The Complainant is Office Kirkpatrick SA of La Hulpe, Belgium, represented by an internal representative.
The Respondent is Fred Kirkpatrick of Las Vegas, Nevada, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 3, 2011, the Center transmitted by email to Network Solutions, LLC (the “Registrar”) a request for registrar verification in connection with the Domain Name. On the same date, the Registrar 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”), 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 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2011. The Response was filed with the Center on May 23, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 8, 2011. 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
Founded in 1852, the Complainant is an intellectual property consultancy operating worldwide, either directly or through a network of partners. It has registered several trademarks, including OFFICE KIRKPATRICK in Benelux in 1987 (Nos. 0429841 and 0151714) and in the European Community in 1996 (No. 000006254) and KIRKPATRICK in Benelux in 2004 (No. 0755173) and 2005 (No. 766778).
The Domain Name was registered on October 12, 1995 in the name “Kirkpatrick” with an address in North Las Vegas. The Administrative Contact was “Fred Kirkpatrick” with an address in Stow, Ohio. Shortly before the Complaint was filed, the Domain Name resolved to an “Under Construction” web page provided by the Registrar which displayed sponsored listings of advertising links relating to online learning. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is identical or confusingly similar to its OFFICE KIRKPATRICK and KIRKPATRICK trademarks; that the Respondent has no rights or legitimate interest in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Respondent has never used the Domain Name personally and that the “pay-per-click” webpage, which misleads consumers expecting a site associated with the Complainant, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the registrant presumably receives compensation for each misdirected Internet user. Further, upon the return as undeliverable of a “cease and desist” letter, the Complainant engaged private investigators who reported that no one and no business named Kirkpatrick is currently at the North Las Vegas or Ohio address. The Complainant is of the opinion that the Respondent registered the Domain Name under the false name “Kirkpatrick” in order to justify a legitimate interest.
As to bad faith, the Complainant says the Respondent provided a false name and false contact details in an effort to make identification and communication impossible. According to the business database of the Nevada Secretary of State, there is no corporation or limited liability company bearing the name of “Kirkpatrick” and located at the North Las Vegas address. In addition, the Respondent failed to provide accurate telephone or fax numbers or even email address for the administrative contact, in violation of the domain name registration agreement.
The Complainant also asserts that the Respondent acquired the Domain Name for the sole purpose of disrupting the business of a competitor, and has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s registered trademark. The Complainant contends that the timing of the Respondent’s registration in conjunction with the sheer lack of contact information indicate that the Respondent registered the Domain Name for the purpose of “blocking” the Complainant from using the Domain Name and ensuring the Complainant’s inability to find a legally recognizable business entity against which to assert a claim. This is an improper motive for using the trademark of another in a registered domain name and is indicative of bad faith under paragraph 4(a)(i) of the Policy.
The Complainant says it is evident that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the registration to the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
Moreover, the Complainant stresses that the Respondent presumably receives referral fees from the advertisers. By incorporating the Complainant’s KIRKPATRICK mark within its confusingly similar Domain Name, the Respondent has created a likelihood of confusion as to the affiliation and endorsement of the Domain Name and corresponding website. B. Respondent
The Respondent denies the Complainant’s contentions, saying he acquired the Domain Name in 1996 because it was freely available and because Kirkpatrick is his surname and the name of his company, Kirkpatrick Enterprises Inc, which was incorporated in the State of Ohio in October, 1995, as a one-man operation with the Respondent as its president. The company conducted business on the Internet between 1996 and 2006, under domain names which included the Domain Name. On December 30, 2006, the company was dissolved, due inter alia to the Respondent’s 2005 divorce. The Domain Name is presently held by Network Solutions as “an automatically generated parked placeholder web page for a domain that is not yet attached to an active website”.
The Respondent says the Ohio address was his home for over 20 years and remains the home of his former wife. The North Las Vegas address was his home until June 2010.
The Respondent says he had never heard of the Complainant until May 2011, when he received notice from Network Solutions regarding the present proceedings.
The Respondent submits that this is a proper case for a finding of Reverse Domain Name Hijacking because, inter alia, his identity and location could have been readily ascertained from the present occupants of the two addresses visited by the Complainant’s investigators, and because the long delay in filing the Complaint gives rise to the inference that the Complainant knew it had a flawed claim. 6. Discussion and Findings
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name is clearly identical to the Complainant’s registered KIRKPATRICK trademark. Although that mark was registered after the Domain Name was registered, for the purpose of the Policy, paragraph 4(a)(i), it is sufficient that the Complainant has rights in a mark at the time of the filing of the Complaint. See Valve Corporation v. ValveNET, Inc., ValveNET. Inc., Charles Morrin,WIPO Case No. D2005-0038 and the cases there cited. The fact that the Domain Name pre-dated the Complainant’s mark may be relevant to the elements of legitimacy and bad faith, discussed below.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
The Respondent has shown (by way of a copy of his Nevada driving licence) that his surname is Kirkpatrick. Pursuant to the Policy, paragraph 4(c)(ii), this demonstrates that the Respondent has a legitimate interest in the Domain Name.
The Complainant has failed to establish this element of its case. Accordingly the Complaint must be dismissed. C. Registered and Used in Bad Faith
This element is considered in order to address the Respondent’s claim of Reverse Domain Name Hijacking, considered below.
Under the Policy, both registration in bad faith and use in bad faith must be established.
The Respondent has provided evidence that his former addresses were the North Las Vegas and Ohio addresses and that the Domain Name was used by his company, Kirkpatrick Enterprises Inc. The Articles of Dissolution of the company, provided by the Respondent, are unsigned and contain several typographical errors, so the Panel is not prepared to place reliance on them.
Nevertheless, given that the address provided at the time of registration of the Domain Name was genuine; that the Domain Name reflects the Respondent’s own name; and that the Domain Name was registered years before the Complainant registered its KIRKPATRICK trademark, the Panel is not disposed to find that the Respondent had the Complainant in mind when he registered the Domain Name and accordingly is not prepared to find that the Domain Name was registered in bad faith. It is unnecessary therefore to consider the question of use.
The Complainant has failed to establish this element of its case. D. Reverse Domain Name Hijacking
Rule 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224.
Here the Complainant’s investigations, so far as they have been disclosed in this proceeding, revealed no person or business enterprise named Kirkpatrick currently at the two addresses used by the Respondent in registering the Domain Name. The Panel is not prepared to infer that the investigators engaged by the Complainant reported that the Respondent had, indeed, lived at those addresses previously. The use of a “pay-per-click” parking page is capable of giving rise to a finding of bad faith in appropriate cases. The Complainant has not been shown to have been aware of the fatal flaw in its case, namely that the Respondent is a real person.
Accordingly the Panel declines to make a finding of Reverse Domain Name Hijacking. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Sole Panelist
Dated: June 15, 2011
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