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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers
Case No. D2003-0780
1. The Parties
The Complainant is DK Bellevue, Inc. d/b/a Digital Kitchen, Bellevue, Washington State, of United States of America, represented by Christensen O'Connor Johnson Kindness, PLLC, United States of America.
The Respondent is Sam Landers, Chicago, Illinois, of United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
2. The Domain Name and Registrar
The disputed domain name <digitalkitchen.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2003. On October 6, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 6, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant (not, as Respondent claims, his company Design Kitchen, Inc.) and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 9, 2003. 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"), 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 October 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was Sunday November 2, 2003. Having received no Response by that deadline, WIPO issued a Notice of Default on November 3, 2003, at 8:10 AM. Respondent thereafter transmitted its Response by e-mail; the e-mail bore a time stamp of 10:59 PM November 3, 2003, one day after the Sunday, November 2, 2003 deadline. Respondent also submitted a letter asserting that its belief had been that if a deadline fell on a Sunday it was to be automatically postponed to the next business day. WIPO responded that nothing in WIPO Policy, Rules, or Supplemental Rules suggests that this is its customary practice, but that the issue of whether to accept the late-filed Response would be left to the Panel.
On November 5, 2003, Complainant filed a supplemental reply noting that Respondent’s Answer was untimely, and challenging several factual assertions and arguments contained therein.
The Center appointed David H. Bernstein as the sole panelist in this matter on November 10, 2003. 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
Since 1995, Complainant has been in the business of creating digital images for clients in advertising and entertainment, in media including television, video, audio, graphic art and photography. Complainant filed its application to register "DIGITAL KITCHEN" as a service mark on June 20, 1995; the mark was registered on August 11, 1998.
Since 1992, Respondent has been the principal of a graphic design company that has increasingly ventured into the area of brand development, operating in both print and web media. On April 26, 1996, Respondent registered the disputed domain name <digitalkitchen.com> ("the domain name") with Register.com.
On April 2, 2001, Complainant informed Respondent of Complainant’s rights in the "DIGITAL KITCHEN" mark and requested that Respondent cease all use of the mark and transfer the domain name to Complainant. On April 10, 2001, Respondent responded that he was not using and had never used "DIGITAL KITCHEN" as a mark, had not registered <digitalkitchen.com> in bad faith, and had no interest in selling the domain name to Complainant. The domain name was not then in use, but was linked to a "coming soon" web page. Complainant did not pursue the issue at that time but continued to monitor Respondent’s use of the domain name.
In February 2003, Respondent renewed the domain name registration. During January and February, 2003, Complainant discovered that those entering the domain name were being diverted to Respondent’s "www.designkitchen.com" site. Complainant sent a letter to Respondent on February 25, 2003, reiterating its demand that Respondent relinquish the domain name. Respondent again refused to transfer the name, in a letter dated March 10, 2003. On August 1, 2003, Complainant wrote to Respondent renewing its demand and alerting it to the prospect of a UDRP procedure. Respondent did not respond to that letter.
Respondent has made no use of the domain name connected to a bona fide offering of goods or services and is not known by the mark.
5. Parties’ Contentions
Complainant contends that Respondent’s Response was untimely filed, and that its Complaint presents a prima facie claim and should thus prevail.
Complainant contends that the domain name is identical or confusingly similar
to its mark, which is neither generic nor merely descriptive and is thus protectable
pursuant to both statute and common law. Complainant argues that Respondent
had no right or legitimate interest in using the mark, in that his business
has not been known by or used the domain name in connection with any bona
fide offering of goods or services; that he has made no legitimate noncommercial
or fair use of the domain name; and that any legitimate use would be infringing,
especially if Respondent used the mark to expand into a new area of business
more closely related to Complainant’s own.
Complainant argues that Respondent’s bad faith registration and use of the
domain name is evident from the diversion of visitors typing in the domain name
to his own site. Complainant further assert that Respondent’s bad faith registration
and use of the domain name is evident from his failure to make any use of the
domain name for over 7Ѕ years following its registration. Complainant suggests
that Respondent has either intended to draw visitors away from Complainant’s
web site and to pass off Respondent’s web site as Complainant’s, or to mislead
consumers into believing that Complainant has no active Internet presence, or
to preclude Complainant from using the domain name. Citing Ingersoll-Rand
Co. v. Frank Gully d/b/a Advocomren, WIPO
Case No. D2000-0021 (March 9, 2000), Complainant argues that, "[i]f
at any time following the registration the name is used in bad faith, the fact
of bad faith use is established."
