The Complainant is KN Law LLP, Kenya, represented by Coulson Harney Advocates, Kenya.
The Respondent is Kotonya Njoroge LLP, Kenya, represented by Kevin & Associates LLP, Kenya. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2020, 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 for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 6, 2020. 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 November 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Response was filed with the Center on November 27, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 2, 2020. 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 and the Respondent are both law firms practising in Nairobi, Kenya. On December 3, 2012, the Complainant was registered as a limited liability partnership under the name KN Associates LLP. According to the Complaint, the Complainant provides legal services in respect of corporate, commercial and tax law. According to its website, it is a boutique corporate, commercial and tax law firm. For some time, the Complainant used the domain name On November 6, 2013, the Complainant applied for and registered a figurative trademark for KN ASSOCIATES LLP in respect of stationery in International Class 16 and legal services in International Class 45, Registered Trademark No. 80650. The letters “KN” are depicted very prominently, but quite stylised. From about July 2014, the Complainant adopted as its primary domain name In May 2017, the Complainant was permitted by the Law Society of Kenya to change its name to KN Law. On November 27, 2018, the Respondent registered the disputed domain name. The disputed domain name resolves to a website promoting the Respondent. From its website, it appears the Respondent claims to be a boutique, but full service, commercial law firm. The principals of the law firm, or the named principals, are one Mark Kotonya and one Kelvin Njoroge Ng’Ang’a. On or by December 4, 2018, their firm had registered the business name Kotonya Njoroge & Partners Advocates. Evidence submitted by the Respondent shows the firm was using the designation KN & Partners Advocates, with a stylized device of the letters “KN”, in correspondence with other law firms and businesses in Kenya at least by February 2019. On May 22, 2019, the Complainant sent the Respondent, or its predecessor partnership, a cease and desist letter alleging that the Respondent’s use of “KN” in respect of its law practice and website infringed the Complainant’s Registered Trademark No. 80650 for KN ASSOCIATES LLP. On June 10, 2019, lawyers acting for the Respondent replied to that letter rejecting the allegations. The reply pointed out that the Complainant’s trademark was registered with a disclaimer: “Registration of this Mark shall give no right to the exclusive use of the letters “k” & “n” and the words “Associates” & “LLP” each separately and apart from the Mark as a whole.” On June 12, 2019, the Complainant filed applications to register two further trademarks, both in respect of stationery and legal services: (a) Registered Trademark No. 107707 for KN; and (b) Registered Trademark No. 107706 for KN LAW. It appears that both marks were entered on the Register on or about January 27, 2020. The registrations are effective in Kenya from June 12, 2019, the date the applications were filed. Each of these registrations includes a disclaimer in similar terms to that set out for Registered Trademark No. 80650 for KN ASSOCIATES LLP. On October 23, 2019, the Respondent changed its name from Kotongya Njoroge & Partners Advocates LLP to its current name. The date on which the partnership of Kotongya Njoroge & Partners Advocates became the limited liability partnership Kotongya Njoroge & Partners Advocates LLP is not clear on the record. As discussed below, it may have been October 7, 2019. Further letters of demand based on all three registered trademarks were issued in March, July and August 2020. In addition to the Complainant and the Respondent, there are three other law firms in Kenya using domain names based on “kn”: (i) K.N. Rono Law/K.N. Rono & Co. Advocates which is using (ii) Kamotho Njomo & Co. Advocates which is using (iii) Kiingati Ndirangu & Associates Advocates which is using The Respondent has also provided evidence of a number of other businesses around the world using domain names based on “kn”. These include three law firms: (i) Kopp-Assenmacher & Nüsser Partnerschaft von Rechtsanwälten mbß, (ii) Law Office of Kari Nelson, (iii) KN Law PC LLO, Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the 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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the three registered trademarks referred to in section 4 above. The Complainant has also claimed that, at least since its adoption of the name KN Law LLP, it has developed “immense goodwill” and is known within local and international legal circles as “KN”. The Complainant does include a number of examples of letterhead, brochures and corporate stationery showing use of the name KN Associates LLP or KN Law LLP. The Respondent is critical of this evidence as it is largely undated and, in the case of the letterhead, does not contain any content directed to third parties. The Panel does note that an example of KN Law LLP letterhead does include badges which state that the Complainant has been “Recommended” or “Ranked” in Chambers Global in each of 2017, 2018, 2019 and 2020. The Panel also notes that all, or almost all, use in the examples features the Complainant’s name in full: KN Associates LLP or KN Law LLP and the most prominent uses feature the letters “KN” in the figurative form. Bearing in mind the nature of the two-letter combination, “KN”, the use of that identifier by at least three other law firms in Kenya (apart from the Complainant and the Respondent) and the way the Complainant has actually used its name and mark, the Panel considers the evidence falls well short of what would be required to establish the Complainant has established common law rights in “KN” alone for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See WIPO Overview 3.0 , section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. As noted above, each of the registered trademarks has been registered with a disclaimer. In the case of registered trademarks 80650 (KN ASSOCIATES LLP) and 107706 (KN LAW), the Panel understands the effect of the disclaimer to limit the scope of the trademark essentially to the trademark as a whole. The disclaimer for Registered Trademark No. 107707, KN, reads: “Registration of this mark shall give no right to the exclusive use of the letters “K” and “N” each separately and apart from the mark as a whole.” This would appear to give the Complainant exclusive rights in Kenya in respect of “KN” as a trademark in relation to stationery and legal services. Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark No. 107707 (KN) and the term “-partners”. As this requirement under the Policy is essentially a standing requirement, the addition of such a descriptive term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. The fact that this trademark was registered after the disputed domain name does not disqualify it from consideration at this stage. That consideration is more properly taken into account under the second and third inquiries as UDRP panels have frequently recognised situations where a domain name can be registered and used in bad faith even where the trademark was registered after the domain name. A number of such situations are referred to in WIPO Overview 3.0, section 3.8.2. The other two registered trademarks (i.e., KN ASSOCIATES LLP and KN LAW) present more difficulty. Each consists of additional, albeit descriptive terms and, as already noted, are subject to disclaimers. That said the two registered trademarks and the disputed domain name all have in common the letter combination “KN” as the first element of the sign. Further, the additional element of the disputed domain name (i.e. “-partners”) is itself a descriptive term. While different to the descriptive terms in the Complainant’s trademarks, it arguably conveys a similarity of meaning to “associates” and is not at all inapt for use in connection with a business providing legal services. Given the disclaimers, it is only with considerable reluctance that the Panel considers the disputed domain name is confusingly similar to each of these trademarks too. Consistently with the approach generally taken under the Policy, the Panel considers it more appropriate to consider potential defences or justifications under the second and third inquiries. In the result, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s registered trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The Complainant further contends that the Respondent is not commonly known as KN Partners, but as Kotonya Njoroge LLP. According to a letter from the Registrar of Companies, the Respondent was registered as a limited liability partnership on October 7, 2019. Accordingly, the Complainant contends that, as it has prior rights in the three registered trademarks and use of KN as a trademark for legal services, the Respondent does not have rights or legitimate interests in the disputed domain name. While it appears that the Respondent was incorporated as limited liability partnership only on October 7, 2019, as noted above the partnership of Messrs Kotonya and Njoroge was first registered as carrying on business under the name Kotonya Njoroge & Partners Advocates in December 2018, only a few days after the disputed domain name was registered. Although the formal details of how the business of the partnership was transferred to, or became, the limited liability partnership, the Panel considers it appropriate to treat the limited liability partnership as the successor in title to the partnership given the involvement of both Mr Kotonya and Mr Njoroge in the business throughout. The Response also includes examples of business communications by the Respondent with third parties using the shortened form “KN & Partners Advocates” with a stylised version of “KN” as a logo. These communications were dated in February and March 2019. Apart from the evidence of these communications, the Panel would consider that the letters “KN” are a natural condensation or abbreviation of the name “Kotonya Njoroge” in the circumstances of this case. The first significance of these findings is that the Complainant’s registered trademark for “KN” was not filed until well after the Respondent had adopted and was using both Kotonya Njoroge & Partners Advocates and KN & Partners Advocates. That is also true of the Complainant’s registered trademark for KN LAW. However, there is some evidence establishing that the Complainant had adopted its name KN Law LP before Messrs Kotonya and Njoroge started their partnership. In addition, the Complainant’s registered trademark No. 80650 (KN ASSOCIATES LLP) was registered well before the Kotonya Njoroge partnership commenced. While Trademark No 80650 (KN ASSOCIATES LLP) was registered before the Respondent’s predecessor commenced, that registered trademark is subject to the disclaimer of exclusive rights already mentioned. The Panel considers the disclaimer is likely to limit the Complainant’s rights through the registered trademark to use of the mark as a whole. Given the disclaimer, and bearing in mind that: (a) “KN” is a natural condensation or abbreviation of Kotonya Njoroge; (b) there is evidence that the Respondent has also used the shortened form “KN & Partners Advocates” in connection with its business; (c) there is evidence of at least three other law firms in Kenya using domain names formed on “kn”; and (d) there are a number of visual and aural differences between the disputed domain name and registered trademark No. 80650 (KN ASSOCIATES LLP); the question whether the use of the disputed domain name is inconsistent with the Complainant’s registered trademark appears debatable and likely to turn of considerations of trademarks law in Kenya more appropriately dealt with in judicial proceedings than the present form of administrative proceeding. Accordingly, the Panel considers that the Complainant has not demonstrated the Respondent has no rights or legitimate interests in the disputed domain name in the face of the registered trademark No. 80650 (KN ASSOCIATES LLP). Even if the Complainant had demonstrated common law rights in “KN” or “KN Law” as an unregistered trademark, similar considerations would be likely to apply. Accordingly, the Panel finds the Complainant has not established the second requirement under the Policy and so the Complaint must fail. C. Registered and Used in Bad Faith As the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name, the Complaint must fail. Accordingly, no good purpose would be served by addressing the third requirement under the Policy. 6. Decision For the foregoing reasons, the Complaint is denied. Warwick A. Rothnie
Sole Panelist
Date: December 16, 2020
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