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 Global DNS, LLC, Mercer Island, Washington, United States of America, represented by Newman & Newman LLP, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <kooks.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 15, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2008, 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 February 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2008. The Response was filed with the Center on March 19, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 28, 2008. 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.
There have been additional submissions by both parties in this Proceeding. On February 21, 2008, the Respondent submitted a Request for Suspension of Proceedings, citing a lawsuit filed by the Respondent on February 14, 2008. The Complainant submitted an Opposition to this request on February 25, 2008. The Complainant also submitted a Supplemental Response on March 21, 2008.
4. Factual Background
The Complainant is a New York corporation formed in 1996. Based in Bayshore, New York, the Complainant manufactures, installs, and distributes custom headers (high-performance exhaust manifolds) and other exhaust system parts for automobiles and motorcycles.
According to the declaration of the Complainant’s president, Mr. Kryssing, the Complainant has used the KOOKS mark to identify its products since 1962. The parties agree that the Complainant was not incorporated until 1996, however, so Mr. Kryssing presumably refers to use of the mark by the Complainant and, before 1996, by the Complainant’s predecessor or predecessors, which are not identified. Mr. Kryssing states that the Complainant has made more than US $15.5 million in sales associated with the KOOKS mark since 1999. He asserts that “substantially more” revenues have been generated since the brand was introduced in 1962, but he does not quantify such sales.
The Complainant operates a website at “www.kookscustomheaders.com”. According to the registrar’s WHOIS database, that domain name was created on October 1, 1998. From information published on the Complainant’s website, it appears that the Complainant sells its products both directly and through authorized dealers in many locations in the United States of America, including two in the State of Washington, where the Respondent is located.
The Complainant holds a United States of America trademark registration for KOOKS, Registration No. 2475925. The trademark was registered on August 7, 2001, showing first use in commerce on January 1, 1962.
The Respondent is a Washington limited liability company. It registers domain names and typically points them to “parking” websites filled with third-party advertising links generated by an advertising search engine. In some instances, the Respondent develops websites associated with a domain name, such as “www.spamarrest.com” (an email spam-blocking service), “www.mypc.com” (online authentication of user identity), and “www.webbackup.com” (online data backup services).
The Respondent registered the Domain Name on April 10, 1996. According to the Declaration of the Respondent’s managing member, Mr. Cartmell, the Respondent has until recently linked the Domain Name to a “parking page” that offered links to content provided by search providers such as Google and Yahoo!
The Complainant furnished a printout of the website associated with the Domain Name on February 13, 2008. The landing page was headed, “Kooks.com, What you need, when you need it”. The landing page featured links to third-party advertising under diverse categories of goods and services, including music downloads, employment, games, and even “Russian Brides”. The landing page also provided a search capability.
The first listing in the left frame of the landing page associated with the Domain Name was “Kooks Headers”, and the first listing under “Popular Categories” in the center of the landing page was also “Kooks Headers”. Clicking on one of the “Kooks Headers” links generated a page listing “Sponsored Links”. These included links to competitors of the Complainant such as JEGS, Auto Parts Warehouse, Car-Stuff.com, EastCoastVette, and Nitro-Plate offering “headers”, “header coating”, and related automotive products and services.
When notified of this UDRP proceeding in February 2008, the Respondent disassociated the Domain Name from the domain parking service and posted its own content on the website to which the Domain Name resolved. Apart from an advertisement for the Respondent’s SpamArrest service, the website now consists of a single page discussing this UDRP proceeding, under the heading, “Stop Reverse Domain Hijacking by Making It Expensive!”.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is identical to its registered KOOKS trademark and that the Respondent has demonstrated no rights or legitimate interests in using the mark in the Domain Name.
The Complainant observes that the Respondent appears to have derived pay-per-click advertising revenue from the use of the Domain Name in connection with a domain parking website, and that the advertising involved a variety of goods and services including those offered by the Complainant’s direct competitors. The Complainant argues that the misdirection of Internet users for commercial gain reflects the Respondent’s bad faith in the registration and use of the Domain Name.
B. Respondent
The Respondent challenges the validity of the KOOKS trademark registration. It argues that in any event the Respondent is entitled to register and use a domain name consisting of a dictionary word to develop a relevant website, and to park it with a third-party advertising service in the interim.
The Respondent denies prior knowledge of the Complainant or its KOOKS mark and also denies responsibility for the display of competitors’ advertising links on the domain parking websites to which the Domain Name formerly resolved.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the 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
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filings
The Rules do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
Here, the Respondent filed a lawsuit and a request to suspend the UDRP proceeding, and also furnished new evidence about its domain registration, parking, and development business. The Panel accepts these submissions for consideration, as well as the Complainant’s opposition and supplemental filing in reply.