Complainant argues that circumstances indicate that Respondent likely registered the domain name for the purpose of selling it, given that Respondent has made no legitimate use of the domain name and diverted users to his own site – the diversion being a prima facie demonstration of bad faith under Section 4(b)(iv) of the Policy. Complainant further argues that the domain name is infringing and creates a likelihood of confusion as to the sponsorship of the site.
Respondent states that he registered the domain name because he contemplated expansion of his business into selling digital photography and fine art prints, and wished to reflect the digital nature of this product along with the "kitchen" suffix of the "Design Kitchen" name. Respondent states that he was unaware of Complainant, its business, or its purported common law use of the name at the time Respondent registered the domain name, and that he did not become aware of Complainant until the 2001 letter. Respondent disavows any past or current intent to sell the domain name. Respondent argues that he is not a competitor of Complainant’s, that the PTO did not publish Complainant’s application until after Respondent registered the domain name, and that he does not produce television, film, or video services.
Respondent asserts (1) that the diversion of visitors typing in "www.digitalkitchen.com" to the "www.designkitchen.com" web site was solely due to an error made by Register.com with its domain registry; (2) that the error only occurred for six weeks; (3) that fewer than 500 visitors (including those from Complainant) accessed the "www.digitalkitchen.com" website during that time; (4) that Respondent remained unaware of this error until after it was rectified; and (5) that the error was rectified before Complainant first brought it to Respondent’s attention in a letter on February 25, 2003.
Respondent argues that Complainant’s mark is generic or merely descriptive and thus not protectable, that Complainant has not shown evidence of its common law use of the mark and establishment of secondary meaning prior to the registration of the domain name, that any such scope of protection should be limited to the video production field, and that the field of similar marks is crowded.
Respondent argues its use of the domain name over the past 7Ѕ years has not
been in bad faith because he has had a legitimate continued business interest
in using the domain name, although he has not yet acted on that interest. Respondent
cites M.T.C. Inc. v. Net L@tino, Inc., WIPO
Case No. D2002-0088 (April 1, 2002) (denying complaint where there were
legitimate uses that might be made of the domain name at issue outside of complainant’s
line of business and "respondent indicated its intention to use the disputed
domain name in that way").
Respondent denies and argues that there is no evidence that he registered the domain name for any purpose harmful to Complainant’s business, and that even if he had done so there is no allegation of any pattern of such behavior, as required by Policy 4(b)(ii).
Respondent argues that the principle of "passive holding" espoused
in Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 (February 18. 2000) is to be applied sparingly,
and not in a situation where a Respondent registers a domain name without knowledge
of Complainant’s mark, provides correct identifying information in its forms,
and actively responds to the complaint. Alberto-Culver Co. v. Pritpal Singh
Channa, WIPO Case No. D2002-0757 (October
Respondent argues that even if there were any later bad faith in its use of
the domain name, his initial registration was not in bad faith, and that Complainant
must meet the standard of showing that good faith registration was not even
"reasonably possible." Red Bull GmbH v. Ian Andrew, WIPO
Case No. D2001-0709 (August 9, 2001). Respondent argues that as both bad
faith registration and use are separately required to satisfy the bad faith
element of a claim, the claim must fail on this point alone.
6. Discussion and Findings
A. Late Response and Complainant’s Reply
Absent good cause, late-filed responses should be disregarded. 1099 Pro,
Inc. v. Convey Compliance Systems, Inc., WIPO
Case No. D2003-0033 (April 1, 2003). Respondent does not dispute that the
Response was late, but argues that he had good cause because he believed that,
consistent with United States litigation and USPTO practices, deadlines falling
on weekends are automatically extended to the next business day. See, e.g.,
Rule 6a of the Federal Rules of Civil Procedure. Respondent did, in fact, submit
his response on the Monday following the November 2 deadline, albeit very late
that evening. Given that Respondent has certified that his error was in good
faith, and the lack of prejudice to Complainant, see Talk City v. Michael
Robertson, WIPO Case No. D2000-0009
(February 29, 2000), the Panel finds that Respondent has good cause. Accordingly,
the Panel accepts Respondent’s Response.
The panel does not, however, accept Complainant’s supplemental submission.
