The Complainant is Kooks Custom Headers, Inc., Bayshore, New York, United States of America, represented by Cohen, Pontani, Lieberman & Pavane LLP, United States of America.
The Respondent is Domain Drop S.A., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <kooksheaders.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2007. On October 29, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On October 30, 2007, BelgiumDomains, LLC 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 October 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2007.
The Center appointed Chiang Ling Li as the sole panelist in this matter on December 3, 2007. 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 Complainant is involved in manufacturing, installing, and distributing custom headers and exhaust systems for automobiles and motorcycles.
The Complainant owns a United States federal trademark registration (Reg. No. 2475925) for “KOOKS” for automotive and motorcycle parts, namely, exhaust headers and mufflers. The “KOOKS” mark is used to identify the Complainant’s custom headers and exhaust systems, which are sold in the United States and worldwide.
In addition to the “KOOKS” trademark registration, the Complainant has, inter alia, registered a domain name incorporating “KOOKS”, i.e. <kookscustomheaders.com>, for use in connection with the Complainant’s provision of custom headers and exhaust systems and services to Internet users.
The Respondent registered the domain name <kooksheaders.com> on January 18, 2006 (“Domain Name”). At the date of the Complaint, the Respondent uses the Domain Name for a website (further discussed below).
The Respondent has failed to file any response in the present proceedings.
5. Parties’ Contentions
A. Complainant
The Complainant’s submissions can be summarized as follows:
(a) Identical or Confusingly Similar
The Complainant’s United States federal trademark registration for “KOOKS” acts as prima facie evidence of its validity and inherent distinctiveness. The Domain Name consists of the Complainant’s “KOOKS” mark and the word “headers”, a descriptive term for the Complainant’s products.
The Domain Name is also confusingly similar to the Complainant’s business name or domain name, differing only by the omission of the word “custom”. Such an omission does not negate the confusing similarity between the Complainant’s mark and Domain Name.
(b) Rights or Legitimate Interests
The Domain Name was registered more than forty years after the Complainant commenced commercial use of its “KOOKS” mark and more than four years after the Complainant obtained its United States federal trademark registration. There is no indication that the Respondent, as an individual, business or other organization, has been commonly known by the Domain Name.
It does not appear that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services.
Moreover, at the date of the Complaint, the Respondent was using the Domain Name to post links to third party adult websites presumably for the commercial benefit of receiving click-through fees. Such a use does not constitute a legitimate non-commercial or fair use of the Domain Name.
(c) Registered and Used in Bad Faith
The Domain Name was registered and is being used in bad faith based on the following factors:
(i) The Respondent presumably receives click-through fees for the adult website links displayed on the Domain Name;
(ii) The Domain Name creates confusion as to the Complainant’s possible sponsorship or affiliation with the website using the Domain Name as well as the adult-oriented websites;
(iii) The Respondent misdirects, distracts and delays potential consumers from their pursuit of products and services being offered by the Complainant;
(iv) The Respondent employs an automated method of finding and registering domain names for no legitimate purpose. The Respondent has been involved in several previous domain name disputes and has been ordered to transfer domain names to its legitimate owners at those instances.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) The Respondent has no rights or legitimate interesst in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first issue is whether the Domain Name is confusingly similar to the Complainant’s mark. To establish this, two elements must be satisfied: (a) that the Complainant has rights in the particular mark; and (b) that the Domain Name is identical or confusingly similar to such a mark.
The Complainant has submitted a copy of the printout from the United States Patent and Trademark Office website showing the particulars of its United States federal trademark registration for “KOOKS”. Absent any challenge by the Respondent, the Panel is satisfied that the Complainant has established its rights in the “KOOKS” mark.
The Domain Name combines the Complainant’s “KOOKS” mark with the word “headers”, a descriptive term for the Complainant’s products. Such an addition does not avoid the potential for confusion. (Berlitz Investment Corporation v. Pierre Hacopian, Mr. Cheap.com LLC,
WIPO Case No. D2007-0483).
The Domain Name is also similar to the Complainant’s business name and domain name, differing only by the omission of the word “custom”. The Panel considers that the mere omission of the descriptive word “custom” does not adequately distinguish the Domain Name from the Complainant’s mark, business name or domain name.
Based on the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
The Respondent has failed to provide any evidence to demonstrate that it has rights or legitimate interests in the Domain Name. In such circumstances, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy if it is able to make a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455).
In the Panel’s opinion, the Complainant has met this prima facie obligation by highlighting the apparent absence of evidence that the Respondent:
(a) Is using the Domain Name in connection with a bona fide offering of goods or services;
(b) As an individual, business or other organization, has been commonly known by the Domain Name; and
(c) Is making a legitimate non-commercial or fair use of the Domain Name.
In particular, the Respondent is merely using the Domain Name to post links to third party websites. The operation of a commercial web directory displaying various links to third party websites is not a use in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent’s website at “www.kooksheaders.com” may divert Internet traffic intended for the Complainant to third party websites. Here, the Panel finds that the use of the domain name falls squarely within the circumstances described in paragraph 4(b)(iv) of the Policy,
Further, the Respondent has been involved in several previous domain name disputes and has been ordered to transfer domain names to its legitimate owners.
The Panel therefore concludes that the requirements under 4(a)(iii) of the Policy have been met.
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, < kooksheaders.com>, be transferred to the Complainant.
Chiang Ling Li Sole Panelist
Dated: December 17, 2007
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