WIPO Domain Name Decision D2000-0622 for k2r.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

K2r Produkte AG v. Jeremie Trigano

Case No. D2000-0622

 

1. The Parties

The complainant is a Swiss company, K2r Produkte AG of Haggenstrasse 45, CH 9014 St. Gallen, Switzerland. The respondent is Jeremie Trigano of 93, Rue Vieille du temple, Paris 75003, France and formerly of 684 Broadway, 11E, New York 10012, USA.

 

2. The Domain Name and Registrar

The disputed domain name is and the registrar is R, Inc. of New York, NY, USA. Although the parties have both used the capitalization K2r, the registrar�s records indicate that the actual registration is in all lower-case letters. To avoid confusion, the domain name will be referred to hereafter as "K."

 

3. Procedural History

The complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") by email on June 16, 2000 and in hard copy on June 20, 2000 . On June 22, 2000 the Center acknowledged receipt of the complaint and sought verification of the registration details from the registrar. These were received on July 6, 2000. The registrar confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the disputed domain name. That day the Center confirmed that the complaint was administratively compliant and formally notified the respondent and his representative, by post/courier, fax and email of the complaint and of the commencement of the administrative proceeding, enclosing a copy of the complaint. Copies were sent also to ICANN and the registrar.

The last day for the filing of the response was July 25, 2000. The response was filed by email on July 22, 2000 and in hard copy on July 24, 2000. The Center formally acknowledged receipt next day.

By email dated July 27, 2000 the complainant sought to add a reply to the record. The Center acknowledged receipt on July 28, 2000, noting that the Policy and the Rules for the Policy ("the Rules") make no provision for further submissions after the complaint and response and that the panel will have sole discretion on whether to accept and/or consider the supplemental submission. The respondent objected to the admission of the reply by email on August 1, 2000 and in hard copy on August 3, 2000, stating he would seek to respond if the panel decided to consider the reply.

On August 14, 2000 the Center notified the parties of the appointment of the three member panel and that, absent exceptional circumstances, the panel was required to forward its decision to the Center by August 27, 2000.

The panel has satisfied itself that the complaint was filed in accordance with the requirements of the Rules and the Center�s Supplemental Rules; payment was properly made; the Center�s assessment concerning the complaint�s compliance with the formal requirements was correct; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; the response was filed within time; the administrative panel was properly constituted and all panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The language of the proceeding was English.

The panel has decided to admit the complainant�s reply but since the reply adds nothing to the complaint, the panel does not trouble the respondent to respond to it.

 

4. Factual Background (undisputed facts)

The complainant K2r Produkte AG has been producing spot removing and household cleaning products worldwide since 1959. It is the sole and exclusive owner of a number of registered trademarks in connection with cleaning products in many countries, including the United States, Canada and the European Union. Most registrations (including that in France) appear to be for the mark "K2R and design" or the letters K2r in stylized form but the registration in Spain appears to be for the mark K2R alone.

For three years, the complainant maintained an Internet presence via the Swiss Export Organization and their website S while developing its own web page. The principal domain name registered for that purpose by the complainant was K. K was registered with R on behalf of the complainant by a German subsidiary on May 8, 1997. The registrant was OMEGIN Dr. Schmidgall GmbH & Co.KG. Due to an administrative error, that company failed to pay the domain name maintenance fee. The domain name registration for K was consequently deleted by R and the domain name was released into the public domain sometime between October 12, 1999 and March 7, 2000.

In late 1999, Gisela Trigano and Albert Pintto, two well-known French interior designers, opened a boutique store at 9, rue de la Tremoille, 75016 Paris, France, and called it "Kirk & Rosie Rich." The store sells clothing, furniture, art and other products from around the world. They incorporated to do business under the name "Kirk & Rosie Rich" in December 1999. The store opened on December 16, 1999, with over 600 announcements sent to the press, friends, and family of the store owners. Kirk & Rosie Rich has been featured in numerous French magazines since its opening, including Madame, Atmospheres, Elle, Depeche Mode, Femme, Marie Claire Maison, and Maison Francaise.

