The Complainant is KIKO S.p.A., Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Whois Privacy Protection Service by , Japan / Lee Black, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2019, 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 June 6, 2019 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 amended Complaint in English on June 6, 2019.
On June 6, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On June 6, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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, in English and Japanese, of the Complaint, and the proceedings commenced on June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. On June 20, 2019, the Center received an email communication in Chinese and English from a third party regarding the Respondent’s postal address. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on July 19, 2019. 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
Based on the Complaint and supporting documents, and there being no response from the Respondent, the panel finds as non-contested facts:
- Since 1997, the Complainant has sold cosmetics under the “Kiko Cosmetics” brand, establishing a global presence sold in 34 countries.
- The Complainant registered its KIKOCOSMETICS trademark in the European Union (“EU”) in 2010 (such as EU trade mark registration number 008454126, registered on January 31, 2010), and owns an international trademark KIKO designating Japan since 2000 (trademark number 733058, registered on March 24, 2000).
- The Complainant operates its own website under the domain name .
- The Respondent registered the disputed domain name on February 20, 2019 and is currently using it to operate a website serving adult content and gambling services.
- The Center attempted to contact the Respondent at all known addresses in English and Japanese. One email communication from a third party has been received by the Center on June 20, 2019, indicating that there is no “Lee Black” in that postal address. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent has registered and is using the disputed domain name in bad faith by knowingly and wrongfully tarnishing the Complainant’s trade name, brand and reputation, by using it for adult and gambling content. The Complainant requests the transfer of the disputed domain name . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Language of the Proceeding
The first item to address is the language of this administrative proceeding. The principle established under the Rules, paragraph 11(a), is that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Based on communications from the Registrar, Japanese is the language of the Registration Agreement. Accordingly, the initial starting place for the language of the proceeding should be in Japanese, subject to the authority of the Panel to determine otherwise.
In this instance, the Panel notes that the Center sent the Respondent case-related communications email in English and Japanese and gave the Respondent chances to respond in either language of its preference. The Panel also notes the Complainant’s request that the language of the proceeding be English. The Panel would have accepted a Response in either English or Japanese, but none was filed.
Moreover, the Panel notes that Respondent’s name (“Lee Black”) appears to be a western name and that the disputed domain name incorporates English words, which suggests that the Respondent has certain knowledge of English. Accordingly, the Panel determines it proper to go forward in the proceeding in English. A. Identical or Confusingly Similar
The disputed domain name incorporates the entirety of Complainant’s trademark KIKOCOSMETICS. It differs from the Complainant’s KIKOCOSMETICS trademark merely by the addition of “www” before “kikocosmetics”, and the addition of a generic Top-Level Domain (gTLD) “.com”. Under the principles set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that the disputed domain name is confusingly similar to the Complainant’s KIKOCOSMETICS trademark. B. Rights or Legitimate Interests
The Complainant indicates it has never authorized the Respondent to register or use any domain name by using its globally known trademark. There is no business relationship between the Parties, and the Respondent is not commonly known by the disputed domain name. The fact that the dispute domain name is being used to host a site featuring porn and gambling content further negatively reflects on the Respondent’s use. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii),the Panel finds that the Complainant has made out a prima facie case which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established a global brand for its cosmetics. The Panel does not believe it likely that the Respondent independently created the disputed domain name without the Complainant’s KIKOCOSMETICS trademark in mind, and finds it difficult to believe that the Respondent was unaware of the brand, and just happened to register a confusingly similar disputed domain name . The fact that the disputed domain name resolves to a website featuring porn and gambling content further reveals a financial motive of misleading Internet users trying to find the Complainant’s website to the Respondent’s website for its own financial gain. Due to the nature of the Respondent’s website, it is clear that this could disparage the Complainant’s name and reputation. The fact that the Respondent has failed in any way to challenge the Complainant’s contentions further leads the Panel to the conclusion that its registration and use of the disputed domain name has been done in bad faith as set forth under Policy, paragraphs 4(a)(iii) and 4(b)(iv). 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.
Haig Oghigian
Sole Panelist
Date: August 1, 2019
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