Wernick-key.com

The timeline behind wernick-key.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.

DECISION KCINREW, INC d/b/a Wernick Key & Lock Service v. Oliver Miller Claim Number: FA2306002048902 PARTIES Complainant is KCINREW, INC d/b/a Wernick Key & Lock Service ("Complainant"), represented by Adam K. Beattie of Chuhak & Tecson, P.C., Illinois, USA. Respondent is Oliver Miller ("Respondent"), Illinois, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <wernick-key.com>, registered with NameCheap, Inc. 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. David E. Sorkin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on June 13, 2023; Forum received payment on June 13, 2023. On June 14, 2023, NameCheap, Inc. confirmed by email to Forum that the <wernick-key.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@wernick-key.com. Also on June 14, 2023, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 Complainant is a locksmith service that has operated in or near Chicago, Illinois, since 1901. Complainant operates under the registered assumed name Wernick Key and Lock Service, and was incorporated in 1990 under the name KCINREW, INC ("Wernick" spelled backwards). Complainant has used WERNICK KEY as a mark for its services continuously since 1901, providing services to "tens of thousands" of clients. Complainant states that it "has expended significant resources on marketing and advertising campaigns" over that time and is rated on various review sites. Complainant provided evidence of Google search results for "wernick key" that includes links to those reviews, and nearly all of the search results relate to Complainant (other than the first, which is a link to the website at the disputed domain name). Complainant uses a logo consisting of the word WERNICK over a stylized key. Complainant asserts common law trademark rights in WERNICK KEY and WERNICK KEY & LOCK SERVICE arising from longstanding use, promotion, and public recognition. The disputed domain name <wernick-key.com> was registered in January 2021. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name is being used for a website that displays a logo similar to that used by Complainant. The website promotes "Wernick Key Locksmith" in Chicago, Illinois, but displays a telephone number apparently controlled by Respondent. Complainant alleges that Respondent is using the domain name to promote one or more unknown third parties that offer directly competing services, by deceiving users into believing that they are hiring Respondent. Complainant states that it has received complaints from customers of Respondent who have been deceived in this manner. Complainant states further that Respondent does not hold the locksmith license that is required by Illinois law, and that Respondent is violating Illinois law by advertising locksmith services without disclosing a full street address or license number on Respondent's website. Complainant states that Respondent is not commonly known by the domain name and is not licensed or otherwise authorized to use Complainant's mark. Complainant contends on the above grounds that the disputed domain name <wernick-key.com> is identical or confusingly similar to its WERNICK KEY and WERNICK KEY & LOCK SERVICE marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. 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 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. 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(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations"). Identical and/or Confusingly Similar To prevail under the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. If the claim relies upon common law rights, Complainant must present evidence that the mark has acquired secondary meaning — i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3. Complainant asserts that it has common law trademark rights in WERNICK KEY and WERNICK KEY & LOCK SERVICE arising from its use of those terms in connection with locksmith services over a period of more than 100 years. Complainant has provided evidence suggesting that the term WERNICK KEY is used by third parties to identify Complainant's services and that this is the predominant or exclusive use of the term. In the absence of any challenge by Respondent, the Panel considers the evidence provided by Complainant sufficient to demonstrate common law rights in the WERNICK KEY mark for purposes of paragraph 4(a)(i) of the Policy. The disputed domain name <wernick-key.com> corresponds to Complainant's WERNICK KEY common law mark, substituting a hyphen for the space and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Vision Studios LLC v. Kirk Dusty, FA 1284125 (Forum Nov. 4, 2009) (finding <fpscheats.com> and <fps-cheats.org> confusingly similar to FPS CHEATS); Abbott Laboratories v. Kumar Patel, FA 740337 (Forum Aug. 15, 2006) (finding <abbott-laboratories.com> identical to ABBOTT LABORATORIES). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights. Rights or Legitimate Interests Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006). The disputed domain name corresponds to Complainant's common law mark without authorization, and it is being used to promote directly competing services by passing off as Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Steve Wainshtok dba Magic Locksmith v. Magic Locksmith, FA 1711129 (Forum Feb. 16, 2017) (finding lack of rights or interests in similar circumstances); Able Security Locksmiths Inc. v. Shai Levi, All Door Services, Inc., D2015-1725 (WIPO Dec. 2, 2015) (same). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Registration and Use in Bad Faith Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location." Respondent used a privacy registration service and what the Panel infers to be incomplete and partially fictitious underlying registration data to register a domain name corresponding to Complainant's common law mark without authorization, and is using the domain name to pass off as Complainant and promote directly competing services. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Steve Wainshtok dba Magic Locksmith v. Magic Locksmith, supra (finding bad faith registration and use in similar circumstances); Able Security Locksmiths Inc. v. Shai Levi, All Door Services, Inc., supra (same). The panel so finds. DECISION Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <wernick-key.com> domain name be TRANSFERRED from Respondent to Complainant. David E. Sorkin, Panelist Dated: July 16, 2023 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.