Complainant is Kik Interactive Inc. of Ontario, Canada, represented by Currier + Kao LLP, Canada.
Respondent is Nestor Hernandez of New York, United States of America ("United States"). 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and (the "Domain Names") are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2016. On April 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 11, 2016. The Center received informal email communications from Respondent on May 15, 2016 and May 23, 2016.
The Center appointed Clive Elliott Q.C. as the sole panelist in this matter on May 26, 2016. 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 operates and markets an instant-messaging software application, and related services, available via the internet.
Complainant owns a number of trademark filings and registrations for the KIK Marks in the United States, Australia, Canada, the European Union, the United Arab Emirates, Norway, and Saudi Arabia, as well as various other jurisdictions since at least November 30, 2012 (in the case of Canadian trademark registration No. TMA837382).
According to WhoIs the Domain Names were registered as follows:
November 14, 2014
November 26, 2014
November 26, 2014
August 5, 2015
September 4, 2015
October 18, 2015
October 30, 2015
June 11, 2015
December 11, 2015
The Domain Names have been used in connection with websites displaying sexually explicit content, some of which appear to offer "adult" chat services. At the time of this decision, the websites at the Domain Names appear to be inactive. 5. Parties' Contentions A. Complainant
Complainant is a Canadian corporation with its head office located in Waterloo, Ontario, Canada.
Complainant uses and owns the rights in the KIK word mark, the KIK and design mark, and the K and dot design mark (collectively, the "KIK Marks") in connection with its real-time instant messaging software application and a variety of related services (hereinafter referred to as "KIK Messenger"). Instant messaging services, such as those provided by KIK Messenger, are commonly referred to by users as "chat" services.
Complainant has invested substantial effort and resources in developing and marketing its products and services under the KIK Marks and owns a number of trademark filings and registrations for the KIK Marks in the United States, Australia, Canada, the European Union, the United Arab Emirates, Norway, and Saudi Arabia, as well as various other jurisdictions.
Complainant asserts that the KIK Marks are widely recognized amongst consumers, with over two hundred and seventy million (270,000,000) users downloading its KIK Messenger; and that the KIK Marks embody Complainant's valuable reputation and goodwill in the marketplace.
Complainant became aware of a website with the domain name , registered by Respondent, allegedly offering a chat service on the website located at "www.".
Furthermore Complainant became aware that Respondent had registered a further eight domain names which included the KIK mark: , , , , , , , and . The websites located at all of these domains, except , operate to redirect Internet users to various sexually explicit websites, some of which contain various offers/surveys, which the Internet user must fill out before being given an alleged benefit from completing the offer/survey. The Domain Name appears to be inactive at this time.
Complainant states that the Domains Names were registered without authorization from it. It has made multiple attempts to resolve this matter with respect to the Domain Name with Respondent. However, since no resolution has been reached with respect to the Domain Name , Complainant has not directly contacted Respondent with respect to the other eight Domain Names.
Complainant contends that it has used the KIK Marks as early as April 2010, some four years before the earliest registration of the Domain Names, and that its domain was registered on November 6, 1999, and has been exclusively used by it since at least as early as April 2010.
Complainant asserts that the Domain Names are identical and/or confusingly similar to the KIK word mark, in that the KIK word mark appears in the first three characters of six of the Domain Names (, , , , , and ) and at the end of the three other Domain Names (, , and ).
The inclusion of the word "chatroom" in the Domain Name is merely descriptive of the services being offered, which are similar to and confusingly similar with those offered by Complainant and therefore Complainant submits that the placement of the KIK word mark at the beginning of the Domain Name clearly implies that the website at that location is in some way affiliated, connected, or otherwise associated with Complainant.
It is contended that the inclusion of the "hookups" in ; "blackbook" in ; "flyrts" in ; "offers" in ; and "sters" in are an attempt to deceitfully drive Internet traffic to the websites located at the Domain Names by including Complainant's KIK word mark in each of the Domain Names with the addition of a description of alleged services offered.
Similarly, in the remaining three of the Domain Names, the KIK word mark appears at the end of the Domain Names (, and ). It is argued that this is an attempt to drive Internet traffic to the websites located at the Domain Names by including Complainant's KIK word mark at the end of each of the Domain Names, following a description of alleged services offered and/or the target audience for the offered services.
Complainant submits that Respondent has no rights or legitimate interests in the Domain Names and has registered the Domain Names without authorization from Complainant and further that Respondent's use of the Domain Names featuring Complainant's KIK Marks leads to confusion, mistake, and deception on the part of the consuming public as to whether the Domain Names are affiliated, connected, or otherwise associated with Complainant.
Complainant contends that the KIK word mark is not an ordinary dictionary word in English, but rather it is a famous, unique, and distinctive mark forming part of Complainant's brand and that a Google search of the KIK word mark provides multiple results of Complainant's KIK brand.
Complainant notes that to date there appears to be no evidence of Respondent's use of, or demonstrable preparation to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, and submits that therefore the only reason Respondent would have to incorporate the KIK word mark in the Domain Names is to exploit the recognition of Complainant's KIK Marks to drive internet traffic to the websites located at the Domain Names.
