kirbymorgan.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kirby Morgan Dive Systems, Inc. v. Infowave (Thailand) Co. Ltd.

Case No. D2002-0932

1.1 The Complainant in these proceedings is Kirby Morgan Dive Systems, Inc. (formerly known as Diving Systems International, Inc.) a company incorporated in the State of California, Santa Barbara, California 93101, United States of America, represented by Collins & Associates of United States of America.

1.2 The Respondent is Infowave (Thailand) Co. Limited. of Bangkok 10110, Thailand.

2.1 The domain name that is the subject matter of this Complaint is <kirbymorgan.com>.

2.2 The registrar with which the domain name is registered is Network Solutions, Inc.

A Complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules), was submitted in electronic format to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on October 8, 2002. A hard copy of the Complaint together with annexures and the required fees were received by the Center on October 11, 2002. An acknowledgement of receipt of the Complaint was sent by the Center to the Complainant on October 10, 2002.

A copy of the Complaint was sent by the Center to the Network Solutions, Inc Registrar and requested for register verification in connection with the domain name at issue. On October 11, 2002, the Registrar transmitted by e mail its verification response and confirmed to the Center that Network Solutions, Inc. is the Registrar of the domain name <kirbymorgan.com> and provided the details for administrative, billing and technical contacts.

On October 15, 2002, the Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and the Supplemental Rules. On October 16, 2002, the Center issued to the Respondents a Notification of Complaint and Commencement of Administrative Proceedings (including a copy of the Complaint), to both the postal/courier and e-mail addresses of the Respondent, and to the facsimile of the Respondent’s contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.

The Notification of Complaint and Commencement of Administrative Proceedings stated that the formal date of the commencement of the administrative proceedings is October 16, 2002, and that within 20 calendar days from the date of commencement of the administrative proceedings the Respondent must submit his response to the Center and the Complainant. The Respondent was further informed that if his response is not received by that date, he will be considered in default. The Center will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from the default of the Respondent as it considers appropriate.

No response has been received by the Center from the Respondent. Having received no response from the Respondent within the specified time in the Notification of Complaint, on November 6, 2002, the Center issued to the Respondent a Notification of Respondent Default. A copy of the Notification was also sent to the Complainant.

On November 12, 2002, the Center issued to both the parties a Notification of Appointment of Administrative Panel and the decision date. This Notification informed the parties that the Administrative Panel would be comprised of a single member, namely, Dr. Vinod K. Agarwal. 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. The Administrative Panel is required to give its decision by November 26, 2002.

From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:

The Complainant is the manufacturer of various diving equipment, such as, diving apparatus, diving suits, diving helmets, and regulators, head protectors, visors, masks, mask bags and cold water neck dams; parts and fittings for the above; and for clothing. The Complainant has been using the trademark KIRBYMORGAN for its business activities since 1967. The Complainant is the registered owner of the trademark KIRBY MORGAN for the above products. The said trademark is registered with the United States Patent and Trademark office and with registrars of many other countries including the United Kingdom, Austria, Benelux, Denmark, Finland, France, Germany, Iceland, Korea and Sweden.

The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.

The Respondent is the registrant of the domain name <kirbymorgan.com>. The postal address of the Respondent and its contact, as contained in the Registrar’s were provided

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute. In relation to element (I), the Complainant contends that the words KIRBY MORGAN contained in the domain name <kirbymorgan.com> are identical with or confusingly similar to the registered trademark KIRBY MORGAN owned by the Complainant.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name. Further that the Respondent is not making a legitimate non-commercial or fair use of the said domain name. The Respondent registered the domain name for the sole purpose of "strong arming Complainant" into using Respondent’s services.

Regarding the element at (iii), the Complainant contends that on August 7, 1997, the Respondent has written a letter to the Complainant stating that he had, "taken the liberty of registering the domain kirbymorgan.com" and would like to have the opportunity to develop the web site for the Complainant. The said letter further stated that "if a web site is inappropriate at this time then please let me know and I shall keep this domain name reserved for your corporation's future use". The Complainant wrote "cease and desist" letters to the Respondent but no response was received from the Respondent. Further that, the impugned domain name <kirbymorgan.com> was registered by the Respondent on July 18, 1997, and has been renewed constantly thereafter.

The Respondent did not reply to the Complainant’s contentions.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has a right; and

(ii) The Respondent has no right or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered in bad faith and is being used in bad faith.

The present dispute pertains to domain name <kirbymorgan.com>. The Complainant is the registered owner of the trademark kirbymorgan in many countries, including the United States Patent and Trademark Office. There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. The Administrative Panel finds that the domain name is identical to the trademark registration held by the Complainant. In addition, the Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.

According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial 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 filed any response in this case. It is therefore presumed that the above circumstances do not exist in this case. Kirbymorgan is the registered trademark of the Complainant. It is but evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating the said words and that no body will use the words "kirbymorgan" unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain name.

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 or use of the domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 it has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location.

The contention of the Complainant is that the present case is covered by the first circumstance. The letter of the Respondent dated August 7, 1997, to the Complainant is ample proof of the fact that the Respondent wants to sell and transfer the domain name to the Complainant, may be after developing it. The Administrative Panel agrees with the said contention of the Complainant. Further, the said web site has not been activated by the Respondent till the date of filing of the complaint. Thus, "inaction" or "passive" holding of a domain name amounts to the registration and use of the domain name in "bad faith".

In the light of the forgoing findings, namely, that the domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered in bad faith and is being used in bad faith, the Administrative Panel directs that the domain name <kirbymorgan.com> be transferred to the Complainant.