4th May 2004

DECISION

Kent House Ltd. v. RN, WebReg

Claim Number: FA0403000244527

PARTIES

Complainant is Kent House Ltd. (“Complainant”), 125 Longslow Road, Market Drayton, Shropshire TF9 3QZ.Respondent is RN, WebReg (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kenthouse.com>, registered with Domain Discover.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. Tyrus R. Atkinson, Jr., David H. Bernstein, Esq. and David P. Miranda, Esq., chair as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 10, 2004; the Forum received a hard copy of the Complaint on March 11, 2004.

On March 12, 2004, Domain Discover confirmed by e-mail to the Forum that the domain name <kenthouse.com> is registered with Domain Discover and that the Respondent is the current registrant of the name.Domain Discover has verified that Respondent is bound by the Domain Discover 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 March 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 5, 2004 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@kenthouse.com by e-mail.

Although Respondent did submit a timely copy of its Response by email by the Response deadline of April 5, 2004, Respondent had not submitted a hard copy of the Response, as requried by Policy ¶ 5(a).

The Forum received a timely Additional Submission from Complainant on April 6, 2004.

The Forum received a timely Additional Submission from Respondent on April 12, 2004.

On April 23, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Tyrus R. Atkinson, Jr., David H. Bernstein, Esq. and David P. Miranda, Esq., chair as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name <kenthouse.com> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Kent House Ltd. (“Complainant”) contends that the domain name <kenthouse.com> is identical or confusingly similar to Complainant’s company name legally registered through the registrar of companies for England and Wales.Complainant submits a Certificate of Incorporation for Kent House Ltd. dated September 12, 2003.Complainant contends that <kenthouse.com> is the logical domain name for its business.Complainant further contends that Respondent has no rights or legitimate interests in the domain name because Respondent’s business is the registration and selling of domain names.Complainant further contends that Respondent has registered the domain name for the sole purpose of reselling it to a third party.Complainant submits correspondence showing that Respondent has tried to sell the domain name for a sum of $3,888.00, consideration in excess of Respondent’s out of pocket costs directly related to the domain name.

B. Respondent

Respondent RN. WebReg (“Respondent”) contends that Complainant does not have a registered trademark for the term “Kent House”.Respondent contends that it registered the domain name on November 23, 2003 and that Complainant’s company name was not registered until December 9, 2003.Respondent later admits that Complainant’s registration of its company name was effective as early as September 12, 2003.Respondent asserts that a statement of incorporation does not sufficiently establish rights in the mark under the UDRP.Respondent contends that Complainant’s mark was registered as a business name until shortly before Respondent’s registration of the domain name.Respondent further contends that Complainant has failed to submit sufficient proof to establish secondary meaning, prior to Respondent’s registration of the domain.

Respondent contends that it did not have knowledge of Complainant’s registered company name at the time it registered the disputed domain.Respondent further contends that there is no evidence that Complainant has common law trademark rights to the term “Kent House” or that consumers in the United Kingdom, or the United States, associate Complainant with the term “Kent House”.Respondent did not register the domain name for the sole purpose of selling it to the Complainant, but rather contends that it purchased the domain name as part of its business in which it offers domain name registration, web hosting and email services, as well as paid advertising for search results.Respondent admits that it also offers its domain names for sale to the general public.Finally, Respondent contends that Complainant’s bringing of this case is “reverse domain name hijacking” because Complainant brought the Complaint with knowledge that it has no enforceable trademark rights under the policy.

C. Additional Submissions

Complainant in its additional submission contends that it has common law trademark rights in the term “Kent House” because the company was incorporated October 12, 2003 and it has been doing business under the name “Kent House” since January 2002.It also had an incorporation for Kent House Consulting Ltd. in April of 2002.Complainant has been doing business as Kent House for more than two years with clients, including The Modernization Agency of the National Health Service and the Department of Health.Complainant has also been advertising its business as <kenthouseconsulting.co.uk>; <kenthouse.biz>; and <kenthouse.info>.Complainant contends that Respondent’s business of obtaining paid advertising search results, appearing on Respondent’s websites are insufficient to establish Respondent’s legitimate interests in the domain.Complainant contends that Respondent should have known of Complainant’s use of the Kent House name because it had already registered two other “Kent House” domains, <kenthouse.biz> and <kenthouse.info.