In the spring of 2000, Mrs. Trigano asked her son Jeremie Trigano to look into establishing an internet presence for the recently opened store. Mr. Trigano�s first step was to find an appropriate domain name. was available. Mr. Trigano registered it on March 7, 2000. That same day he began designing a web site.

When the complainant discovered the respondent�s registration of the domain name K, its attorneys sent a demand letter to the respondent on April 5, 2000. This stated that the respondent�s registration and possible use of the K domain name violated the complainant�s legal rights.

Through counsel, the respondent responded by letter dated April 26, 2000 referring to his mother�s store in Paris as "KIRK AND ROSIE RICH". The letter claimed the respondent intends to use the K domain name for a website featuring information about "KIRK AND ROSIE RICH" and that he tried to register the domain name KRR.com before he registered K but found it was unavailable.

The complainant sent a second letter to the respondent�s representative, dated May 8, 2000, which again stated that the respondent�s registration and intended use of K violated the complainant�s legal rights. The complainant received no written response to this letter but respondent�s counsel had two telephone conversations with counsel for the complainant before the complaint was filed.

Before the complaint was filed, the complainant ascertained that, according to the Paris telephone book, there is no store called "KIRK AND ROSIE RICH" in Paris but that there is a store called "KIRK ET ROSIE RICH." The complainant also obtained a KIRK ET ROSIE RICH business card.

Shortly after the respondent had received the complainant�s demand letter of April 5, 2000, he registered the domain names , and .

 

5. Parties� Contentions (omitting most cited authorities). Complainant

The respondent�s registration of the domain name K is a flagrant attempt to subvert the purpose of domain name use and registration and to circumvent the authority of the domain name registration system.

The K2r® Trademark

The K2r® line of products are internationally famous goods and enjoy a high level of popularity with consumers worldwide. The K2r® trademark is among the most popular and well-respected marks in the world in the field of household cleaning.

Complainant�s suspicions

The supposedly unavailable domain name KRR.com was not registered until March 7, 2000, the same date as the Respondent�s registration of K. According to Network Solutions, Inc., a modified registration record is not available through the WHOIS database for up to 24 to 48 hours from the time of the update. Thus, given that time lag, the domain name KRR.com would have appeared available for registration when the respondent viewed the WHOIS records on March 7, 2000. For that reason, the respondent�s claim that the KRR.com domain name was unavailable on March 7, 2000 is inherently suspect.

Even more suspicious is that it was not until after the respondent had received the complainant�s demand letter of April 5, 2000 that he registered the domain names , and , domain names that are far more obvious choices for his mother�s store. The respondent, however, did not register the domain names kirket, or , all of which actually contain the name of the store. Other suitable domain names such as , or kand also remain available according to R.

Identity or confusing similarity

The domain name used by the respondent is identical to the famous K2r® trademark owned by the complainant. The K2r® mark was both famous and distinctive at the time that the respondent registered the K domain name.

Illegitimacy

The respondent has no rights or legitimate interests with respect to the domain name K, because the domain name bears no relationship to the business of the respondent or his mother. No reasonable explanation exists for use of the K domain name in connection with a store named "KIRK ET ROSIE RICH," particularly given that the store�s business card uses the symbol "K & R". Like the domain name MandM.com, used by the famous M&M candies, or, even its French version, (both of which could have been adopted by the respondent) are the logical choices for a domain name reflecting the store�s symbol.

Bad faith

The K domain name has been registered and used in bad faith by the respondent. The respondent has exhibited a pattern of cybersquatting behavior because it registered the domain name K in order to prevent the complainant from having access to and reflecting the mark in a corresponding domain name. As such, his activities correspond to those listed in paragraph 4(b)(ii) of the Policy as evidence of bad faith registration and use of a domain name.

