DECISION

Klass Time, LLC v. Ajax Private Holdings

Claim Number:  FA0309000193930

PARTIES

Complainant is Klass Time, LLC, Houston, TX, USA (“Complainant”) represented by Heather C. Brunelli, of Thompson & Knight LLP.  Respondent is Ajax Private Holdings, Panama, Panama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <klass.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com (hereinafter “Dotregistrar.Com”).

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 A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 12, 2003; the Forum received a hard copy of the Complaint on September 15, 2003.

On September 15, 2003, Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <klass.com> is registered with Dotregistrar.Com and that Respondent is the current registrant of the name. Dotregistrar.Com has verified that Respondent is bound by the Dotregistrar.Com 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 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2003 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@klass.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, 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 makes the following assertions:

1. Respondent’s <klass.com> domain name is identical to Complainant’s KLASS mark.

2. Respondent does not have any rights or legitimate interests in the <klass.com> domain name.

3. Respondent registered and used the <klass.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Klass Time, LLC, markets a line of beverage products under the KLASS mark. Specifically, Complainant’s KLASS mark is used to denote powdered drink mixes and drink concentrates marketed to the Latino and Hispanic market. Complainant holds numerous trademark registrations for the KLASS mark worldwide, from the United States (e.g. U.S. Reg. No. 2,233,570, filed with the U.S. Patent and Trademark Office on August 8, 1997 and approved for registration on March 23, 1999)  to Panama, Respondent’s nation of domicile (Reg. No. 98456). Complainant has used its mark in commerce since as early as April 1998.

Respondent, Ajax Private Holdings, registered the <klass.com> domain name on October 4, 1998, without license or authorization to use Complainant’s KLASS mark for any purpose. Respondent uses the disputed domain name to divert Internet users to adult-oriented websites that feature pop-up advertisements.

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 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 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 rights in the KLASS mark through registration of the mark with the appropriate governmental agencies worldwide, as well as through use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office).

Respondent’s <klass.com> domain name is identical to Complainant’s KLASS mark. The addition of the top-level domain “.com” does not distinguish the second-level domain name “klass” from the KLASS mark. 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that the <klass.com> domain name is identical to Complainant’s KLASS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name, which is identical to Complainant’s KLASS mark, to subject Internet users to adult-oriented material and commercial pop-up advertising. Respondent’s unauthorized use of Complainant’s mark for these tarnishing purposes is not a bona fide offering of goods and services as contemplated by Policy ¶ 4(c)(i), and its commercial use of pop-up advertising and presumed referral fees place Respondent’s activities outside the scope of Policy ¶ 4(c)(iii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that the use of the disputed domain name in connection with pornographic images and links “tarnished and diluted” Complainant’s mark and this was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Fo rum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-orientated website did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).

As Respondent appears to be known as “Ajax Private Holdings,” and as none of the content related to the disputed domain name refers to the KLASS mark, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <klass.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is intentionally seeking to capitalize on the goodwill that Complainant has built-up around the KLASS mark in order to earn a profit, be it through referral fees or commissions from pop-up advertising. Respondent’s deliberate and knowing registration of a domain name that is identical to Complainant’s mark for purposes that commercially benefit Respondent, at the expense of the tarnishment of the KLASS mark, evidences bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) ( “[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Microsoft Corp. v. Hor ner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name).

The Panel thus finds that Respondent registered and used the <klass.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

James A. Carmody, Esq., Panelist

Dated:  October 29, 2003

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