ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
The Kittinger Company Inc. v. James Fisgus (AF00108a and b)
This is a domain name dispute under the ICANN Uniform Domain Name Dispute Resolution Policy (the "UDRP"). The domain registrations at issue in this panel decision are kittengerfurniture.com and kittenger.com, both registered by Network Solutions, Inc. This case is closely related on the facts to The Kittinger Company, Inc. v. Kittinger Collector (AF00107a and b).
The Complaint was filed electronically on February 4, 2000. The details of the procedural record are found in the letter dated March 10, 2000 from Emmanuelle Letourneau of eResolution to the panelist (attached hereto). In addition to the filings detailed in the attached letter, the Parties requested permission to submit additional pleadings. The panelist granted the request and the Complainant's Rebuttal was filed on March 28, 2000 and the Respondent's Response to Complainant's Rebuttal was filed on April 11, 2000. The panel also received an e-mail exchange between the parties on April 14, 2000.
The Complainant is a manufacturer of furniture and is the owner by assignment of Canadian Trademark Reg. No. TMA 278,127 for KITTINGER. Complainant is also owner of a U.S. trademark application for KITTINGER. Complainant is the owner of U.S. Reg. No. 1,124,516 for KITTINGER OLD DOMINION, the renewal application for which is pending due to a USPTO request for provision of details concerning nonuse of the mark. All of Complainant's marks are for office furniture, dining room furniture, living room furniture and bedroom furniture. Respondent contests the ability of Complainant to benefit from the priority of the above registrations due the long history of serial assignments and period of nonuse.
The Complainant is attempting to revive the fortunes of the Kittinger Company, which had fallen on hard times and ceased operations for a period. Respondent is in the business of purchasing, re-conditioning and re-selling furniture that was manufactured by the Complainant's predecessors. Both Parties would likely agree that the Kittinger name is associated with high quality colonial reproduction furniture. The Parties disagree on whom may use variations on the Kittinger name as a domain name.
Under the UDRP paragraph 4(a) the Complainant bears the burden of proving that:
(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.
Therefore the question before this panel is whether the Complainant has met its burden with respect to the three elements.
(i) The panel finds that Complainant has met its burden with respect to the first element. Although there appear to be issues regarding whether the trademark rights of the Complainant have survived the series of assignments and nonuse, Complainant is the owner of a subsisting Canadian Registration for KITTINGER, a mark that is nearly identical to the kittenger.com domain name at issue. Respondent admits that the domain was adopted because the Kittinger name is frequently spelled Kittenger.
With respect to the second domain at issue, kittengerfurniture.com, the panel finds that the domain name is confusingly similar to a trademark of the Complainant. The panel bases this finding on the evidence that Complainant owns a trademark KITTINGER for furniture goods and that the domain partly represents a common miss spelling of the mark. When considered as a whole the domain is confusingly similar to Complainant's mark.
(ii) The panel finds that Complainant has failed to meet its burden with respect to establishing that the Respondent has no rights or legitimate interests in the domain names at issue. Respondent has used its domains in connection with a business based on the acquisition, re-conditioning and re-sale of used Kittinger furniture. This is a legitimate business that Respondent has operated for many years. The Respondent is entitled to use the name Kittinger and variations thereof in a fair, nominative sense to describe the furniture is sells and has made accommodations at the request of Complainant to prevent possible confusion. Moreover, this panel is bound by the UDRP paragraph 4(c) which states in relevant part:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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. (emphasis added)
The panel finds that the evidence submitted demonstrates that: the Respondent used the domain names at issue in connection with a bona fide offering of goods and services before notice of this dispute; the Respondent is commonly known by the name Kittinger Collector; and, the Respondent's use of the domains at issue is fair-use and not intended to divert customers or tarnish the trademark rights of the Complainant. Accordingly, the panel finds the Complainant has not met its burden with respect to this element.
(iii) The panel finds that the Complainant has failed to meet its burden in establishing that the domains at issue were registered and are being used in bad faith. The UDRP lists the following circumstances as evidence of a registration and use in bad faith in paragraph 4(b):
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
(i) The panel finds that the domains at issue were not acquired for the purpose of sale to Complainant or a competitor of Complainant and that the evidence supports the finding that the domains are not for sale.
(ii) The panel finds that the Respondent has not registered the domain names at issue to prevent the Complainant from reflecting its mark in a corresponding domain name nor has Respondent engaged in a pattern of such conduct. The panel notes that the Respondent has registered 4 domain names that are the subject of UDRP proceedings. The two domain names at issue in the decision at hand and the kittinger.com and kittingercollector.com domain names at issues in Case No. AF 00107 (a) and (b). The panel finds that the evidence submitted does not show that domain registrations of Respondent constitute a pattern of conduct intended to block Complainant's access to domain names that correspond to its marks.
(iii) The panel finds that the evidence submitted does not support the conclusion that Respondent registered the domain names at issue to disrupt the business of a competitor. The evidence submitted shows that the Parties are not in competition, as the Complainant does not sell used furniture.
(iv) The panel finds that the evidence does not show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark. Respondent has taken reasonable steps to avoid potential confusion at the request of Complainant. The evidence shows that the Respondent seeks to distinguish its business from that of Complainant by only offering for sale furniture manufactured by Complainant's predecessors prior to 1995 and actively works to prevent possible confusion.
As the Complainant has failed to prove any of the listed indicia of bad faith or any other compelling evidence of bad faith, the panel finds that the Complainant has not met its burden with respect to this element.
For the foregoing reasons, the panel concludes that the Complainant has not met its burden of proof under the UDRP paragraph 4 (a)(ii) and (iii). Accordingly, the panel finds the domain names kittengerfurniture.com and kittenger.com should not be transferred to Complainant.
May 8, 2000
(s) Merton E. Thompson