Domain name - ICANN Uniform Domain Name Dispute Resolution Policy - Submission of additional pleadings - Rebuttal - Response to rebuttal - Canadian Trademark - U.S. Trademark - Pending renewal of application  - Non-use of mark - Fair use - Bona fide offering of goods - Colonial furniture - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use.

Complainant was manufacturer of furniture and owner by assignment of Canadian Trademark for KITTINGER.  In addition, Complainant was applicant for U.S. Trademark for KITTINGER and owner of KITTINGER OLD DOMINION, for which the renewal application was pending due to a USPTO request for provision of details concerning non-use of the mark.  

Complainant was attempting to revive the fortunes of the Kittinger Company, which had fallen on hard times and ceased operations for a period.  Respondent, proprietor of trade-marks kittingercollector.com and kittinger.com, was in the business of purchasing, restoring and re-selling furniture manufactured by the Complainant’s predecessors.  Respondent contested the ability of Complainant to benefit from the priority of the above registrations due to the long history of serial assignments and period of non-use.  The Parties disagreed on whom could use variations on the Kittinger name as a domain name.

The Parties requested permission to submit additional pleadings.  Panel granted the request and Complainant’s Rebuttal was filed along with Respondent’s Response to Complainant’s Rebuttal.  

Held, Domain Names kittingercollector.com and kittinger.com not transferred to Complainant.

Complainant bears the burden of proving the three elements under paragraph 4(a) of the UDRP.  

Complainant partially met its burden with respect to the first element.  Even though there appeared to be some unresolved issues concerning the non-use of the mark, Complainant was the owner of a Canadian Registration which was identical to the kittinger.com domain name at issue. 
With respect to the second domain however, kittingercollector.com, Panel found that it was not identical or confusingly similar to Complainant’s trademark and was unlikely to cause confusion with Complainant’s business. 

The evidence demonstrated that Respondent, commonly known by the name Kittinger Collector,  used its domains in connection with a bona fide offering of goods and services to acquire, re-condition and re-sale used Kittinger furniture. Thus, Panel found that Respondent had legitimate rights and interest in respect of the domain names. Respondent did not acquire the domain names for the purpose of sale and did not register the names to prevent Complainant from reflecting its mark, nor to disrupt the business of a competitor.  Panel also found that Respondent did not intentionally attempt to attract, for commercial gains, Internet users to its web site. Therefore, Complainant failed to establish bad faith registration and bad faith use by Respondent. 

Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
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Thompson, Panelist: - 
The Kittinger Company Inc. v. Kittinger Collector (AF00107a and b) 
This is a domain name dispute under the ICANN Uniform Domain Name Dispute Resolution Policy (the "UDRP"). The domain registrations at issue in this panel decision are kittingercollector.com and kittinger.com, both registered by Network Solutions, Inc. This case is closely related on the facts to The Kittinger Company, Inc. v. James Fisgus (AF00108a and b). 
The Parties 
The Complainant is Kittinger Company, Inc. whose place of business is at 2495 Main Street, Buffalo, NY 14214 and is represented by counsel in this matter (Magavern, Magavern & Grimm, LLP of Buffalo, NY). Respondent is Kittinger Collector, with a place of business at 10876 Hillside Road Alta Loma, CA 91737 and is represented by counsel in this matter (Ladas & Parry, Los Angeles, CA). 
Procedural History 
The Complaint was filed electronically on February 4, 2000. The details of the procedural record are found in the letter dated March 10, 2000 from Emmanuelle Letourneau of eResolution to the Panelist (attached hereto). In addition to the filings detailed in the attached letter, the Parties requested permission to submit additional pleadings. The Panelist granted the request and the Complainant's Rebuttal was filed on March 28, 2000 and the Respondent's Response to Complainant's Rebuttal was filed on April 11, 2000. The panel also received an e-mail exchange between the parties on April 14, 2000. 

