Generic Top Level Domain Name (gTLD) Decisions

Complainant is Kinko's Ventures, Inc., Ventura, CA, USA ("Complainant"). Respondent is MIC, Closter, NJ, USA ("Respondent").

The domain names at issue are kinkoaol.com, aolkinko.com registered with BulkRegister.com.

The Panelist certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as the panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 9, 2000; The Forum received a hard copy of the Complaint on November 7, 2000.

On Nov 10, 2000, BulkRegister.com confirmed by e-mail to the Forum that the domain names kinkoaol.com, aolkinko.com are registered with BulkRegister.com and that the Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 2000 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@kinkoaol.com, and postmaster@aolkinko.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 December 13, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson 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 Uniform 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 the Respondent.

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

A. Complainant alleges the following:

B. Respondent did not submit a response in this matter.

The Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") state the following with regard to default cases:

In this case, Respondent has not submitted a response, and therefore this Panelist may infer, for the purposes of this decision, that the averments in the complaint are true. 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").

This panelist also takes note that Complainant has attempted to contact Respondent regarding this matter, and that Respondent has not responded.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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:

(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) 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.

For the purposes of this element of the ICANN Policy, Complainant must demonstrate two things, that it has rights in a trademark or service mark, and that the domain names at issue are identical or confusingly similar to that mark. The evidence indicates that Complainant has demonstrated both elements.

Complainant holds several federal trademark registrations for its KINKO’S mark, including Reg. No. 1,896,175; 1,869,915; 1,878,902; 1,109,701; and 1,878,998. This is sufficient to evidence Complainant’s rights in a mark.

The domain names at issue, kinkoaol.com and aolkinko.com, are confusingly similar to Complainant’s KINKO’S mark, especially in light of Complainant’s recent strategic alliance with America On Line (AOL). Linguistically, the domain names contain all but one letter of Complainant’s KINKO’S mark. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, americanonline.com, is confusingly similar to Complainant’s famous mark).

Additionally, the alliance between Kinko’s and AOL, which was announced on February 16, 2000, could lead a reasonable person to believe that a web site associated with either of the domain names at issue was affiliated or sponsored by Complainant. Therefore, this panelist finds that the domain names also are confusingly similar to Complainant’s KINKO’S mark.

The Panel finds that the domain names in issue are identical to and confusingly similar to Complainant’s registered mark.

The ICANN Policy provides that Respondent may demonstrate rights or a legitimate interest in a domain name by providing evidence of any of the following:

The evidence presented does not indicate that Respondent provided or that Respondent could provide evidence of any such right or legitimate interest. Respondent has not demonstrated any preparations to use the domain names in a bona fide offering of goods or services. In fact, because the domain names indicate an association between Kinko’s and AOL, it is doubtful that any future use could be considered a bona fide offering. Respondent does not appear to be commonly known by either of the domain names. Respondent is not making any use of the domain names, commercial, noncommercial or otherwise.

Therefore, this Panel concludes that Respondent has no rights or legitimate interest in the domain names.

This panel also finds that Respondent’s registration of the domain names kinkoaol.com and aolkinko.com indicates bad faith under the ICANN Policy and warrants granting Complainant’s requested relief.

The circumstances of bad faith listed under Policy ¶ 4.b. are listed in particular, but without limitation. UDRP Panels have held other circumstances of bad faith can warrant transfer of a domain name. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) ("[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith").

The timing of Respondent’s registration of the domain names kinkoaol.com and aolkinko.com when compared with the announcement of the Kinko and AOL agreement clearly indicates opportunistic bad faith. See America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith).

The fact that Respondent registered the domain names on the same date Complainant announced a strategic alliance with AOL evidences Respondent’s intent to reap some sort of financial reward from its registration, either through reselling the domain names, or by using the fame associated with the KINKO’S and AOL marks to draw Internet traffic to an online location. When there is no legitimate explanation for Respondent’s conduct, and any future use of the domain names would further injure Complainant, a finding of registration and use in bad faith is justified. See Hewlett-Packard Company v. Greg Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith). In this case, it is clear to the Panelist that the domain names were registered purposefully, non-randomly, and in bad faith.

Therefore, this Panel concludes that Respondent registered and used the domain names in bad faith.

Having satisfied all three ICANN Policy elements, this Panelist concludes that the requested relief shall be granted.

Accordingly, the domain names kinkoaol.com and aolkinko.com shall be and hereby are Ordered to be transferred from Respondent to Complainant.