Knockouts.com

The timeline behind knockouts.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Knockouts LP v. Dean Rodatos Claim Number: FA0506000492944 PARTIES Complainant is Knockouts LP (“Complainant”), represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201. Respondent is Dean Rodatos (“Respondent”), 26 Wilshire, Daly City, CA 94015. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <knockouts.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Beatrice Onica Jarka, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 10, 2005. On June 8, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <knockouts.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 June 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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@knockouts.com by e-mail. A timely Response was received and determined to be complete on July 1, 2005. The hard copy of the Response was received on July 5, 2005. A timely additional submission was received from Complainant on July 6, 2005. A timely additional submission was received from the Respondent on July 11, 2005. On July 19, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant The Complainant contends that: § it is a company called Knockouts and it has used continuously the mark KNOCKOUTS as well as other marks incorporating the term KNOCKOUTS, in connection with providing men’s hair and grooming services and other related goods and services; § it has registered numerous KNOCKOUTS marks with USPTO; § the disputed domain name is identical to trademarks and services marks in which the Complainant has rights; § the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection to bona fide offering of goods or services, at no time before having notice of this dispute; § the Respondent is not making and has never made a legitimate noncommercial or fair use of the disputed domain name. § the Respondent has offered the disputed domain name in discussion for sale or rent on its website for valuable consideration. § the Respondent is not known by the disputed domain name; B. Respondent The Respondent contends that: § the disputed domain name was registered in 1996 nearly eight years before Complainant ever filed for a Trademark or First Use in Commerce. § he has legitimate rights to the disputed domain name, which was an active web site featuring Sports News and Entertainment as well as the sale of selected merchandise, and was used as such, in good faith from 1996 to 2001. § he was well known as the owner of the disputed domain name and was actively involved in the marketing of it. § he does not intend to use the name Knockouts or the disputed domain name now or in the future in the business sector of which the Complainant is now engaged in and has their trademark registered under. (IC 044 Goods and Services) ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) ¶ 3(b)(ix), therefore trademarks can not be confusingly similar. § he is exploring several business opportunities centered on the name Knockouts and disputed domain name. On or before November 2004 the “For Sale” listing on disputed domain name was removed and replaced with “Coming Soon” to avoid any future calls or inquiries regarding the sale of <knockouts.com> and due to the fact that the Respondent is engaged in talks to develop a venue around the name KNOCKOUTS and fully intends to use KNOCKOUTS and the disputed domain name in the near future. C. Additional Submissions C1. Additional submission of the Complainant In response to the Respondent’s allegations, the Complainant contends that: · according to the Internet Archiving service, the history of the disputed domain name as indexed contradicts with the statements and evidences provided by the Respondent; · some of the allegations of the Respondent are not supported by evidence; · the Respondent does not deny that it offered the domain name for sale and does nor deny the conversation with the representative of the Complainant; · the Respondent took steps to explore possibilities to use the disputed domain name for business only after the Respondent had notice of the dispute; · the Respondent acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; · the Complainant’s trademark rights are not questioned by the Respondent. C2. Additional submission of the Respondent In response to the Complainant’s additional submissions, the Respondent states that: · the information on Internet Archive are not 100% reliable; · he does state that the alleged conversation with Mr. Friday never took place and the Complainant or the Complainant’s representatives never provided the Respondent with any documentation in writing, by fax or by email, identifying themselves or making any claim to the disputed domain name in October 2003 or ever. · the actions of the Complainant are attempts at reverse domain name hijacking; The Respondent requests the Panel to find that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, according to the Rules ¶ 15(e). FINDINGS The Respondent registered the disputed domain name on April 30, 1996. The Complainant registered the KNOCKOUTS, KNOCKOUTS GIRLS and KO marks with USPTO starting on May 18, 2004, with filing dates starting on January 27, 2003. The trademarks KNOCKOUTS, KNOCKOUTS GIRLS and KO are registered for international class 44 (US class 100 and 101): hair, care services, namely hair styling and hair cutting. The Complainant failed to prove all of the three Policy elements to obtain an order that the disputed domain name is transferred. 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.” 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 The disputed domain name is obviously identical to the Complainant’s KNOCKOUTS mark. It incorporates the Complainant’s trademark in its entirety, with the only difference being the addition of the generic top-level domain ”.com.” The relevant part of the domain name <knockouts.com> is KNOCKOUTS. The attachment of the suffix “.com” specific to the gTLD, in the Respondent’s Domain Name, does not render it visually or phonetically different from Complainant’s trademark. For these reasons, as numerous prior ICANN panels have found in many similar cases (See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000); see also Lufthansa AG v. Jin Wang Huh, D2001-1226 (WIPO Dec. 11, 2001); see also eNamix, inc v Li Yen Chun, D2001–1499 (WIPO Mar. 27, 2002); see also Fortum Corp. v. Li Yen Chun, D2002-0324 (WIPO June 21, 2002); see also Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000); see also Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 12, 2000); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001), the Panel finds that such a minor alteration to Complainant’s registered mark is insufficient to negate the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). Rights or Legitimate Interests The disputed domain name was registered nearly 8 years before the Complainant obtained rights out of the registration of the trademark KNOCKOUTS and 7 years before the first use in commerce by the Complainant of the said trademark. Therefore, the legitimate interests or rights in using the disputed domain name have to be considered also from this perspective. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because he offered the disputed domain name for sale or lease for profit. There is not much dispute among the parties that, at a certain moment in time, the disputed domain name was offered for sale or lease. In the opinion of the Panel, the exact dates when such offer was made and when it was removed from the site where the disputed domain name resolves is without relevance. There is no evidence whatsoever, that the Complainant or the Complainant’s representatives ever provided the Respondent with any documentation in writing, by fax or by email, identifying themselves or making any claim to the disputed domain name. The only indirect evidence in connection to the alleged notice from the Complainant to the Respondent is the “Declaration of Tom Friday” - exhibit F to the Complaint, which is not confirmed in its entirety by the Respondent. Due to the fact that there is no other further evidence to support the “Declaration of Tom Friday”, the Panel shall not consider it in connection with the alleged notification of the Respondent prior to his posting “Coming Soon” on the website. The Respondent admits a discussion with a Complainant’s representative, somebody other than Tom Friday, but he does not locate the conversation precisely in time. In the opinion of the Panel, the question of whether, before any notice to the Respondent of the dispute, he used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services (Policy ¶ 4(c)(i)) may be analyzed from two alternative points of view. First, before posting the “sale or lease” banner, and then, after replacing the “sale or lease” banner with “Coming Soon.” The Respondent’s allegations regarding the use of the disputed domain name, first, to promote traffic to his night club “Stocks and Blondes” and then, to develop a membership based online sports news and entertainment service until 2001, are contested by the Complainant’s submitted evidences - exhibits of the pages of the disputed domain name as indexed in the Internet Archive. Even though the content of the archives are not 100% reliable according to the “Terms of Use, Privacy Policy, and Copyright Policy” displayed on the web, the Panel is not inclined to value the assertions of the Respondent in connection with the use of the disputed domain name with a bona fide offering of goods or services. The other period of time, starting after the replacement of the “sale or lease” banner with the “Coming Soon” statement supports the Respondent’s allegations as to his demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. At the date of this decision the disputed domain name announces itself as “Coming Soon.” It is difficult to assess with certainty the state of the Respondent’s preparations to use the site for legitimate commercial purposes. The Panel is confronted with the Respondent’s assertion of his intention, supported by some apparent evidence of preparation, the statement of Oscar Tenedora from Golden Gloves, the statement of Philip W. Peters from Theien Reid & Priest LLP - Attorneys At Law, on the one side, and the assertion by the Complainant that there is no evidence of any business being carried on under this name and that any such intention expressed would not be true, on the other side. See EasyJet Airline Co. Ltd. v. Holt, D2000-0465 (WIPO Aug. 24, 2000). Having given due consideration to the evidence the Panel finds that there is some evidence of preparation to trade by the Respondent after the banner with “sale or lease” was removed, and consequently finds that the Complainant has failed to fulfill the necessary second leg of the requirements in the Policy, namely showing that the Respondent has no rights or legitimate interests in respect of the Domain Name. Registration and Use in Bad Faith As the Panel stated before, the disputed domain name was registered nearly 8 years before the Complainant obtained rights out of the registration of the trademark KNOCKOUTS and 7 years before the first use in commerce by the Complainant of the said trademark. There is no assertion from the Complainant’s side, whatsoever, that the Respondent did have actual knowledge of Complainant’s KNOCKOUTS mark when it registered the disputed domain name. The Complainant contends that it has used KNOCKOUTS mark continuously, but it does not say since when. The only data regarding the use of the KNOCKOUTS mark are those in the trademark registration, which indicate 2003 as the first use in commerce of the mark. Therefore, the Panel finds that there is no evidence that the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he has engaged in a pattern of such conduct; or primarily for the purpose of disrupting the business of a competitor; or, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location. Furthermore, the Panel finds that Respondent’s offer to sell the domain name does not constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i). According to Policy ¶ 4(b)(i), in order for the Panel to find bad faith the case should contain: (i) circumstances indicating that the Respondent has registered or 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 your documented out-of-pocket costs directly related to the domain name. The Panel could not find any such circumstances, because the Complainant did not provide evidence as to its existence as a company and use of the KNOCKOUTS trademark at the registration time of the disputed domain name. Offering to sell a domain name is insufficient to amount to bad faith under the Policy. See Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”). Reverse Domain Name Hijacking According to UDRP Supplemental Rules ¶ 7(d), the additional submissions and responses to additional submissions may not amend the original Complaint and Response. The request of the Respondent for a finding of Reverse Domain Name Hijacking, contained in the additional submission to the Response amends the Response and therefore, cannot be considered by the Panel. DECISION Having not established all three elements required under the ICANN Policy, the Panel concludes that relief requested by the Complainant shall be DENIED. Accordingly, it is ordered that the <knockouts.com> domain name remain with the Respondent. BEATRICE ONICA JARKA Panelist Dated: August 1, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.