Factual Background 
The Complainant is a manufacturer of furniture and is the owner by assignment of Canadian Trademark Reg. No. TMA 278,127 for KITTINGER. Complainant is also owner of a U.S. trademark application for KITTINGER. Complainant is the owner of U.S. Reg. No. 1,124,516 for KITTINGER OLD DOMINION, the renewal application for which is pending due to a USPTO request for provision of details concerning non-use of the mark. All of Complainant's marks are for office furniture, dining room furniture, living room furniture and bedroom furniture. Respondent contests the ability of Complainant to benefit from the priority of the above registrations due the long history of serial assignments and period of non-use. 
The Complainant is attempting to revive the fortunes of the Kittinger Company, which had fallen on hard times and ceased operations for a period. Respondent is in the business of purchasing, re-conditioning and re-selling furniture that was manufactured by the Complainant's predecessors. Both Parties would likely agree that the Kittinger name is associated with high quality colonial reproduction furniture. The Parties disagree on whom may use variations on the Kittinger name as a domain name. 
Under the UDRP paragraph 4(a) the Complainant bears the burden of proving that: 
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and 
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and 
(iii) the domain name has been registered and is being used in bad faith. 
Therefore the question before this panel is whether the Complainant has met its burden with respect to the three elements. 
(i) The panel finds that Complainant has partially met its burden with respect to the first element. Although there appear to be issues regarding whether the trademark rights of the Complainant have survived the series of assignments and non-use, Complainant is the owner of a subsisting Canadian Registration for KITTINGER, a mark that is identical to the kittinger.com domain name at issue. 
With respect to the second domain at issue, kittingercollector.com, the panel finds that the domain name is not identical or confusingly similar to a trademark of the Complainant. The panel bases this finding on the evidence that the use of Complainant's trademark in this domain is purely nominative, that the domain name as a whole is descriptive of the Respondent's business and unlikely to cause confusion with Complainant's business. 
(ii) The panel finds that Complainant has failed to meet its burden with respect to establishing that the Respondent has no rights or legitimate interests in the domain names at issue. Respondent has used its domains in connection with a business based on the acquisition, re-conditioning and re-sale of used Kittinger furniture. This is a legitimate business that Respondent has operated for many years. The Respondent is entitled to use the name Kittinger in a fair, nominative sense to describe the furniture is sells and has made accommodations at the request of Complainant to prevent possible confusion. Moreover, this panel is bound by the UDRP paragraph 4(c) which states in relevant part: 
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): 
(i) before any notice to you of the dispute, your use of, or 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; or 
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or 
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (emphasis added) 
The panel finds that the evidence submitted demonstrates that: the Respondent used the domain names at issue in connection with a bona fide offering of goods and services before notice of this dispute; the Respondent is commonly known by the name Kittinger Collector; and, the Respondent's use of the domains at issue is fair-use and not intended to divert customers or tarnish the trademark rights of the Complainant. Accordingly, the panel finds the Complainant has not met its burden with respect to this element. 
(iii) The panel finds that the Complainant has failed to meet its burden in establishing that the domains at issue were registered and are being used in bad faith. The UDRP lists the following circumstances as evidence of a registration and use in bad faith in paragraph 4(b): 
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 
(i) circumstances indicating that you have registered or you have 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; or 
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or 
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location. 
(i) The panel finds that the domains at issue were not acquired for the purpose of sale to Complainant or a competitor of Complainant and that the evidence supports the finding that the domains are not for sale. 
(ii) The panel finds that the Respondent has not registered the domain names at issue to prevent the Complainant from reflecting its mark in a corresponding domain name nor has Respondent engaged in a pattern of such conduct. The panel notes that the Respondent has registered 4 domain names that are the subject of UDRP proceedings. The two domain names at issue in the decision at hand and the kittenger.com and kittengerfurniture.com domain names at issues in Case No. AF 00108 (a) and (b). The panel finds that the evidence submitted does not show that domain registrations of Respondent constitute a pattern of conduct intended to block Complainant's access to domain names that correspond to its marks. 
(iii) The panel finds that the evidence submitted does not support the conclusion that Respondent registered the domain names at issue to disrupt the business of a competitor. The evidence submitted shows that the Parties are not in competition, as the Complainant does not sell used furniture. 
(iv) The panel finds that the evidence does not show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark. Respondent has taken reasonable steps to avoid potential confusion at the request of Complainant. The evidence shows that the Respondent seeks to distinguish its business from that of Complainant by only offering for sale furniture manufactured by Complainant's predecessors prior to 1995 and actively works to prevent possible confusion. 
As the Complainant has failed to prove any of the listed indicia of bad faith or any other compelling evidence of bad faith, the panel finds that the Complainant has not met its burden with respect to this element. 
Conclusion 
For the foregoing reasons, the panel concludes that the Complainant has not met its burden of proof under the UDRP paragraph 4 (a). Accordingly, the panel finds the domain names kittingercollector.com and kittinger.com should not be transferred to Complainant. 
Domain Names not Transferred.