WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Basic Trademark S.A. v. Ed Swain Case No. D2009-1029 1. The Parties
The Complainant is Basic Trademark S.A. of Luxembourg, represented by Studio Legale Sindico Serantoni & Scannerini of Italy.
The Respondent is Ed Swain of Mableton, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2009. On July 31, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On August 3, 2009, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 6, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2009.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 3, 2009. 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
Complainant is part of the BasicNet Group, an industrial group engaged in the business of manufacturing and marketing casual wear and accessories distinguished by trademarks KAPPA, ROBE DI KAPPA and “device of a man and a woman sitting back to back”. Complainant's trademarks are licensed in more than 100 countries and are used for sponsorships throughout the world, currently inter alia Borussia Dortmund (German Football Champion 1956, 1957, 1963, 1995, 1996 and 2002), AS Roma (Italy), UC Sampdoria (Italy), FC Torino (Italy), A.C. Siena (Italy), FC Utrecht (The Netherlands), Feyenoord Rotterdam (The Netherlands), Wales Football Federation (UK), Indios de Ciudad Juarez (Mexico), Jamaica Football Federation (Jamaica), H.K. National Table Tennis Team (Hong Kong), Argentina Ski Federation (Argentina) and Plata (Argentina).
Complainant owns a number of trademark registrations protecting the marks KAPPA, ROBE DI KAPPA and “device of a man and a woman sitting back to back” in numerous countries worldwide including the United States, where the Respondent is located, inter alia the following trademarks (the “KAPPA Marks”):
- US registration no. 3043005 KAPPA & device, applied for on March 12, 1996;
- US registration no. 3313051 KAPPA, applied for on March 30, 2004; and
- US registration no. 2723266 KAPPA & device, applied for on June 25, 2001.
The trademarks mainly cover casual wear and accessories.
Complainant offers its products on the Internet inter alia at “”, “” and owns numerous domain names including its trademark KAPPA, such as , , , and “robedi>.
The disputed domain name is not actively used in connection with a website.
Complainant sent a warning letter to Respondent on February, 13 2009. Respondent never answered the warning letter. 5. Parties' Contentions A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain name is confusingly similar to the KAPPA Marks because the use of the widely-known trademark KAPPA together with non-distinctive and descriptive word “outlet” is likely to cause confusion, mistake or deception since consumers are likely to believe that Complainant, as the legitimate owner of the trademark KAPPA, authorizes or controls such domain name.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name as he never used nor has title to use KAPPA as a denomination, company name, trademark, service mark, or distinctive sign.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that
- the registration of the disputed domain name qualifies as being made in bad faith per se as the KAPPA trademark is a distinctive mark without any meaning and the use of the word “kappa” can only refer to the trademark of Complainant;
- at the time of registration Respondent already knew, or at least should have known, that the registration of the disputed domain name without permission of Complainant would constitute bad faith and that actual or constructive knowledge of Complainant's trademark can be inferred from (a) the world-wide widely-known use and reputation of the KAPPA trademark; (b) the fact that Complainant owns several domain names incorporating the KAPPA trademarks; and (c) the fact that a simple check of trademark registries worldwide would have made Complainant's trademark known to Respondent;
- the passive holding of the disputed domain name by the Respondent constitutes sufficient evidence of bad faith; and
- the lack of reply to the warning letter constitutes further evidence of the bad faith of Respondent. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates Complainant's distinctive and well-known KAPPA Marks, which are used in connection with casual wear and accessories for many decades. The fact that the word “outlet” is added to Complainant's trademark does not eliminate the similarity between Complainant's trademark and the disputed domain name, as “outlet” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks, such as “outlet” (See Sears Brands, LLC v. Cho Min Ho, NAF Case No. FA 1261778 - ; eL Inc. v. David c/o David David, NAF Case No. FA 1249699 ; Ashley Furniture Industries, Inc v. Pluto Domain Services Private Limited, NAF Case No. FA 1227159 ; LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling,WIPO Case No. D2008-0226 et al.).
It is also well established that the suffix such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the disputed domain name is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among Panelists that if complainant makes a prima facie case that respondent has no rights or legitimate interests, and respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then respondent may lack a legitimate interest in the domain name.
Complainant asserted that Respondent has no rights or legitimate interests in respect of the disputed domain name as he never used nor has title to use KAPPA as a denomination, company name, trademark, service mark, or distinctive sign.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interests in the disputed domain name.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and used the disputed domain name in bad faith.
Complainant is widely-known internationally not only for its products but also for its activities as a sponsor of sporting events and teams. It is therefore inconceivable that Respondent registered the domain name being unaware of Complainant's rights in its KAPPA Marks.
The Panel is also convinced that Respondent used the domain name in bad faith. The fact that the website at the disputed domain name is inactive does not prevent from a finding of bad faith use under the Policy. It is well established that passive holding of a domain name may equal active use (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC;WIPO Case No. D2002-0131). However, such finding requires the Panel to examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by Respondent would amount to Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) Complainant's trade mark is well-established and used worldwide for many years. It therefore apparent that Respondent has registered the disputed domain name in order to create an association with the mark as a means of attracting users to his future website.
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. The Registration of a widely-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
(iii) Furthermore, Respondent has neither responded to Complainant's warning letter nor to the Complaint and has not denied the Complainant's contentions in any way.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate and constitute an infringement of Complainant's rights. In light of these particular circumstances, the Panel concludes that Respondent's passive holding of the disputed domain name, in this particular case, satisfies the requirements of paragraph 4(a)(iii) of the Policy and that the domain name is being used in bad faith.
Respondent's default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the disputed domain name in good faith, and had good faith bases for using the disputed domain name, it should have asserted them.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Torsten Bettinger
Sole Panelist
Dated: September 17, 2009
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