As is by now well-established, the Rules do not provide any right of reply.
Parfums Christian Dior S.A. v. Jadore, WIPO
Case No. D2000-0938 (November 3, 2000). Although supplemental submissions
may be accepted to address new legal developments, see, e.g., Pet Warehouse
v. Pets.Com, Inc., WIPO Case No. D2000-0105
(April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific
Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO
Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly. Because
Complainant’s supplemental submission merely reargues the issues already discussed
in the Complaint, the Panel concludes that there are no exceptional circumstances
warranting any supplemental submission in this case.
B. Identical or Confusingly Similar
Respondent argues that Complainant’s mark is merely descriptive and, in any event, is weak because of the crowded field of other similar marks. This argument completely ignores the dispositive fact that Complainant’s mark is registered in the U.S. Patent and Trademark Office. This registration is prima facie evidence of the validity of the mark, and Respondent’s challenge is not sufficient to raise serious questions as to the validity of the mark. Given the absence of compelling evidence of the mark’s invalidity, the Panel finds that Complainant has proven the existence of trademark rights. Electronic Commerce Media, Inc. v. Taos Mountain, NAF File No. 95344 (October 11, 2000).
Complainant also has met the requirement of showing that the names are identical
or confusingly similar. Any differences in punctuation and the global top level
domain designation must be ignored for the purpose of this analysis. Chernow
Communications Inc. v. Jonathan D. Kimball, WIPO
Case No. D2000-0119 (May 18, 2000) (punctuation); VAT Holding
AG v. vat.com, WIPO Case No. D2000-0607
(August 22, 2000) (presence of top-level domain). It is thus clear that the
domain name is identical to Complainant’s mark.
C. Rights or Legitimate Interests
Respondent persuasively argues that he registered the domain name in good faith to serve as a natural expansion of the "Design Kitchen" trademark. Had Respondent followed through on those plans, he likely could have successfully demonstrated a legitimate interest in the domain name.
Instead, the domain name has lain fallow for more than seven years. Not only
has Respondent failed to make any use of the name, but he has not submitted
any evidence of a bona fide intent to do so. Because Respondent has failed
to submit evidence of demonstrable preparation to use the domain name for a
bona fide business, the Panel is constrained to find, for purposes of
the Policy, that Respondent lacks a legitimate interest in the domain name.
See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306 (January 24,
2001) (holding mere assertion of preparation to make bona fide commercial
use insufficient to demonstrate legitimate interest).
D. Registered and Used in Bad Faith
To prevail on the third factor, Complainant must prove both that Respondent
registered and used the domain name in bad faith. e-Duction Inc. v.
John Zuccarini d/b/a The Cupcake Party & Cupcake Movies, WIPO
Case No. D2001-1369 (February 5, 2001). Failure to prove either of these
necessary elements is fatal to a UDRP challenge.
Here, Complainant has not proven bad faith registration. At the time Respondent
registered the domain name, Complainant had just established its business the
prior year, and its trademark application had not yet been published. It is
thus easy to believe Respondent’s sworn assertion that, at the time he registered
the domain name, he had not even heard of Complainant or its mark. If Respondent
was unaware of Complainant’s mark when he registered the domain name, that registration
could not have been in bad faith. Id., see also Audiopoint, Inc. v. eCorp
a/k/a Chad Folkening, WIPO Case No. D2001-0509
(June 14, 2001); Trans Continental Records, Inc. v. Compana LLC, WIPO
Case No. D2002-0105 (April 30, 2002).
Complainant nevertheless argues that Respondent’s 7Ѕ years of inaction suffices to prove that the registration was in bad faith, and that Respondent, having not used the domain name, must have intended from the start to sell it to Complainant. Given the Panel’s finding that Respondent did not know of Complainant’s existence at the time he registered the domain name, that argument is untenable. In any event, Respondent offers an explanation for both the registration of the domain name and its subsequent lack of use.
In light of Complainant’s failure to prove that Respondent registered the domain name in bad faith, its arguments about bad faith use are beside the point. Complainant cannot show both bad faith use and registration, and therefore its Complaint must be denied.
Although Complainant has shown that the domain name is identical to a mark in which Complainant has rights and that Respondent lacks a legitimate interest in the domain name, Complainant has not shown that Respondent registered the domain name in bad faith. Accordingly, the Complaint is denied.
David H. Bernstein
Dated: November 24, 2003