Moreover, the respondent claims he intends to use the K2r® mark to drive visitors to his website which will be used in connection with the store "KIRK AND ROSIE RICH." As such, his activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name because the respondent is attempting to generate commercial gain by creating confusion as to the affiliation of the services offered by "KIRK AND ROSIE RICH" with the K2r® mark.Respondent

On March 7, 2000, before notice of this dispute, Jeremie Trigano began designing a web site. A month later he received a letter from the complainant�s counsel, accusing him of trademark infringement and cybersquatting, and demanding that he cease using the domain name, even though the domain name was not in use. He explained that he was not a cybersquatter, but that the domain name was registered for use by his mother�s store, which had the initials KRR, thus the domain name K2R.COM.

Whether the complainant has rights in the mark K2r

The complainant does not own the three symbol mark "K2R" by itself. The mark K2R is registered with either a design element or stylized letters. The complainant apparently does not have a word-only registration for K2R in the United States.

There are third party users of K2R, including a company in Anaheim, California known as K2R Enterprises. A search for "K2R" on , Y, and revealed: a website at ; an organization called K2R Research, with a presence at ; and a "calcium reactor" known as K2R. A search for K2R on resulted in 2,718 web sites.

The complainant claims its products are "internationally famous" and among the "most popular and well-respected marks in the world in the field of household cleaning." These statements should be given no weight because the complainant failed to submit any evidence to demonstrate their validity.

The complainant acknowledges that the domain name was "released into the public domain sometime between October 12, 1999 and March 7, 2000," a period of almost five months, which leads one to question the importance of the domain name to the complainant.

Identity or confusing similarity

Whether or not the domain name and the complainant�s mark are identical is irrelevant for purposes of this decision.

Illegitimacy

As explained to the complainant before this action was filed, the domain name is a derivative for a store owned by Mr. Trigano�s mother.

Mr. Trigano began developing the website before he had notice of the dispute by complainant.

The complainant makes the absurd suggestion that because Kirk & Rose Rich�s listing in the Paris telephone book uses the French "et" instead of the English "and," Mr. Trigano�s position lacks legitimacy. The ampersand is interpreted in French as "et," as demonstrated by the attorneys for the complainant (Debevoise & Plimpton)�s own Paris telephone listing, "Debevoise et Plimpton".

Bad faith

Because Mr. Trigano is not using the domain name, there is no bad faith. The panel could dismiss the complaint for this reason alone. However, since Mr. Trigano intends to use the domain name, Mr. Trigano respectfully requests that the panel rule on all bad faith factors.

The complainant fails to demonstrate any of the four listed factors under Rule 4(a) [scil 4(b)]. Specifically, Mr. Trigano did not:

Register the domain name to sell to complainant;

Indeed, Mr. Trigano has never offered to sell the domain name to the complainant.

Engage in a pattern of registering domain names to prevent mark owners from using them;

All of Mr. Trigano�s registrations have to do with his mother�s boutique store.

Register the domain name to disrupt the business of a competitor;

Mr. Trigano registered the name for a high-end boutique store; the store does not compete with Complainant�s cleaning products.

Use the domain name intentionally to attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.

Mr. Trigano has not used the domain name at this point, but intends to do so. Nevertheless, the products of the complainant and of Kirk & Rosie Rich are distinct, thus eliminating any likelihood of confusion. Mr. Trigano provides services in a completely different market from the complainant and has no interest in attracting Internet users who are interested in the complainant.

The complainant argues that it is entitled to have the domain name because Mr. Trigano is a cybersquatter. As detailed above, the complainant is wrong.

The complainant asserts, contrary to the facts and simple logic, that "bears no relationship to the business of" Kirk and Rosie Rich. Although a simple explanation should not need to be repeated, KRR are the initials of the store. KRR includes two "R"s. Thus, K2R is a logical abbreviation for the store name. K2R includes three symbols, a factor important to Mr. Trigano in finding a domain name for his mother�s store.

