to exploit the trademark value in the Complainant's EVEL KNIEVEL mark. The Respondent operates a commercial enterprise and its registration of the disputed domain names were done to further that enterprise. The Panel considers that these circumstances, on the evidence in this case, are sufficient for a finding that the Respondent registered and has used the disputed domain names in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
Despite it being argued by the Complainant, the Panel does not consider that the Respondent registered the disputed domain names for the purpose of “creating a likelihood of confusion”. The Respondent has not sought to exploit confusion with the Complainant's mark. The Respondent sought to exploit the clear and obvious connotation of that mark: the famous daredevil, Evel Knievel, in connection with its own partially related enterprise. 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 disputed domain names, and be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: May 19, 2010
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