WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kudos Information Limited, Kudos Information, Inc. v. Kudos Systems, Keith Pearson
Case No. D2004-0015
1. The Parties
The Complainants are Kudos Information Limited, Surrey, United Kingdom of Great Britain and Northern Ireland and Kudos Information, Inc, Cary, North Carolina, United States of America, represented by Borenius & Co Oy Ab, Finland.
The Respondents are Kudos Systems and Keith Pearson, both of Laguna Niguel, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2004. On January 12, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On January 13, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on February 5, 2004.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 9, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainants are doing business in the field of information solutions and are both part of the Kudos Information Group with activities in the United Kingdom, United States, France, Finland and Hungary. Numerous trademarks including the name �kudos� are owned by the Complainants, inter alia
Mark
Country
Registration No.
Proprietor
KUDOS
European Union
1395516
Kudos Information Limited
KUDOS
USA
2694857
Kudos Information, Inc.
KUDOS
USA
2699587
Kudos Information, Inc.
KUDOS
USA
2688093
Kudos Information, Inc.
KUDOS & design
USA
2688094
Kudos Information, Inc.
KUDOS & design
USA
2703847
Kudos Information, Inc.
KUDOS & design
USA
2680050
Kudos Information, Inc.
KUDOS & design
United Kingdom
2116056
Kudos Information Limited
The Respondents are using the Domain Name to offer computer-related consulting services and training, i.e. services that are similar to the services covered by Complainants� trademarks.
5. Parties� Contentions
A. Complainant
The Complainants contend that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.
(i) the Domain Name is confusingly similar to Complainants� trademarks as both consist only of the word �kudos�;
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Name:
- the Respondents do not enjoy federally registered trademark rights in the word �kudos� and Kudos Systems is not a corporation registered with the State of California. Furthermore the Respondents are not listed in any business directories in the United States or mentioned elsewhere. The Respondents do not have trademark rights in the word �kudos�, neither based on registration nor on use, as the only place where Kudos Systems is mentioned is on the website under the Domain Name;
- the Respondents are not using the Domain Name in connection with a bona fide offering of goods and services. Even if the website under the Domain Name seems to be related to business activities of the Respondents, further investigations could not confirm this impression. The telephone number given as contact information on the website of the Respondents was answered by an answering machine not stating any business name or even the name of an individual. The e-mail address shown on the website does not exist as an e-mail sent to this address was returned as undeliverable. Having been contacted via a message on the answering machine connected to the telephone number mentioned on the website under the Domain Name, the Respondents refused to send any material related to their business activities to the Complainants. This is further evidence that business activities in relation with the Domain Name do not exist.
(iii) the Domain Name was registered and is being used by the Respondents in bad faith:
- the Respondents registered the Domain Name in bad faith as they had active knowledge of the Complainants� rights when registering the Domain Name. In 2001, the Respondents were using a figurative mark on their website under the Domain Name that was virtually identical to a device owned by Kudos Information Limited since 1996 (registration no. 2116056). Such mark was removed from the website under the Domain Name after several requests. It is most unlikely that the Respondents designed a mark identical to the Complainants� device by accident;
- the Respondents registered the Domain Name with the intention to receive some sort of financial benefit from the Complainants and used their registered trademark to draw Complainants� attention to their website. Having been contacted by the CEO of Kudos Information Limited in 2001, Mr. Pearson said that the Domain Name was for sale at the "right price". Asked to be more specific, Mr. Pearson suggested a "significant sum".
B. Respondent
The Respondents did not reply to the Complainants� contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainants must prove that each of the following three elements are present:
(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainants have rights;
(ii) the Respondents have 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.
A. Identical or Confusingly Similar
The domain name is identical to the trademarks in which the Complainants have rights as the global top level domain name identification has no distinctive function.
These trademarks are sufficient for the purposes of the Policy, paragraph 4(a)(i), although it is noteworthy that the trademarks registered in the United States are quite recent and do not appear to predate the registration of the domain name in question.
The Complainants have satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by the Respondents, shall demonstrate their rights to or legitimate interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondents of the dispute, the use by the Respondents of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as individuals, business or other organization) have been commonly known by the Domain Name, even if the Respondents have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks or service marks at issue.
Even if the website under the Domain Name seems to be related to business activities of the Respondents, there is no real evidence that the Respondents are using the Domain Name in connection with a bona fide offering of goods and services. Complainants� investigations have shown that the Respondents are not seriously engaged in any business activity under the Domain Name. The mere content of Respondents� websites cannot be deemed sufficient as otherwise every registrant could easily pretend business activities for purposes of the Policy, paragraph 4(c)(i).
Furthermore, the Respondents are not commonly known by the Domain Names. Both, the presence in the WhoIs-database and the content of the website are not sufficient in this regard as otherwise every registrant of a domain name could easily establish a legitimate interest under the Policy, paragraph 4(c)(ii).
Finally, the Domain Name has not been used in any legitimate non-commercial or fair context.
The Panel therefore sees no rights of the Respondents to or legitimate interests in the Domain Name and finds that the Complainants have satisfied the requirements of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the Domain Name in bad faith, including
(i) circumstances indicating that the Respondent has registered or 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 a valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
As the Respondents used the figurative trademark of the Complainants on their website, the Respondents must have been aware of the Complainants� trademark when they registered the Domain Name. It is extremely unlikely that two persons invent an identical notion (which is, to the Panel�s knowledge, far from been descriptive) and then create a virtually identical graphical design of such notion. Therefore, the Panel finds that the Domain Name was registered in bad faith.
The Respondents offered to sell the Domain Name to the Complaints in 2001 for a "significant sum". The Panel finds Complainants� allegations to be sufficient under the Policy, paragraph 4(b)(i), as the Respondents did not contradict such contention, nor the assumption that this was the primary purpose for the registration of the Domain Name.
Therefore the Panel finds that the Complainants have satisfied the requirements of the Policy, paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with Policy, paragraphs 4(i) and Rules, paragraph 15, the Panel orders that the domain name be transferred to the Complainants.
Brigitte Joppich
Sole Panelist
Date: February 19, 2004
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