Even if the complainant is correct, the absence of a corporate or trade name from which a domain name was derived does not render the registration and use illegitimate. Where the domain name is an abbreviation for the corporate name, legitimate use is established.

The complainant also asserts that the domain name has been "registered and used in bad faith" and that Mr. Trigano "has exhibited a pattern of cybersquatting behavior" based on this one registration. Pattern requires more than one domain name. Pattern is defined as "frequent or widespread incidence": Merriam-WebSter�s Collegiate Dictionary, . The complainant has failed to demonstrate any pattern by Mr. Trigano.

Mr. Trigano has no interest in confusing consumers who are seeking cleaning products with his mother�s high-end Paris boutique. The respondent has never used or intended to use the subject domain in any way related to cleaning products.

As another example of the thin "evidence" that the complainant is using to demonstrate cybersquatting, the complainant states that Network Solutions, Inc. does not update its WHOIS database for 24 to 48 hours from the date of registration. Therefore, Mr. Trigano must be lying about the unavailability of on March 7, 2000, the same day he registered . However, this is not the first time that registration of two domain names occurred on the same day, making the latter registrant�s attempt to register the first domain name a failure. See, e.g., C v. C, NAF 94206 (both the complainant and respondent attempted to register the subject domain name on the same day). Mr. Trigano registered the domain name at issue while he was either in New York or Paris. The registrant of apparently resides in California. "The fact that, even though a world apart, both applied to register at the almost identical moment would be an indication that neither knew of the other�s activities." Id.

The timing, the complainant asserts, is "suspicious." But suspicion alone . . . cannot suffice to prove that Respondent is acting in bad faith. Furthermore, Mr. Trigano does not know the registrant of , although he would rather have that domain name than the - - unfortunately, a California resident registered it first.

The complainant also makes the ridiculous point that Mr. Trigano must be a cyberquatter because he only registered other domain names for his mother�s store after receiving the complainant�s demand letter. Mr. Trigano registered these domains after he received a threat from a massive New York law firm that he would be sued for cybersquatting unless he surrendered the domain. Mr. Trigano reacted as most rational people would - - he registered other domain names in case is wrongfully transferred to the complainant.

Even more preposterous is the complainant�s suggestion that because there are dozens of other domain names available to Mr. Trigano, he must be a cybersquatter. If this were so, then anyone who did not register all possible domain names for a legitimate business could be tagged a cyberquatter by someone wanting a domain name.

The complaint states that Mr. Trigano�s registration of "is a flagrant attempt to subvert the purpose of the domain name use and registration and to circumvent the authority of the domain name registration system." The only evidence to support this accusation is:

- A third party (based in California) registered the same day as Mr. Trigano registered .

- Mr. Trigano registered other domain names reflecting the name of his mother�s store after receiving the complainant�s cease and desist letter.

- Mr. Trigano failed to register all possible domain names for his mother�s store.

- The French telephone listing for Kirk & Rosie Rich uses the French word "et" instead of "and".

- Mr. Trigano refused to surrender the domain name to the complainant.

In this case, despite the complainant�s bald assertions to the contrary, the evidence is quite inadequate to show that the respondent registered the domain name for the primary purpose of selling, renting, or otherwise transferring it to the complainant or one of its competitors: see Creo Products Inc. v. Website in Development, D2000-0160.

At the very least, there are significant factual issues in dispute. In such circumstances, the panel should find in favor of Mr. Trigano, as the Policy is reserved for a "narrow" set of cases.

Request for Finding of Reverse Domain Name Hijacking

Rule 15(e) provides that the panel shall declare that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding if it was brought as an attempt at Reverse Domain Name Hijacking (defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name") or was brought primarily to harass the domain name holder.