B. Request for Suspension Pending Judicial Proceedings
The Complaint in the present UDRP proceeding was filed on February 14, 2008, with email notice to the Respondent. Before the day was over, the Respondent filed a “Complaint for Declaratory Relief of Non-Infringement and Lawful Use of the <Kooks.com> Domain Name, and for Cancellation of Trademark Registration” in the United States District Court for the Western District of Washington at Seattle (Case No. 2:08-00268-RSL).
The Respondent’s federal court complaint seeks a judicial ruling that (a) the KOOKS trademark is neither “distinctive” nor “famous” for purposes of the Anticybersquatting Consumer Protection Act (ACPA), (b) the Respondent’s use of the Domain Name does not violate the Lanham Act (federal trademark law), and (c) the registration of the KOOKS trademark should be cancelled.
The complaint is grounded on 15 U.S.C. § 1114(2)(D)(v), which provides as follows:
“A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.”
The Policy establishes a mandatory administrative proceeding, but it expressly does not preclude a Respondent from seeking judicial remedies either before or after the UDRP proceeding:
“The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.” (Policy, paragraph 4(k))
The present UDRP proceeding commenced on February 28, 2008, after the filing of the Respondent’s lawsuit.
Paragraph 18(a) of the Rules gives the Panel discretion to suspend or terminate a UDRP proceeding where, as here, the Domain Name is the subject of other legal proceedings:
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
The Domain Name is clearly the subject of the Respondent’s lawsuit, and the court in that proceeding may ultimately issue a ruling that grants or denies the Respondent’s request for declaratory relief. However, the court may well decide that the request is premature, since 15 U.S.C. § 1114(2)(D)(v) contemplates an action after the disputed domain name has been “suspended, disabled, or transferred” under a mandatory dispute resolution policy such as the UDRP. In any event, litigation will entail costs and delays that might possibly be avoided by prompt resolution of the current UDRP proceeding.
In the circumstances of this proceeding, the Panel finds no compelling reason for suspending the UDRP administrative proceeding and therefore denies the Respondent’s request.
C. Identical or Confusingly Similar
The Complainant holds a registered trademark for KOOKS, which is identical to the Domain Name for Policy purposes.
The Respondent argues in this proceeding, as it does in the federal lawsuit, that the trademark was improperly registered. The Respondent alleges that the registration was based on “fraudulent” representations by the Complainant in claiming use of the mark since 1962, when the Complainant was not incorporated until 1996. This argument overlooks the possibility that the Complainant is the assignee or successor in interest to the party or parties that used the KOOKS mark before April 1996. Such facts were presumably examined by the United States Patent and Trademark Office before registering the trademark, and the evidence is not before the Panel in this proceeding.
UDRP panels must often examine the sufficiency of claims to unregistered or unexamined marks as the basis for a UDRP complaint (see, e.g., discussion in One Creative Place, LLC v. Kevin Scott,
WIPO Case No. D2006-0518). Where a complainant holds a registered, examined trademark, however, UDRP panels routinely defer to the trademark office. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, sec. 1.1.
The Respondent here has challenged the trademark registration in federal court, as it is entitled to do, but the Panel accepts the federally registered trademark as satisfying the Policy requirement for “a trademark or service mark in which the Complainant has rights” (para. 4(a)(i)).
D. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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 does not claim to have been known by the Domain Name, and it acknowledges the commercial use of the Domain Name for advertising. Its argument for a legitimate interest in the Domain Name is that it is a dictionary word in English, signifying “an eccentric, strange, or foolish person” or “an insane person”. The Respondent claims a right to use such a word for third-party advertising purposes, but the Respondent also claims that it selected the Domain Name for “future business development”, “for possible later use in connection with an Internet venture”. As Mr. Cartmell, the Respondent’s managing member, explained in his Declaration:
“In the twelve (12) years since it registered the Domain Name, Respondent has considered a number of potential uses for <kooks.com> including but not limited to the discussion of eccentric, strange, or foolish people, commonly known as ‘kooks’.”
Such a vague and unsupported statement of intentions does not amount to “demonstrable preparations” to use the Domain Name in connection with “a bona fide offering of goods or services”, nor does it establish a legitimate noncommercial use of the Domain Name.
There are instances where a dictionary word or descriptive phrase may be used legitimately for its generic value, as described in Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614:
“In some circumstances, acquiring a domain name comprised of a dictionary or genuinely descriptive term for potential resale and using it for a parking website with pay-per-click, third-party advertising may be considered consistent with a legitimate offering of goods and services. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF No. 0285459 (‘As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy’); Weather Shield Mfg., Inc. v. Lori Phan,
WIPO Case No. D2007-1247 (resale and advertising may in some contexts represent legitimate interests, ‘particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks’). If, on the contrary, the Respondent chose the Domain Name in an effort to capitalize on the Complainant’s famous trademark, this could not be considered a use in connection with a ‘bona fide’ offering of goods or services.”
