The Complainant is Kiko s.r.l. of Bergamo, Italy, represented by NICE srl, Italy.
The Respondent is Hai Sen Ding c/o The World Executive Group Inc. of Cambridge, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2013. On December 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response January 7, 2014. The Response was filed with the Center January 6, 2014.
The Center appointed Andrew F. Christie, Eva Fiammenghi and Hong Xue as panelists in this matter on February 11, 2014. The Panel finds that it was properly constituted. Each member of 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 Complainant’s business is the manufacture of cosmetic products. The Complainant is the owner of trademark registrations in Classes 3 and 25 for the word trademark KIKO in a number of countries, including in the United States of America (filed in August 1989, and registered in May 1994) and in Italy (filed in November 1997, and registered in March 2000). The Complainant uses the KIKO trademark to publicly promote its cosmetic products.
The Respondent is an information technology company established in China in 2003 (with administrative headquarters in the United States). It is the owner of a trademark registration in China in Class 42 for an image trademark that includes the word “kiko” (filed July 2010, and announced July 2011).
The disputed domain name was first registered on an unspecified date that appears to have been on or before October 13, 1999. Between October 1999 and August 2010, the disputed domain name had been used in relation to various websites, the most recent of which was a calendar website run by a party that appears to be unrelated to the Respondent. The Respondent purchased the disputed domain name in May 2010 for USD 65,578.50. From August 2010 to an unspecified date (which appears to be earlier than October 12, 2013), the Respondent used the disputed domain name as the URL for a social networking website. That website failed commercially, and ceased at an unspecified date. From the date of cessation of the social networking website until January 1, 2014, the disputed domain name resolved to a parking page which contained automatically generated links. Since January 1, 2014, the disputed domain name has resolved to a “visual navigation website” operated by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is irrefutably confusingly similar to its KIKO trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) it has clearly been registered by the Respondent with the sole purpose of selling it; (ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services; (iii) the Respondent, to the knowledge of the Complainant, has never been commonly known by the disputed domain name; and (iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith because: (i) the Respondent has registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the owner of the trademark, or to a competitor of the Complainant, in excess of its out-of-pocket expenses, as evidenced by its offer to sell it for USD 300,000; (ii) the Respondent’s refusal to sell the disputed domain name at a reasonable price prevents the Complainant, which is the owner of the KIKO trademark, from reflecting that trademark in the corresponding domain name; and (iii) by having registered and then parked the disputed domain name on the SEDO platform, with the aim of selling it, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to other on-line locations (namely, the SEDO platform), by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent contends: (i) that it, as well as the Complainant, has legal rights to the trademark KIKO as it registered the trademark KIKO in China on July 15, 2010, in Class 42 (scientific and technological services; industrial analysis and research; computer hardware and software design and development; and legal services), and that registration has an expiration date of July 27, 2021; (ii) that many other organizations own the trademark KIKO and use it in varying industries, including food, clothing, metal products, toys and auction; (iii) the Complainant is a cosmetic company whose popularity is mainly limited to Europe, and in particular Italy, whereas in the geographic area covered by the Respondent’s business, China, the Complainant is not well-known at all; (iv) the Respondent purchased the disputed domain name with the goal of developing a social network in China, which was launched on August 1, 2010, and, given the significant different business fields of the Respondent and Complainant, the Respondent’s use of the disputed domain name did not harm the Complainant’s goodwill and reputation; and (v) the Respondent also owns the trademark KIKO that is matched with the disputed domain name, so the Complainant cannot establish entitlement to the disputed domain name by way of its ownership of a trademark registration for the trademark KIKO.
The Respondent contends that it has rights and legitimate interests in respect of the disputed domain name because: (i) it purchased the disputed domain name from the proprietors of a calendar website for USD 65,578.50 in 2010, to use for its expansion into social networking whilst also gaining the goodwill of the disputed domain name; however, as the social networking website did not achieve the desired results it is being redeveloped into a visual navigation site; (ii) the Respondent had used the disputed domain name legally, publicly and in good faith before receiving the notice of the Complaint; and (iii) the Respondent has no intention to mislead consumers or prejudice the Complainant’s equity, especially considering that the disputed domain name had been well-known already as an online calendar site before its purchase by the Respondent.
