Complainant is KidsLoop Co., Ltd, Republic of Korea, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Hilde Noack, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2021, 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 March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2021. The Response was filed with the Center on April 15, 2021. The Center appointed Marina Perraki as the sole panelist in this matter on April 23, 2021. 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. Procedural Issue – Identity of Respondent On March 23, 2021, an individual with the same surname as Respondent, Mr. Noack, sent an email to the Center requesting that the correspondence concerning the case be transmitted to him. The individual communicated orally to the Center that he is the son of the named Respondent and registrant of the Domain Name, who has passed away (without however submitting any evidence thereof). He also provided new contact details, including email address and postal address. Given that the named Respondent is listed as the registrant of the Domain Name, in these circumstances, the Panel finds that it is the correct Respondent as the holder of the Domain Name registration (see paragraph 1 of the Rules). Furthermore, the Panel accepts the filing made by this individual, Mr. Noack, who has filed the Response and treats himself as “Respondent” and the term Respondent below shall also refer to him. 5. Procedural issue – Language of the proceedings Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The paragraph also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar’s Registration Agreement is made available in German. Notwithstanding the Registration Agreement being in German, Complainant requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainant and Respondent: Complainant claims that it is a company seated in the Republic of Korea and is not familiar with the German language. Its international business primarily operates in English. Translating the Complaint in German and conducting the proceedings in the German language would incur substantial cost, inconvenience and undue delay. Respondent objects to the language of the proceedings being English through the submission of pleadings to the Complaint. Respondent claims not to understand the English language, however Respondent submits pleadings in reply to the contentions of Complainant included in the Complaint which is written in the English language. He also invokes English-language articles from the Internet and rebuts evidence submitted by Complainant of Internet press articles in the English language (WIPO Case No. D2020-3527, Bioline Agrosciences Limited v. Klaus Iwahn). The Panel accepts Complainant’s request and determines that the language of this proceeding will be English (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.5.1 and 4.5.2, Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si,WIPO Case No. D2016‑0721; eBay Inc. v. NicSoft, Antonio Francesco Tedesco,WIPO Case No. D2014-0812). 6. Factual Background Complainant is a corporation organised under the laws of the Republic of Korea in Seoul. It is an international education technology company offering KIDSLOOP products and services, including a cloud learning management system platform that is also tailored for classroom usage in schools. Complainant has offices in Hong Kong, China, the Republic of Korea, Indonesia, United Kingdom, the United States of America, and Vietnam. Complainant markets and promotes its online products and services globally in particular through its primary website at “www.kidsloop.net”. Complainant has been recognised by Forbes for making strides and reaching new market opportunities in 2020. Its recent expansion includes concluding new partnerships with companies including Chrysalis (in India) and the National College of Education (in Vietnam). Complainant is the owner of KIDSLOOP trademark registration internationally, including: - Chinese trademark registration no. 34330672, KIDSLOOP (word), registered on August 14, 2019 for goods in international class 9; Complainant is also the owner of the domain names The Domain Name was registered on March 22, 2004, and at the time of filing of the Complaint it lead to an inactive page. Currently the Domain Name leads to a website in German, with content relating to children activities, including also a magazine under the name KIDSLOOP. Complainant sent three warning letters to Respondent, on December 11, 2020, on December 14, 2020, and on January 05, 2021, to which Respondent did not reply. Per Complainant, both letters were sent via email to the address appearing in the registrant details and they failed to direct to a functioning email address bouncing back to Complainant. The third one was sent by courier to Berlin. 7. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name. B. Respondent Respondent claims that KIDSLOOP is a known German children and parent magazine of Respondent, which is available online and in printed form in Germany since 2004. In 2004 also a KIDSLOOP festival was organised in Berlin. The domain name Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s trademark KIDSLOOP in its entirety. The generic Top-Level Domains (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison as they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is identical to the KIDSLOOP mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your 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 The Panel concludes that Respondent has rights and legitimate interests in respect of the Domain Name. Respondent has submitted a response and has claimed and demonstrated such rights and legitimate interests with respect to the Domain Name. Respondent namely demonstrated such rights prior to the notice of the dispute, namely use of the name KIDSLOOP in connection with a bona fide offering of goods or services in Germany since 2004. Respondent demonstrated that more than 15 years prior to the registration of the Domain Name and many years prior to Complainant’s invoked trademarks and the two KIDSLOOP domain names The Panel finds that these circumstances confer upon Respondent rights and legitimate interests in respect of the Domain Name. Complainant has not established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or Complainant has not demonstrated rights through registration and use on the KIDSLOOP mark that are prior to the Domain Name registration. On the contrary, Complainant admits that the date of registration of the Domain Name is prior to its own rights. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent (WIPO Overview 3.0, sections 3.8.1. and 1.1.3). Respondent demonstrated that more than 15 years prior to the registration of the Domain Name and many years prior to Complainant’s invoked trademarks and the two KIDSLOOP domain names Under these circumstances and on this record, the Panel finds that Respondent has not registered and is not using the Domain Name in bad faith. Complainant has not established paragraph 4(a)(iii) of the Policy. The Panel also considered Reverse Domain Name Hijacking (RDNH) which is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The basis for such a finding would have been that, on the evidence filed, Complainant should have known that the Complaint did not have any chance of success. This also in view of the claim of Respondent, namely that Complainant was aware of Respondent’s KIDSLOOP magazine, The Panel notes the following: under section 4.16 of the WIPO Overview 3.0 reasons for finding RDNH include: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights, The Panel does not find that such facts demonstrating that Complainant had knowledge of Respondent legitimate interests and knowledge of lack of success of the Complaint were presented. As Complainant demonstrated, it attempted multiple times to contact Respondent prior to filing the Complaint and even asked for a correct contact email address from the registrant and ISP of the Domain Name. Furthermore, as Complainant demonstrated, at the time of filing of the Complaint, the Domain Name lead to an inactive page with no content. Lastly, per Respondent, his commercial activity takes place in Germany. The Panel is not persuaded that the Complaint was filed in bad faith. 9. Decision For the foregoing reasons, the Complaint is denied. Marina Perraki
- Chinese trademark registration no. 34340397, KIDSLOOP (word), registered on August 14, 2019, for services in international class 38;
- Chinese trademark registration no. 34330698, KIDSLOOP (word), registered on August 14, 2019, for services in international class 41;
- Chinese trademark registration no. 34319722, KIDSLOOP (word), registered on August 21, 2019, for services in international class 35;
- International trademark registration no. 1445831, KIDSLOOP (word), registered on November 19, 2018, for goods and services in international classes 9, 38, 39, 41;
- Republic of Korea trademark registration no. 40-1519115, KIDSLOOP (word), registered on September 9, 2019, for goods and services in international classes 9, 35, 38, 41; and
- United States trademark registration no. 5,940,681, KIDSLOOP (word), registered on December 24, 2019, for goods and services in international classes 9, 35, 38, 41.
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database”.
Sole Panelist
Date: May 7, 2021
Full & Egal Universal Law Academy