Complainant is Kik Interactive Inc. of Waterloo, Ontario, Canada, represented by Currier + Kao LLP, Canada.
Respondent is Anonymous Domain Registration Service of Lelystad, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with
Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2016. On July 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 26, 2016, 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").
On July 27, 2016, the Center notified Complainant: "The Complaint has been submitted in English. […] According to information we have received from the concerned registrar, the language of the registration agreement for the disputed domain name is Dutch." Accordingly, the Center requested that Complainant provide at least one of the following: "1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Dutch; or 3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English." On July 29, 2016, Complainant submitted a request for English along with reasons in support thereof. Respondent did not reply to this request.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 3, 2016. In its notice, the Center stated that it had decided to "1) accept the Complaint as filed in English; 2) accept a Response in either English or Dutch; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment)." In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 24, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 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 states that it has been using the KIK Trademark (defined below) "on a global basis" since April 2010 in connection with goods and services related to its real-time instant messaging software application, which has been downloaded by more than 300 million users.
Complainant states, and provides evidence to support, that is the owner of numerous trademark registrations for the mark KIK, including in Canada, the United States of America ("U.S."), the European Union, Norway, Saudi Arabia and the United Arab Emirates. These registrations include Canadian Reg. No. TMA837382 (filed October 30, 2009; registered November 30, 2012) and U.S. Reg. No. 4,526,019 (filed April 27, 2010; registered May 6, 2014). These registrations are collectively referred to herein as the "KIK Trademark."
The Disputed Domain Name was created on November 18, 2015.
Complainant states, and provides evidence to support, that the Disputed Domain Name is used in connection with a website that "appears to offer a free download for the Complainant's KIK Messenger messaging application; however, it is suspected that the Disputed Domain downloads malware or other undesired software to user computers." 5. Parties' Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the KIK Trademark because, inter alia, "the KIK word mark appears in the first three characters of the Disputed Domain and the remainder of the domain is descriptive."
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Complainant has not granted any permission to the Respondent to use the Disputed Domain"; "[t]he only reasonable explanation that the Respondent would have to use the Disputed Domain is to exploit the recognition of the KIK Marks for the purpose of deceitfully driving Internet traffic to the website located at the Disputed Domain to distribute malware, adware or other undesired applications"; and "Respondent is in no way connected with the Complainant or the KIK Marks and has no right to distribute the KIK Messenger application."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "Respondent registered the Disputed Domain in bad faith and has been using the websites located at the Disputed Domain in bad faith by attracting Internet users through confusion"; "[t]he Disputed Domain has been used for commercial gain through the use of free download advertisements" and "the use of third party advertisements"; and "[t]he only reasonable explanation for the Respondent to have registered the Disputed Domain offering an alleged free messenger download is to redirect Internet users to exploit the recognition of the KIK Marks and drive Internet traffic to the websites located at the Disputed Domain." B. Respondent
Respondent did not reply to Complainant's contentions. 6. Preliminary Issue: Language of Proceeding
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.3, states:
The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the UDRP Rules […].
Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.
In order to preserve the panel's discretion under paragraph 11 of the UDRP Rules to determine the appropriate language of proceedings in such cases, where a complainant files a complaint in a language other than that of the registration agreement, the WIPO Center will notify both parties (in all relevant languages wherever possible) of the potential language issue, inviting the complainant to either translate the complaint or, if not submitted already, to submit a supported request (e.g., by reference to prior party communication, website language, or respondent identity) that the complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the respondent with an opportunity to comment on or object to any such language request that may be made by the complainant. If the complainant elects not to translate but rather to submit a supported language request, such request and any comments that may be received from the respondent would normally be placed before the panel for determination of the language issue upon the panel's appointment. The panel, having made such determination, would have power to order any further procedural steps (up to and including ordering the translation of the complaint) it would deem necessary. In such cases, prior to appointment and determination by the panel, the WIPO Center would (wherever possible) send its communications to the parties in "dual language" (i.e., in both the language of the registration agreement, and the language of the complaint).
Here, Complainant submitted the Complaint in English and the Registrar stated that the language of the registration agreement was in Dutch. In response to the Center's request, the Complainant noted that, among other things, the content of the website associated with the Disputed Domain Name is in English and the Disputed Domain Name contains the English word "messenger" – both of which "demonstrate[] the respondent's familiarity and comfort with the English language." The Panel agrees and, without any objection from Respondent, allows this proceeding to be conducted in English. 7. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the KIK Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the KIK Trademark, the relevant comparison to be made is with the second-level portion of this domain name only (i.e., "kik-messenger"), as it is well established that the Top-Level Domain (i.e., ".com") may generally be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 ("[t]he applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.")
With respect to the hyphen in the Disputed Domain Name, numerous previous panels have stated that "punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity". Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656.
Further, the addition of the word "messenger" to the Disputed Domain Name "describes the products or services with which the trademark is ordinarily used" and, therefore, does nothing to distinguish the Disputed Domain Name from Complainant's mark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Complainant has not granted any permission to the Respondent to use the Disputed Domain"; "[t]he only reasonable explanation that the Respondent would have to use the Disputed Domain is to exploit the recognition of the KIK Marks for the purpose of deceitfully driving Internet traffic to the website located at the Disputed Domain to distribute malware, adware or other undesired applications"; and "Respondent is in no way connected with the Complainant or the KIK Marks and has no right to distribute the KIK Messenger application."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent has 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 valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the registrant's website or location.
Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraphs 4(b)(iv) of the Policy because, by promoting downloads of software under the KIK Trademark, on a web page that contains advertisements, Respondent is acting for commercial gain and creates a likelihood of confusion with the KIK Trademark. The Panel readily agrees. See, e.g., Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168: "The Panel is […] prepared to find that the Respondent registered the domain name and used the disputed name to operate a website that offered for sale downloads and software of the Complainant when it was not authorized or licensed to do so for the purposes of monetary gain. The Respondent did not file any response contesting this claim."
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: September 8, 2016
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