Counsel for the complainant issued a cease and desist letter to Mr. Trigano. Mr. Trigano responded with facts about the domain name being a derivative of his mother�s store. The complainant confirmed those facts, apparently by visiting the Paris boutique and acquiring a business card, a copy of which is attached to the complaint. Thus, the complainant was able to confirm that there was a store named Kirk & Rosie Rich, and that the domain was registered by the store owner�s son. Nevertheless, the complainant chose to file its complaint, in which it asserted statements without support. Indeed, some of the statements are so unreasonable that they are indicative of bad faith, such as the allegation that Mr. Trigano has participated in a pattern of registering domain names to prevent other rightful parties from using the domain names.

Based on the evidence presented by Mr. Trigano, and the paucity of evidence presented by the complainant, Mr. Trigano respectfully requests that the panel find the complainant guilty of reverse domain name hijacking.

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.

Identity or confusing similarity.

The domain name is virtually identical to the registered trademark and service mark K2r owned by the complainant. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, [��] is the same mark as [�EPIX�]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "" and "Planned Parenthood" were essentially identical), aff�d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).

Virtual or essential identity is sufficient for the purposes of the Policy. It follows that the domain name and the mark are confusingly similar. Having regard to the different fields of activity in which the parties are engaged, it does not follow that there would be confusion in fact.

Illegitimacy

The complainant has the onus of proof on all issues. Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant�s rights or legitimate interests to the disputed domain name. The respondent relies on the circumstances specified in sub-paragraph 4(c)(i):

"(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;"

Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada v. Xross, AF-0133.

On March 7, 2000, before notice of this dispute, and in response to a request from his mother, Jeremie Trigano began designing a web site for his mother�s Paris store. The evidence (respondent�s Exhibit 4) shows the name used that day on the draft web pages was "Kirk & Rosie Rich". The disputed domain name was not used. Nor was any ".com" name used on those pages. This was the very day on which the disputed domain name was registered and the same day as the respondent had also sought unsuccessfully to register the domain name KRR.com, his preferred name for the store�s web site. The panel accepts that the respondent�s web site which he began drafting that day was intended to be used by his mother�s store with whatever domain name was registered for it.

Although the disputed domain name was not used in the draft that day, the panel finds that the respondent intended, in registering the disputed domain name, to find a short and catchy way of referring to his mother�s store in whatever domain name he could find that was available and suitable for that purpose.

The panel finds that the disputed domain name is a derivative of the name of the Paris store and thus the respondent registered a domain name that corresponds to a name that was in use in connection with a bona fide offering of goods or services prior to notice of this dispute. It is not the only possible derivative of the name of the store but it is a logical and reasonable one. There is no reason to question the respondent�s explanation as to how he came to choose the name K.

The panel therefore finds the respondent has and has had, since registration on March 7, 2000, a legitimate right and interest in the disputed domain name.

The panel is fortified in reaching this conclusion by the fact that the complainant and the respondent�s mother are not engaged in competition with each other (so there is little or no likelihood of confusion); the absence of any evidence that the respondent had any reason to seek to divert customers from the complainant to his mother�s store, even assuming (as has not been demonstrated) that the respondent was aware of the complainant�s mark and the absence of any evidence to support the complainant�s assertion that its mark is famous (although the panel is prepared to accept that it is well-known in the field of household cleaning). Even if evidence of fame were supplied, this panel is not prepared to make a legal determination on such a contentious issue as a mark�s famousness. This is a complex trademark infringement claim that is more properly left to courts of law.

Bad faith

It is possible for a term to be used as a trade mark in different industries simultaneously without conflict: Exclaim Technologies v. Net Exclamation, AF-0160. Trademark and unfair competition law permit multiple users to trade under identical marks so long as the consumer is not confused as the source or origin of the goods and services: 2E Corp. v. Imagisys, Inc., AF-0162 . The respondent�s reason for registering the domain name (that it was short, simple and easy to remember) provide an entirely reasonable and proper explanation for the respondent�s choice of this word: Zero Int�l Holding GmbH & Co. v. Beyonet Services et. al, D2000-0161. The respondent has no interest in confusing consumers who are seeking cleaning products with his mother�s Paris boutique.