Complainant asserts that the content of the website located at the Domain Name tarnishes the KIK marks through the use of sexually explicit images and other content that the KIK marks are not associated with, and contains advertisements that direct Internet users to third party sexually explicit websites when clicked on, which require memberships. Additionally, the Domains Names , , , , , , and all redirect Internet users to various third party websites.
Complainant contends that Respondent is not making a legitimate noncommercial use of the Domain Names, but rather, the Domain Names are intended for commercial gain at the expense of the goodwill in the KIK Marks.
Complainant submits that Respondent's metatag use in combination with the sexually explicit advertisements, and third party website redirects on the websites located at Domain Names demonstrates that Respondent is making use of the famous KIK Marks to lead to confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Names in an attempt to attract Internet users for commercial gain.
Complainant submits that the only reason for Respondent to have registered the confusingly similar Domain Names, to be operating an alleged chat website located at the Domain Name, and to redirect Internet users to various third party websites, is to exploit the recognition of the famous KIK Marks and drive Internet traffic to the websites located at the Domain Names.
The inclusion of the disclaimer "kik chatroom is not affiliated with kik messenger" at the bottom of the website located at "www.", Complainant contends is an indication that Respondent knew of Complainant's KIK Marks when creating the website located at the Domain Name. By the time Internet users reach the website located at the Domain Name and read any disclaimer written by the Respondent, assuming the user can find the disclaimer in the small print at the bottom of the website, the goal of attracting Internet traffic to the website located at the Domain Name by creating and exploiting confusion between the Domain Name and the Complainant's KIK Marks is achieved. It is therefore submitted that Respondent had prior knowledge of Complainant's KIK Marks.
Complainant considers that Respondent's actions of driving Internet traffic to the websites located at the Domain Names by creating and exploiting confusion between the Domain Names and Complainant's famous KIK Marks amounts to bad faith. Complainant also contends that Respondent has shown a pattern of unauthorized registration of Complainant's KIK Marks, with the only explanation for such registrations is to be an intentional effort to trade upon the fame of Complainant's KIK Marks for commercial gain. B. Respondent
Despite sending two informal communications to the Center, respondent did not reply formally to Complainant's contentions. 6. Discussion and Findings
For the reasons set out below Complainant succeeds in its complaint. A. Identical or Confusingly Similar
Complainant asserts that it uses and owns the rights in the KIK Marks in connection with its real-time instant messaging software application and a variety of related services. It further asserts that the Domain Names are identical and/or confusingly similar to the KIK word mark which form part of the KIK Marks.
The KIK word mark appears in the first three characters of six of the Domain Names (, , , , , and ) and at the end of three of the other Domain Names (, , and ). The various words used with the KIK word mark are merely descriptive, insofar as they describe the types of services offered and together they imply that the website at that location is in some way affiliated, connected, or otherwise associated with Complainant, contrary to the fact.
It makes no material difference whether Complainant's KIK word mark is placed at the beginning or end of one or more of the Domain Names. In the absence of evidence or any submission to the contrary the Panel concludes that the Domain Names are either identical or at least confusingly similar to the KIK Marks. By adding a descriptive term to a known trademark or name does not render it different or distinctive from that trademark or name.
It is amply clear that the Domain Names include the KIK Marks and that the said KIK Marks are clearly identifiable, if not dominant, within the Domain Names. Respondent has had the opportunity to do so but has declined to explain why it registered the Domain Names, each of which contain the element "kik". As a result, the Panel has no difficulty in finding that the Domain Names are confusingly similar to the KIK Marks.
It is therefore found that Complainant has rights in the KIK Marks, that the KIK Marks comprise a dominant and confusing part of the Domain Names, and that the requirements of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
Respondent is not apparently affiliated with Complainant in any way and has not been authorized by Complainant to use and register its trademarks or to seek the registration of any domain name incorporating the KIK Marks.
The registration and use of the KIK Marks preceded the registration of the Domain Names. The Domain Names make an obvious and direct reference to the KIK Marks and the messaging or chat services provided by or associated with Complainant.
Complainant contends that Respondent is not making a legitimate noncommercial use of the Domain Names, but rather, the Domain Names are intended for commercial gain at the expense of the goodwill in the KIK Marks. That is, on the basis that Respondent's metatag use is in combination with sexually explicit advertisements on third party websites, which redirect on the websites located at the Domain Names.
In the Panel's view, this is consistent with commercial use of the Domain Names for the inappropriate purpose of diverting customers to the offerings of a third party's goods or services. This assertion is not disputed. The Panel finds that such activity is not consistent with any rights or legitimate interests on Respondent's part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and uses the Domain Names in bad faith.
It is not difficult, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant's KIK Marks at the time it registered the Domain Names. Complainant's business and its particular services appear to be well known and well established. It is reasonable to infer that Respondent would not have gone to the trouble of registering nine domain names, each containing the KIK Mark unless that Mark had some reputation and commercial value. This also evidences a pattern of deliberate and questionable behaviour on Respondent's part. Moreover, the Panel finds that the use of the Domain Names in connection with websites displaying sexually explicit advertising, as detailed above in Section 6B, to amount to use of the Domain Names in bad faith.
This enables the Panel to conclude that the Domain Names were both registered and used in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , , , , and be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: June 11, 2016
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