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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Free State Communications, LLC v. Web Development Group Ltd.

Case No. D2007-1070

1. The Parties

Complainant is Free State Communications, LLC, of Lawrence, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.

Respondent is Web Development Group Ltd., of Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain name <ktka.com> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2007. On July 23, 2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On July 23, 2007, Tucows, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2007.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 27, 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 service mark upon which the Complaint is based is KTKA. According to the documentary evidence and contentions submitted, Complainant’s predecessor-in-interest, Northeast Kansas Broadcast Service, registered the KTKA service mark with the United States Patent and Trademark Office (“USPTO”) as Registration No. 1,494,552 which issued on June 28, 1988 for “television broadcast services”. The registration expired on October 1, 1996 but actual use of the KTKA mark by Complainant and its predecessor-in-interest continued without interruption. Complainant filed with the USPTO Application Serial No. 77/209,680 on June 19, 2007. Complainant claims ownership of common law rights to the KTKA mark as a result of its extensive use thereof in connection with television broadcast services originating in Topeka, Kansas, United States of America and serving a twelve county Designated Market Area in Northeast Kansas.

Respondent registered the domain name <ktka.com> with Tucows, Inc. on April 3, 2003. Complainant sent a notice of its rights to Respondent by a letter dated May 2, 2007, and states that no response was received.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical to a service mark in which the Complainant has rights.

Complainant further argues that Respondent holds no trademark registration for the KTKA trademark in the United States of America or under the Madrid Convention, and is not using the KTKA mark in any known manner. Therefore, Complainant contends that it has provided a prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant also argues that Respondent is engaged in the pattern of registering large volumes of domain names and generating revenue from pay-per-click advertising provided on the associated websites. Complainant contends that the disputed domain name resolves to a website which provides links to other unrelated websites, which websites presumably generate revenue to Respondent on a pay-per-click or other basis. In addition, Complainant contends that Respondent registered the domain name at issue to attempt to profit by attracting to the associated website Internet users who are searching for information on Complainant’s services offered under the KTKA mark.

Finally, Complainant contends that following delivery of Complainant’s letter dated May 2, 2007 the disputed domain name was transferred to Loyal Internet Group, Ltd. and thereafter returned to Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by Paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph. 2.2). However, Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no apparent exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

The Panel notes that the KTKA service mark was registered with the USPTO as of June 28, 1988 and that such registration expired on October 1, 1996. Complainant represents and warrants that actual use of the KTKA mark by Complainant and its predecessor-in-interest continued without interruption since 1987. Reference is made to Annex 4 of the Complaint. A new KTKA trademark application was filed by Complainant with the USPTO on June 19, 2007 while the disputed domain name was registered by Respondent on April 3, 2003, i.e., during the period in which the KTKA service mark was not registered.

Therefore, a preliminary issue to be addressed is whether Complainant has protectable rights in the KTKA mark. There are a number of UDRP cases where the panel found that the Policy applies to unregistered marks. “With regard to the first question, it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark.” Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7. The consensus view in this section of the Overview is that:

“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”

Complainant has not provided extensive evidence that the KTKA service mark has reached a high level of goodwill. However, in the Panel’s opinion, sufficient evidence is given in the Affidavit attached to the Complaint as Annex 4 in view of the fact that Respondent failed to advance any argument or evidence in opposition to the Complainant’s submitted Affidavit and other contentions. In addition, the Panel carried out an independent research on Internet by using Google search engines and found a number of web pages related to KTKA 49 Channel which confirm the existence of sufficient reputation and goodwill of the KTKA service mark at least in the area served by the KTKA TV station. See e.g. “http://www.stationindex.com/tv/callsign/KTKA” (visited on October 10, 2007). Therefore, the Panel accepts that Complainant has provided adequate grounds for a finding in the present case that it holds common law service mark rights in the name “KTKA”.

In the instant case, the disputed domain name <ktka.com> is identical to a service mark in which Complainant has rights. In fact, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the requirement of Paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The basic argument advanced by Complainant is that it has provided a prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name because Respondent holds no trademark registration for the KTKA mark, and is not using the KTKA mark in any known manner.

The consensus view in the UDRP Panel decisions has been that once a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests in the domain name, respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied Paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph. 2.1).

Respondent has failed to provide the Panel with any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

There is no dispute that Respondent is not commonly known by the name “KTKA” and that Respondent was not authorized by Complainant to use the KTKA mark. Therefore, the Panel finds that the Complainant has done enough to establish a prima facie case in this instance.