Respondent submits an additional submission contending that Complainant has offered no evidence of substantial consumer association of the mark with Complainant in either the United Kingdom or United States.Respondent also contends that there is no evidence that Respondent knew of, or should have known of, Complainant’s purported mark and Respondent did not conduct a computer search in other domain names containing “Kent House” prior to its purchase of the disputed domain.It also contends that it cannot be expected to do so.Respondent contends that it purchases and offers for sale domain names that contain common terms and are not subject to trademarks.

FINDINGS

The panel finds that the domain name <kenthouse.com> is identical or confusingly similar to Complainant’s business name Kent House Ltd., but Complainant has failed to establish that “Kent House” is a trademark or service mark to which Complainant has rights.Because the panel finds that Complainant has failed to establish the first required element pursuant to paragraph 4(a) of the policy, the request for transfer shall be denied.



DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 provided an incorporation statement to assert that it has rights in the Kent House Ltd. mark.The Kent House name is not registered as a trademark or service mark by Complainant with any national government or authority.Complainant fails to set forth in its Complaint any use of the term Kent House as a trademark or service mark.In determining whether Complainant has established common law trademark rights, two of the Panelists have considered the entire record, including the Complainant’s supplemental submission.Because Complainant lacks any registration of the mark, these Panelists have reviewed the record to determine whether Complainant has established common law trademark rights by demonstrating sufficiently strong identification of its mark by the public, showing the mark as acquired secondary meaning.Although a Complainant in a proceeding such as this may establish common law rights to a mark, the Complainant in this case has failed to do so.See generally, Tees.com, LLC v. Emphasis Tech., Inc., FA 20632 (Nat. Arb. Forum Dec. 27, 2003); Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not establish the requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its favor as Complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for)

A statement of incorporation does not sufficiently establish rights in the mark under the UDRP.Complainant has not established trademark rights in KENT HOUSE LTD.See Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); see also Sampatti.com Ltd. v. Rana, AF-0249 (eResolution July 31, 2000) (finding “[T]he mere fact of creating and operating a company having as a name a common word plus a dot and a TLD suffix does not give to the company itself the sole right to the word”).

 

Complainant has not sufficiently established secondary meaning in its mark.Absent evidence that establishes that relevant consumers think Complainant is the source or origin of the KENT HOUSE LTD mark, Complainant has not established secondary meaning.See Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)(finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

In sum, these two Panelists found that Complainant failed to present sufficient evidence of trademark or service mark rights to the domain name at issue and thus has not satisfied its burden under the first factor.

The third Panelist also finds that Complainant has not satisfied its burden under this first factor, but for somewhat different reasons.This Panelist has refused to consider Complainant’s effort in its supplemental submission to show common law rights in the KENT HOUSE trademark.Rather, this Panelist believes that a showing of trademark rights should have been included in the initial Complaint, and that supplemental submissions should only be accepted if they are rebutting defenses that could not reasonably have been anticipated, or to bring new facts or precedent to the Panel’s attention.Elec. Commerce Media v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 1, 2000); Pacific Fence & Wire Co.v. Pacific Fence, D2001-0237 (WIPO June 11, 2001).Because the initial Complaint had no allegations at all to support a finding of trademark rights, the third Panelist finds that Complainant has failed to satisfy its burden of proving that it has trademark rights in the KENT HOUSE mark.

In conclusion, the Panel unanimously agrees that Complainant has failed to present sufficient evidence of trademark or service mark rights to the domain name at issue, and thus that Complainant cannot satisfy its burden under the first factor of the Policy.

Rights or Legitimate Interests

Since the Panel has determined that Complainant did not meet its burden in establishing first element of its claim, the Panel did not consider whether Respondent had any rights or legitimate interests in the domain name.

Bad Faith Registration and Use

Since Complainant has failed to meet its burden with respect to the first element of its claim, the Panel did not consider whether there was bad faith registration and use of the domain name.

Respondent has contended that commencement of this proceeding constitutes “reverse domain name hijacking” on the part of Complainant.A claim of reverse domain name hijacking is a serious claim and should not be made without sufficient proof and support that the initial Complaint itself was brought in a bad faith effort to hijack a domain name in which the Complainant lacks rights.Although, the Panel finds that Complainant is not entitled to the transfer of the domain name, Complainant does have trade name rights in the KENT HOUSE name and appears to have brought this Complaint in a good faith, albeit mistaken, belief that such rights are sufficient to justify transfer under the Policy.Respondent has not provided sufficient proof that Complainant acted in bad faith in commencing this proceeding.

DECISION

Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief requested by Complainant shall be DENIED.

David P. Miranda, Esq., Chair

David H. Bernstein, Esq. and Hon. Tyrus R. Atkinson, Jr. Panelists

 

Dated: May 4, 2004