The Complainant is Kik Interactive Inc. of Waterloo, Canada, represented by Currier + Kao LLP, Canada.
The Respondent is Whois Agent, c/o Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / alfredo jose of Anaco, Bolivarian Republic of Venezuela. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2017. On January 16, 2017, 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 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 January 18, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on January 21, 2017.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. The Center received two email communications from the Respondent on February 8, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 22, 2017. 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 Complainant uses the KIK trademark in connection with a real-time instant messaging software application since 2010. It is the owner, amongst several others, of the following trademark registrations in Canada:
- Trademark Registration No. TMA837382 for the word mark KIK, filed on October 30, 2009 and registered on November 30, 2012, and
- Trademark Registration No. TMA929834 for the word and device mark KIK, filed on April 2, 2013 and registered on February 19, 2016.
The disputed domain name was registered on February 26, 2015. Currently, an active webpage resolves from the disputed domain name offering messaging services and reproducing the Complainant’s logo. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have been using since 2010 a real-time instant messaging software application referred to as Kik Messenger which has been downloaded so far by over three hundred million users.
The Complainant further asserts that the disputed domain name was registered, using a privacy protection service so as to conceal its true identity, with a clear attempt to mislead Internet users into associating the disputed domain name with the Complainant’s trademark.
Under the Complainant’s view the addition of the generic or descriptive term “sexting on” to its well-known KIK mark does not add distinctiveness to the disputed domain name and creates a potential impression that the Respondent is affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues, inter alia, that:
i. the Respondent registered the disputed domain name without the Complainant’s authorization nor is it affiliated with the Complainant or holds the right to distribute the KIK Messenger application or use the KIK trademark;
ii. the website that resolves from the disputed domain name makes references to the Complainant’s KIK Messenger application which can cause large amounts of Internet traffic to be redirected towards the disputed domain name;
iii. the Respondent is not and has not been commonly known by the disputed domain name;
iv. by displaying in the webpage that relates to the disputed domain name pornographic advertisements the Respondent is using the disputed domain name to generate revenue, which does not characterize a legitimate noncommercial or bona fide use of the disputed domain name.
In what it relates to the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident in view of the reproduction of its logo and references to the Kik Messenger in the webpage that resolves from the disputed domain name. Furthermore, the Complainant asserts that the inclusion of a small disclaimer stating that the disputed domain name is not related to the Complainant is proof of the Respondent’s evident knowledge of the Complainant and does not reduce attraction of Internet traffic to the disputed domain name in view of the confusion with the Complainant’s KIK trademark.
The use of the disputed domain name in bad faith arises from the commercial gain through the use of third-party advertisements displayed at the webpage that resolves from it, which can also tarnish the Complainant’s reputation and trademarks in view of their pornographic contents.
Lastly, the Respondent’s bad faith can also be inferred from the use of a privacy protection service so as to conceal its true identity. B. Respondent
The Respondent did not reply to the Complainant’s contentions. On February 8, 2017, the Respondent sent two similar messages to the Center stating that the website relating to the disputed domain name “will be cancelled before the 12 of February”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the KIK trademark. The addition of the descriptive term “sexting on” does not avoid a risk of undue association by Internet users between the disputed domain name and the Complainant’s trademark.
The first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant indeed states that no authorization was granted for the use of the KIK mark in the disputed domain name.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent’s use of the disputed domain name in connection with a webpage that offers messaging services, reproduces the Complainant’s logo and makes references to the Complainant’s messaging services and depicts third-party pornographic advertisements cannot be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant’s consumers.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage which offers messaging services, reproduces the Complainant’s logo and makes references to the Complainant’s messaging services and depicts third-party pornographic advertisements.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Other factors corroborate a finding of bad faith such as the use of a privacy protection service; wrong information in the WhoIs records (non-existing address relating to the Respondent) and the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraphs 4(b)(iv) and 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 disputed domain name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: February 23, 2017
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