DECISION

 

Kinko's Ventures, Inc. v. PrintingQuotes.net

Claim Number: FA0107000097776

 

PARTIES

Complainant is Kinko's Ventures, Inc., Ventura, CA, USA (“Complainant”) represented by James H. Cornell, of Kinko's Ventures, Inc.  Respondent is PrintingQuotes.Net, Chicago, IL, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kinkocopy.com> registered with Network Solutions.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 2, 2001; the Forum received a hard copy of the Complaint on July 2, 2001.

 

On July 3, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <kinkocopy.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@kinkocopy.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 25, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <kinkocopy.com> domain name is confusingly similar to Complainant’s federally registered KINKO’S and KINKO’S COPIES family of marks.

 

Respondent has no rights or legitimate interests in the <kinkocopy.com> domain name.

 

Respondent registered and used the <kinkocopy.com> domain name in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Since 1970, Complainant has continuously used its KINKO’S and KINKO’S COPIES federally registered family of marks in connection with its photocopying and other graphics-related services.  Complainant registered its KINKO’S mark as early as December 19, 1978 as Registration No. 1,109,701.  Complainant also registered its KINKO’S COPIES mark as early as December 27, 1994 as Registration No. 1,870,011.

 

Respondent registered the <kinkocopy.com> domain name on March 22, 2001.  Respondent created a website for its printing business located at the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant has established that it has rights in the KINKO’S and KINKO’S COPIES family of marks through their corresponding registrations.  Furthermore, the <kinkocopy.com> domain name incorporates Complainant’s KINKO’S mark, in a singular form, in addition to a generic word which describes the line of business Complainant is engaged in.  The addition of a generic word to Complainant’s mark makes the disputed domain name confusingly similar to Complainant’s KINKO’S mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

 

The disputed domain name is also confusingly similar to Complainant’s KINKO’S COPIES domain name as the domain name is the singular form of the KINKO’S COPIES mark.  See Victoria's Secret et al v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> is confusingly similar to Complainant’s trademark, VICTORIA’S SECRET).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate it has rights or legitimate interests in the <kinkocopy.com> domain name.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

 

Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to a disputed domain name where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Respondent’s use of the disputed domain name to create a Website for its competing printing business is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

 

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <kinkocopy.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial, or fair use of the <kinkocopy.com> domain name pursuant to Policy ¶ 4(c)(iii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s registration and use of the <kinkocopy.com> domain name to promote its competing business is evidence of bad faith pursuant to Policy ¶ 4(b)(iii), as Respondent’s registration disrupts the business of Complainant, a competitor.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

 

Respondent’s use of the disputed domain name to attract Internet users, for commercial gain, to Respondent’s website by creating a likelihood of confusion with Complainant’s KINKO’S and KINKO’S COPIES family of marks further supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website where competing educational services were offered to the same market as that served by Complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <kinkocopy.com> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 27, 2001