In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

Complainant advances two basic arguments to show that the disputed domain name was registered and is being used in bad faith: (i) Respondent is engaged in the pattern of registering large volumes of domain names, and (ii) Respondent attempts to profit by attracting to the associated website Internet users who are searching for information on Complainant’s services offered under the KTKA mark and by generating revenue from pay-per-click advertising provided on the associated websites.

To support the first contention, Complainant cites two previous WIPO cases involving a respondent called Web Development Group Ltd. where the disputed domain names were ordered to be transferred to the complainant. Weld Racing, Inc. v. Web Development Group Ltd., WIPO Case No. D2005-0357; Forbes LLC v. Web Development Group Ltd., WIPO Case No. D2006-1655. In those cases the respondent was a company of identical name but with a different stated address in Belize City, Belize. Complainant also cited three NAF cases involving the same respondent of also with a stated address in Belize City, Belize. Iowa Sport Foundation v. Web Development Group Ltd., Claim No. FA0511000600886; Norm Thompson Outfitters, Inc. v. Web development Group Ltd., Claim No. FA0602000645461; Aventura Mall Venture v. Web Development Group Ltd., Claim No. FA0704000964645.

In this case, while Complainant initially identified Respondent as a company of Belize City, Belize, the information about Respondent provided by Complainant and confirmed by Registrar Tucows, Inc indicates an address for Respondent in Toronto, Canada. There are only two WIPO cases involving a respondent called Web Development Group Ltd. However, an independent research conducted by Panel at NAF domain name decisions indicates that there is at least one decision where Web Development Group Ltd. was identified as a Canadian company. Saba’s Stores Inc. v. Web Development Group Ltd., Claim Number: FA0706000997451 (decided on August 2, 2007). In that case the panel identified the respondent as the same appearing in other similar cases: “In all of those cases, Focus on the Family v. Web Development Group, Ltd., FA 578410 (Nat. Arb. Forum Nov. 30, 2005); Iowa Sports Foundation, supra; Norm Thompson Outfitters, Inc., LLC v. Web Development Group, Ltd., FA 645461 (Nat. Arb. Forum April 4, 2006); Forbes, LLC v. Web Development Group, Ltd., D2006-1655 (WIPO May 9, 2007); Aventura Mall Venture, LLC v. Web Development Group, Ltd., FA 964645 (Nat. Arb. Forum May 31, 2007), a similar fact pattern emerges – the same pattern found in this case.”

Accordingly, the Panel concludes that Respondent has shown a pattern of registering and using domain names in bad faith. Therefore, the Panel finds that the information provided by Complainant and Respondent’s history indicate bad faith in the registration of the disputed domain name.

Paragraph 4(b)(iv) of the Policy applies if the Complainant establishes that the Respondent registered and is using the disputed domain names in order to confuse and divert Internet traffic to its website for commercial gain. There is no direct evidence that Respondent intended to use the disputed domain names to attempt to profit by generating revenue from pay-per-click advertising provided on the associated websites. Complainant alleges, but does not prove, that the website at “www.ktka.com” provides links to other unrelated sites and that these other websites presumably generate revenue to Respondent on a per-per-click website.

In different occasions in the period of September 27 through October 10, 2007 the Panel attempted to reach a website to which the disputed domain might resolve, and did not succeed. The Panel concludes that Respondent either has discontinued use of the domain name to resolve to a specific website or does not maintain active use of the domain name.

This fact does not prevent the Panel from resolving the controversy. Respondent’s intention may be determined by common sense inferences from circumstantial evidence.

As decided in previous UDRP decisions, the evidence of the inactivity or lack of use of the disputed domain name may in appropriate cases be found to amount to passive holding by Respondent and a finding in the circumstances of use of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc., WIPO Case No. D2000-0022; J. Garcнa Carriуn, S.A. v. Ma Josй Catalбn Frias, WIPO Case No. D2000-0239.

The consensus view in the URDP panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph. 3.2). The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275.

There is an additional factor to be considered. Complainant has provided evidence that Respondent attempted to transfer the disputed domain name to a third party upon receipt of a warning letter from Complainant. Accordingly, the Panel concludes that in the instant case Respondent’s history and other circumstantial evidence indicate that the disputed domain name is used in bad faith.

Therefore, the Panel finds that the requirement of Paragraph 4(a)(iii) of the Policy is 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 <ktka.com> be transferred to Complainant.

Manoel J. Pereira dos Santos
Sole Panelist

Dated: October 11, 2007