The screen shot of the domain parking page formerly associated with the Domain Name does not display content about eccentric persons, consistent with the dictionary meaning of the word. To the contrary, it prominently features third-party advertising links labeled “Kooks Headers” that lead to advertisements from the Complainant’s competitors. This use does not represent a legitimate interest in the Domain Name for its generic rather than trademark value.
The Respondent protests that these particular links were served up by a third-party search engine without its knowledge. But the Respondent contracted with the parking service, presumably shared in the pay-per-click advertising revenues, and took no steps (until this Complaint was filed) to remove such links from the website. Even if the Respondent did not choose the specific advertising keywords used by the domain parking search engine, as the registrant of the Domain Name the Respondent must bear some responsibility for the uses to which it is put. Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The Respondent failed, over the course of twelve years, to use the Domain Name for what it characterizes as its intended purposes. The Respondent also apparently acquiesced to using the Domain Name for advertising that targeted the Complainant’s mark, and presumably profited therefrom. These facts tend to support the Complainant’s inference that the Respondent has no rights or legitimate interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii). However, given the Panel’s conclusions on bad faith, as discussed below, it is unnecessary to conclude whether the second element of the Complaint has been established.
E. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires the Complainant to establish that “the Domain Name has been registered and is being used in bad faith”. The requirement is conjunctive; this element of the complaint is not established without a showing of bad faith at the time of registration as well as subsequent use of the disputed domain name in bad faith. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems,
WIPO Case No. D2001-0827.
Even without direct evidence of original intent, a respondent’s motivations at the time of registration can often be inferred from the respondent’s later conduct. Thus, paragraph 4(b), which provides a non-exhaustive list of circumstances that indicate bad faith, includes the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
As discussed above in connection with the second element of the Complaint, the Respondent in the current proceeding has allowed the Domain Name to be used, at least recently, in a manner that takes advantage of the Complainant’s trademark and misdirects Internet users to websites operated by unrelated and even competing parties. Moreover, the Respondent has presumably realized some share of pay-per-click advertising revenues from this use. This conduct appears to fit the paradigm of paragraph 4(b)(iv).
But even if this conduct represents bad-faith use of the Domain Name, in this case the Panel is unable to infer bad-faith registration of the Domain Name. Mr. Cartmell, in his sworn Declaration, denies knowledge of the Complainant or its mark in 1996, and there is no remotely contemporaneous evidence in the record contradicting that assertion. (While the Policy does not preclude delayed complaints per se, waiting for twelve years to raise an objection to a domain name certainly impacts the Complainant’s ability to adduce evidence of bad faith at the time of registration.)
Mr. Cartmell and his company have no apparent history of cybersquatting, despite registering numerous domain names. The mark itself is based on a family name that also happens to be a dictionary word in English. The Respondent’s claim that it chose the Domain Name initially for its generic rather than trademark value is thus not inherently implausible.
Moreover, the record does not establish the fame of the Complainant’s then-unregistered mark in 1996, particularly on the opposite coast of the United States of America. According to the online business entity database operated by the New York State Division of Corporations, the Complainant first filed for incorporation in New York on March 1, 1996, roughly one month before the Respondent registered the Domain Name. The Complainant asserts that the unregistered KOOKS mark had been in use since 1962 but furnishes no evidence concerning such use or establishing that the mark was so well known that the Respondent must have been aware of it in 1996. It does not appear from the record that the Complainant itself had established a website by that time; the relevant WHOIS database shows that the domain name now used for the Complainant’s website, “kookscustomheaders.com”, was not created until more than seven years later, on October 19, 2003. The Complainant currently has authorized dealers in Washington, but there is no evidence in the record as to dealerships, advertising, or sales under the KOOKS mark in Washington State in 1996.
The Complainant did not apply for trademark registration until October 2000, and the registration was granted in August, 2001, both long after the Domain Name was registered. The registration shows first use of the mark in commerce in January 1962, but there is simply no evidence in the record that establishes the probability that the Respondent, a Washington company in an entirely different line of business, must have been aware of the Complainant’s mark when it registered the Domain Name in 1996.
Thus, the Panel cannot conclude, based on the record in this proceeding, that the Respondent was likely aware of the Complainant’s mark in 1996 and registered the Domain Name in a bad-faith effort to capitalize on that mark. The Complainant has not met its burden of persuasion on the third element of the Complaint.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer Sole Panelist
Dated: April 4, 2008
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