The Respondent contends that the disputed domain name was not registered and is not being used in bad faith because: (i) the earliest registrant of the disputed domain name is not the Respondent who, in fact, paid over USD 65,000 for it; (ii) after obtaining the disputed domain name, the Respondent not only legally used it publicly, but also registered the trademark matched with the website to which the disputed domain name resolves; (iii) the Respondent had used the disputed domain name in good faith to provide legitimate goods or services in a completely different business field to the Complainant’s cosmetic business, before getting notice of the Complaint; (iv) whilst the Respondent received a price enquiry email regarding the disputed domain name from an Italian software company it did not sell it, and it suggested a price of USD 300,000 to test the value and popularity of the disputed domain name; (v) the Respondent parked the disputed domain name on the SEDO platform after the social networking website to which it previously resolved did not achieve the desired effects, but a new application has come on-line and the parking of the disputed domain name has now ended; and (vi) the Respondent did not attempt to confuse the sources, sponsors, affiliations or endorsement of the Complainant’s trademark through utilization of the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark KIKO, and adds only the generic Top-Level Domain (“gTLD”) “.com”. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent purchased the disputed domain name from the operators of an established, although ultimately commercially unsuccessful, calendar website for a substantial sum (in excess of USD 65,000) in May 2010. Soon thereafter, it filed an application in China to register an image trademark incorporating the word “kiko”, and commenced using the disputed domain name for a website operating under the name “kiko”, in a field of business (social networking) that is unrelated to the field of business in which the Complainant uses it registered trademark KIKO (namely, cosmetics). The evidence in the case record filed by the Respondent is sufficient to satisfy the Panel, on the balance of probabilities, that the Respondent purchased the disputed domain name in good faith, initially used the disputed domain name in connection with a bona fide offering of one type of service (social networking), and now uses the disputed domain name in connection with what appears to be a bona fide offering of another type of service (visual navigation).
Accordingly, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
On May 19, 2010, soon after the Respondent had reached agreement with the then-owners to purchase the disputed domain name and just prior to completion of the transfer to it of the disputed domain name, the Respondent offered to sell the disputed domain name for the sum of USD 300,000, which is substantially in excess of its out-of-pocket expenses in acquiring the disputed domain name. The offer was made in response to an unsolicited approach to the Respondent by an entity claiming to be “an Italian software house” that had “created a new software for a client, a coffee roasting company”, and stating that it “could be interested in” the disputed domain name “to present a draft of new website on that domain name”, and informing that it “would like to know if you are willing to transfer it to us”. The Respondent’s terse response consisted solely of the text “3000,000 USD”. The evidence in the case record filed by the Respondent is sufficient to satisfy the Panel, on the balance of probabilities, that the Respondent did not purchase the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant, or to prevent the Complainant from reflecting its registered trademark in a corresponding domain name, but rather purchased the disputed domain name for the purpose of using it in connection with a bona fide offering of services. Furthermore, the Panel is satisfied, on the balance of probabilities, that the Respondent has not used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating confusion with the Complainant’s trademark, but rather has used the disputed domain name in connection with a bona fide offering of services that does not seek to take advantage of the Complainant’s reputation in its registered trademark. The Panel considers that the Respondent’s temporary use of the disputed domain name to resolve to a parking page containing automatically-generated links to other websites does not constitute a bad faith use of the disputed domain name because, according to the evidence of that use provided by the Complainant, none of the links appeared to be to websites related to the Complainant’s field of business.
Accordingly, the Panel finds that the disputed domain name was neither registered nor is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Presiding Panelist
Eva Fiammenghi
Panelist
Hong Xue
Panelist
Date: February 25, 2014
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