The Complainants are Kent Ro Sytems Limited (“First Complainant”) and Mahesh Gupta (“Second Complainant”), both of India, represented by Vutts & Associates LLP, India.
The Respondent is Iqbal Khan, AL Tareeq Allamee Tr. Est, United Arab Emirates (“UAE”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2021, 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.
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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. On July 10, 2021, the Center received an email communication from the Respondent and invited the Parties to explore settlement options. The proceeding was suspended on July 16, 2021. The proceeding was reinstituted on August 18, 2021. The Center notified the commencement of Panel appointment process on September 3, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 13, 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. Factual BackgroundThe Second Complainant is an individual and the owner of trade mark registrations for a mark consisting of the word KENT (the “KENT Mark”) in the various jurisdictions including India, UAE, China, United Kingdom and European Union. The KENT Mark was first registered in India on April 5, 2006, (registration number 1442714). The Second Complainant has used the KENT Mark since 1994 including licensing it to the First Complainant (of which he is the Chairman and Managing Director) since 2007.
The Second Complainant is the authorized licensee of the KENT Mark and since 2007 has offered various products under the KENT Mark including water purifiers and other home appliances such as vacuum cleaners, air purifiers, kitchen appliances and sanitisers. The Second Complainant has developed a considerable reputation in India, with a 40% market share of the market for reverse osmosis water purifiers and has engaged in considerable marketing and promotion featuring the KENT Mark. Amongst other distribution channels, it offers its products through the website “www.kent.co.in” (“Complainants’ Website”).
The Domain Name was registered on March 23, 2021. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (“the Respondent’s Website”) that reproduced the KENT Mark, the Complainants’ logo and images of the Complainants’ brand ambassador. The Respondent’s Website purports to offer the Complainants’ KENT water purification products, notwithstanding that it is not an official store or authorised distributor of the Complainants. The parties to the present proceedings were also the parties in Kent RO Systems Limited, Mr. Mahesh Gupta v. Iqbal Khan / Al Tareeq Allamee Tr. Est,WIPO Case No. DAE2021-0005 which involved the domain name
The Complainants make the following contentions:
(i) the Domain Name is identical or confusingly similar to the Complainants’ KENT Mark;
(ii) the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainants are the owner of the KENT Mark, having registered and used the KENT Mark in India, the UAE and various other jurisdictions. The Domain Name reproduces the KENT Mark along with the geographic term “dubai” that does not distinguish the Domain Name from the KENT Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainants to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to create a website that purports to sell the Complainants’ products and reproduces the Complainants’ KENT Mark and logo, such use not being bona fide.
The Domain Name was registered and is being used in bad faith. By using the Domain Name for a website that reproduces the Complainants’ Mark and logo and purports to represent the Complainants, the Respondent is clearly aware of the KENT Mark and is using it to deceive consumers as to its affiliation with the Complainants. Such conduct amounts to registration and use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings A. Consolidation of Multiple ComplainantsThe WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The present proceeding involves two Complainants bringing a single complaint against a common Respondent. The Complainants have made a request for consolidation and bear the onus of establishing that such a consolidation is justified.
The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as related entities that hold and use the KENT Mark.
The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case it is no doubt equitable and procedurally efficient.
The Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation.
B. Identical or Confusingly SimilarTo prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark.
The Second Complainant is the owner of the KENT Mark, having registrations for the KENT Mark as a trademark in India. The Domain Name wholly incorporates the KENT Mark with the addition of the geographic term “dubai”. The addition of geographic terms to a complainant’s mark does not prevent a finding of confusing similarity; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056.
The Panel finds that the Domain Name is confusingly similar to the Complainants’ KENT Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate InterestsIn general, to succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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
(ii) you (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 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.”
The Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the KENT Mark or a mark similar to the KENT Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent has used the Domain Name to operate a website to sell products that purport to be legitimate KENT products. If the products sold on the Respondent’s Website are not genuine products produced by the Complainants, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainants’ KENT Mark for a site selling counterfeit products (see WIPO Overview 3.0, section 2.13.1).
Even if the Respondent is offering genuine KENT products from the Respondent’s Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:
“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The ‘Oki Data test’ does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainants, in particular that it is not an authorized dealer or has any particular connection with the Complainants. Rather, its prominent display of the KENT Mark, its reproduction of the Complainants’ logo and images of the Complainants’ official brand ambassador without the Complainants’ authorization, and the absence of a disclaimer or any explanation as to the identity of the operator of the Respondent’s Website results in the impression that the Respondent’s Website is an official website of the Complainants in the UAE. Even in the event that the Respondent is reselling genuine KENT products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name. In addition, the Panel notes the nature of the Domain Name which carries a risk of implied affiliation, see section 2.5.1 of the WIPO Overview 3.0.
The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of its 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 its 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 respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainants and their reputation in the KENT Mark at the time the Domain Name was registered. The Respondent’s Website contains numerous references to the Complainants, including offering the Complainants’ products for sale and reproducing the image of the Complainants’ brand ambassador. The registration of the Domain Name in awareness of the KENT Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either the Complainants’ products or counterfeit products that compete with the Complainants’ products. The Respondent is using a Domain Name that is confusingly similar to the KENT Mark to sell products, be they genuine or otherwise, in competition with the Complainants and without the Complainants’ approval and without meeting the Oki Data test. An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a website in some way connected to the Complainants. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants and the Complainants’ KENT Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Nicholas Smith
Sole Panelist
Date: September 15, 2021