DECISION

Jim Karas v. Jim Karashavaran

Claim Number: FA0209000124992

PARTIES

Complainant is Jim Karas, Chicago, IL, USA (“Complainant”) represented by Sean S. Swidler, of Michael Best & Friedrich LLC.  Respondent is Jim Karashavaran, Piralasharey, Kerala, INDIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <jimkaras.com>, registered with Dotster.

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.

James P. Buchele, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2002; the Forum received a hard copy of the Complaint on September 11, 2002.

On September 12, 2002, Dotster confirmed by e-mail to the Forum that the domain name <jimkaras.com> is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 September 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 10, 2002 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@jimkaras.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 October 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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  <jimkaras.com> domain name is identical to Complainant's JIM KARAS mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant, Jim Karas, is a well-known physical fitness trainer and author of physical fitness articles, columns and the best-selling book Business Plan for the Body, listed on The New York Times Best Seller list for the week of June 10, 2001.  Complainant has been featured in numerous widely distributed periodicals and newspaper articles, news reports and web-distributed stories, and had made numerous television appearances.  Complainant began receiving media coverage as a renowned physical fitness guru as early as 1991.  Complainant was named as one of the best personal trainers in America by Allure magazine in 1998.  Complainant is also the proprietor of the Chicago-based physical fitness consultancy firm Solo Sessions.

Before Respondent registered the disputed domain name Complainant was featured in magazines and newspapers such as USA Today, Self, Chicago Tribune, Good Housekeeping, Chicago Sun-Times, Detroit News, Dallas Morning News, Detroit Free Press, Chicago Magazine, Tycoon, Time, US and More.  Complainant also appeared on television on the shows Good Morning America, Entertainment Tonite, Access Hollywood, Fox News, and The Good Life.

Respondent registered the disputed domain name on January 2, 2002.  On August 26, 2002, Complainant sent an email and letter to the disputed domain name’s technical contact Binoj George.  The email was not returned as undeliverable, and the letter was delivered and signed for by Mr. George.  The only response received by Complainant in relation to these communications was an email wishing Complainant good luck in these proceedings.  Around September 10, 2002, after Mr. George knew of Complainant’s intention to file a Complaint in relation to the disputed domain name, the registration record for the disputed domain name was changed to reflect the name Jim Karashavaran.  Respondent has not made any use of the disputed domain name and there is currently no website at the <jimkaras.com> 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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established that he has common law rights in his name JIM KARAS based on his celebrity status as a fitness guru.  Complainant, a well-known personal trainer, uses his name in order to advertise his services and has provided significant evidence of the goodwill associated with his name.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).  See also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights exist).

Furthermore, Respondent’s <jimkaras.com> domain name is identical to Complainant’s JIM KARAS mark because it incorporates Complainant’s entire common law mark and merely adds the generic top-level domain “.com” to the end.  The addition of a top-level domain is irrelevant because it is a required component of every domain name and therefore does not add any distinctive qualities capable of overcoming a claim of identical or confusingly similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

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

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent has made no use of the disputed domain name since it registered it in January of 2002.  Respondent has therefore held the disputed domain name for almost one year without creating a website, or using the domain name for any other purpose.  The failure to use a domain name for such a length of time without a demonstrable attempt to use it for any purpose is considered to be passive holding.  Passive holding of a domain name does not give rise to rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

Furthermore, Respondent has failed to come forward in this proceeding and present any proof that it is commonly known as “Jim Karas,” or <jimkaras.com>.  Therefore, Respondent has failed to establish that it has any rights or legitimate interests in the disputed 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 a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

Based on the fact that Respondent registered the disputed domain name after the release of Complainant’s book and many of Complainant’s public appearances it can be inferred that Respondent had knowledge of Complainant’s identity and therefore was on notice of Complainant’s rights in his own name when it registered the disputed domain name.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent has made no use of the disputed domain name since its registration in January of 2002.  Therefore, Respondent is engaging in the passive holding of <jimkaras.com>, which is evidence of bad faith use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, based on the goodwill Complainant has established for his name, any use by Respondent of the disputed domain name would not be legitimate and would represent opportunistic bad faith on the part of Respondent pursuant to Policy ¶ 4(a)(iii).  See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

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

DECISION

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

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

James P. Buchele, Panelist

Dated:  November 4, 2002

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