WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yummy Foods, LLC v. Kozmo.com, Inc.

Case No. D2012-1484

1. The Parties

Complainant is Yummy Foods, LLC of Los Angeles, California, United States of America, represented by Brand Ventures Intellectual Property Law, United States.

Respondent is Kozmo.com, Inc. of New York, New York, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <kozmo.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2012. On July 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

Further to a Center’s email communication to the Registrar, the Registrar clarified that the Disputed Domain Name renewal is in arrears 7 years. On August 8, 2012, Complainant wrote an email to the Center to confirm that in the event the Disputed Domain Name is transferred to Complainant, it will assume and pay all outstanding fees associated with the Disputed Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2012.

The Center appointed Michael A. Albert as the sole panelist in this matter on September 10, 2012. 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

As Respondent has not filed a response the facts as related by Complainant and supported by appendices are accepted as true.

Complainant, Yummy Foods, LLC owns United States Trademark Registrations 4,041,921 and 4,041,920 for the standard character mark KOZMO. The mark was registered on October 18, 2011 and Complainant has been conducting its retail and delivery services under the mark since March 2011.

Respondent, a now defunct corporate entity, owned the United States Trademark Registration 2,544,167 for KOZMO COM which has since lapsed and is no longer a live registration. The Disputed Domain Name <kozmo.com> was created on April 2, 1997 but the Disputed Domain Name was transferred into Network Solutions, LLC on April 5, 2005 and maintained in a locked status since that date.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.

Complainant conducts online retail and delivery services under the KOZMO mark. Complainant contends that the Disputed Domain Name is confusingly similar to its KOZMO mark, because it is identical with the addition of a top-level domain.

Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent does not exist and has not made any demonstrable use of the Disputed Domain Name in connection with a bona fide offering of goods or services.

Finally, Complainant contends that Respondent is defunct and as such is in violation of United States law and the Network Solutions’ Terms of Service through owning the Disputed Domain Name. Complainant also raises Respondent’s failure to update its contact information in violation of ICANN’s policies. Complainant concludes that these violations render Respondent’s registration of the Disputed Domain Name a bad faith registration.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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.”

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

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(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.

Here, Respondent provided no response, and the deadline for so doing expired on August 28, 2012. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

Complainant has offered sufficient evidence to prove it is the owner of a valid United States trademark and has common law rights to the KOZMO mark.

The first issue is whether the Disputed Domain Name and the KOZMO mark are identical or confusingly similar.

The Disputed Domain Name combines two elements: (1) Complainant’s KOZMO mark and (2) the suffix “.com”. As it is well established that the top-level domain suffix (i.e., “.com”) may be disregarded for determining similarity, the Disputed Domain Name is identical to the KOZMO mark and therefore confusingly similar to Complainant’s KOZMO mark under the Policy. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.

This Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:

(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Respondent is a now defunct corporate entity which ceased operations in April 2001. During its existence, Respondent owned the United States trademark for KOZMO.COM which has since lapsed. The Disputed Domain Name appears to have been part of a rental service which in April 2001 announced the end of operations to site visitors. On April 5, 2005 the Disputed Domain Name was transferred into Network Solutions LLC where it has been in locked status ever since. Therefore, Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and services while it continued operations. Complainant contends that Respondent’s failure to continue to use the Disputed Domain Name or Respondent’s non-existence terminated any rights or legitimate interests in the Disputed Domain Name.

This Panel acknowledges the merits of Complainant’s contentions but as the final decision turns on the question of bad faith this Panel will assume but not hold that Respondent as a non-existent entity cannot have rights or legitimate interests in the Disputed Domain Name. Metalife AG v. Metalife Information Systems Inc., WIPO Case No. D2002-0468 (finding that if Respondent is non-existent it cannot have rights or legitimate interests).

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

In this case, Respondent’s registration and use of the Disputed Domain Name do not demonstrate bad faith as contemplated by the Policy.

Respondent could not have known of Complainant’s mark when it registered the Disputed Domain Name. In fact, as Complainant has repeatedly emphasized, Respondent ceased to exist almost ten years before Complainant began operations under the KOZMO mark. Furthermore, during its time in operation Respondent had a United States trademark for the Disputed Domain Name and offered bona fide goods and services through the Disputed Domain Name. Accordingly, Respondent did not register the Disputed Domain Name in bad faith. Lastly, the Disputed Domain Name has been in locked status without reverting to any active website since 2005. These facts demonstrate that Respondent’s conduct does not qualify as bad faith under paragraph 4(b) of the Policy.

Complainant contends that each act of renewal by Respondent constituted bad faith registration because Respondent is a non-existent entity and provided incorrect contact information. It is worth noting that the history of the Disputed Domain Name remains unclear. Specifically, if the Disputed Domain Name is seven years in arrears, the question persists whether Respondent did in fact renew the Disputed Domain Name (whether with inaccurate information or otherwise) or whether the Registrar continued to maintain the Disputed Domain Name registration without instruction or payment. Regardless of that question, Complainant has not proved bad faith. To begin, Complainant’s contention that Respondent does not exist raises difficult questions as to the validity of the present proceedings, since both parties must have a legal existence. Mutuelle d’Assurance du Corps de Santé Français v. SA CHA REBK LLC, WIPO Case No. D2000-0450. While this Panel acknowledges the inherent difficulty of securing a domain name from a non-existent entity, and the possible validity of the contention that a non-existent entity cannot in good faith maintain a domain name, the Policy was not designed as a tool for obtaining domain names from defunct corporations. Metalife AG v. Metalife Information Systems Inc., WIPO Case No. D2002-0468 (holding that if mistaken transferee of domain name did not exist the complainant could not proceed through the mechanism of the Policy); SNR Roulements v. SNR Semiconductor Inc., WIPO Case No. D2004-0100 (holding the limitations of the UDRP procedure prevented determination of whether Respondent existed or ceased to exist following a merger); Dr. Mehmet Kahveci, HyperLink International LTD. V. Anil Soncu / Anil Oncu, Profesyonel, Mehmet Budak, WIPO Case No. D2011-0392 (holding that UDRP proceedings were an inappropriate forum to address hacking and other legal disputes between the parties). Therefore, Complainant’s contention in regard to bad faith is limited to the argument that Respondent provided incorrect contact information or failed to update its contact information. Other UDRP panels have found that incorrect contact information can support a finding of bad faith but supplying incorrect information cannot in the opinion of this Panel be considered by itself an act of bad faith. See Grupo Televisa, S.A., de C.V et al. v. Autosya S.A. de C.V., et al., WIPO Case No. DTV2001-0007; BellSouth Intellectual Property Corporation v. Texas Internet, WIPO Case No. D2002-0559. Because Complainant’s only evidence of bad faith is that Respondent provided incorrect information there is insufficient evidence to find bad faith, particularly at the time of registration of the Disputed Domain Name.

For all of the foregoing reasons, this Panel finds that Complainant has failed to prove that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, this Panel finds that Complainant has failed to prove the third and final element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Michael A. Albert
Sole Panelist
Dated: September 24, 2012