The panel has found the respondent, in registering the disputed domain name, intended to reflect the name of his mother�s store in a way that seemed appropriate to him. The existence of possible alternatives, not similar to the complainant�s mark, does not establish bad faith registration on the part of the respondent. The complainant presents another untenable argument by implying that respondent acted in bad faith by making a suspect claim that a preferred domain name was not available at the time the disputed name was registered. The complainant does not properly understand the way that domain registration dates are recorded. The date of a domain registration can refer to the beginning of an initial registration period, or it can refer to the date that a prior registration was transferred to a new owner, or it can indicate the date that a prior registration was transferred from one registrar to another by the same owner. Each of these events triggers a new registration date. No registration date has any evidentiary value on the availability of the domain before that date.

Although the respondent has not used the disputed domain name, there are cases in which bad faith use has been found even though the name is not being used in the usual sense: Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (registrant actively concealing identity) and Barney�s, Inc. v. BNY Bulletin Board D2000-0059 (negotiating to transfer the name).

The panel finds there are no circumstances in this case to warrant a finding of bad faith use.

The panel finds there is no evidence of any of the circumstances contemplated in sub-paragraphs 4(b)(i) to (iv) of the Policy, nor any other evidence of bad faith of any kind on the part of the respondent.

The complainant has failed to demonstrate any pattern of cybersquatting behavior by the respondent.

Reverse Domain Name Hijacking

By the time the complaint was filed, the complainant had been informed of and had otherwise ascertained all the facts necessary:-

- to establish that the respondent, acting on behalf of his mother, had a legitimate interest in the disputed domain name; and

- to dispel any suspicions that the respondent was a cybersquatter who had registered and was using or intending to use the disputed domain name in bad faith.

Nevertheless, despite having ascertained that the respondent�s explanation was manifestly reasonable, the complainant filed the complaint, containing:-

- assertions of a pattern of cybersquatting not supported by the evidence;

- an unfounded allegation of impropriety said to spring from the respondent�s counsel referring to the name of the store as Kirk and Rosie Rich instead of Kirk et Rosie Rich;

- an unfounded description of the respondent�s registration of the domain name K as "a flagrant attempt to subvert the purpose of domain name use and registration and to circumvent the authority of the domain name registration system"; and

- an assertion that "no reasonable explanation exists for use of the K domain name in connection with a store named "KIRK ET ROSIE RICH" .

The panel, by a majority, finds the complaint was filed as an attempt at Reverse Domain Name Hijacking and was brought in bad faith primarily to deprive a registered domain-name holder of a domain name. Under these circumstances, pursuant to Rule 15(e), the panel declares the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The dissenting member of the panel on this issue, Tony Willoughby, while agreeing that some of the allegations made by the complainant were unnecessarily and unjustifiably extravagant, nonetheless takes the view that in invoking the Policy the complainant genuinely (albeit in the panel's view erroneously) believed that the respondent's explanation was specious. In the dissenting panelist's view, the complainant was actuated by a desire in good faith to protect its intellectual property rights. The dissenting panelist observes that the complainant's trade mark and the respondent's domain name comprise a sufficiently unusual combination of letters/numeral for the complainant reasonably (albeit erroneously) to harbour suspicions about the respondent. Once one takes the view that there is reasonable scope for suspicion, it is not difficult to see how the wilder allegations ensued. In the dissenting panelist's view, it would be unduly harsh to characterise this complaint as Reverse Domain Name Hijacking.

 

7. Decision

The complaint is dismissed.

 

 

Alan L Limbury
Presiding Panelist

Diane Cabell Tony Willoughby
Panelists

Date: August 23, 2000

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