The Complainants are Kent Ro Sytems Limited, India and Mr. Mahesh Gupta, India, represented by Vutts & Associates LLP, India.
The Respondent is Umer Khokhar, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2020. On August 21, 2020, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the Disputed Domain Name. On August 24, 2020, AE Domain Administration (.aeDA) 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 received an email communication on August 29, 2020 from an email address connected to the Disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2020. The Respondent sent an email communication to the Center on September 22, 2020 and October 1, 2020. Accordingly, the Center notified the Parties the commencement of panel appointment on October 29, 2020. The Center appointed Pablo A. Palazzi as panelists in this matter on November 1, 2020. The Panel finds that it was properly constituted. Each member of 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 No. 2 Mr. Mahesh Gupta is the Chairman and Managing Director of the Complainant No.1 Kent Ro Sytems Limited, an Indian company. The Complainants claim to be carrying on business exclusively under the name and trademark KENT since 1988 in relation to water purifiers in India. The Complainants submitted evidence that the trademarks KENT and KENT formative trademarks are a registered on behalf of the Complainant No. 2. In addition, the term KENT comprises a prominent part of the corporate name of the Complainant No.1’s company. The Complainant No.1 is using the KENT trademark by virtue of a license agreement dated June 27, 2007, with the Complainant No.2. The Complainants are the owners of the KENT trademark in various jurisdictions, among others: - KENT, Indian trademark registration No. 1442714 registered on April 5, 2006, and In addition, the Complainants owns the domain names The Disputed Domain Name The Complainants contentions can be summarized as follows: Identical or confusingly similar The Complainants state that, the Disputed Domain Name comprises the Complainants prior and well-known trademark and trade name in its entirety. In addition, the Top-Level suffix in the Disputed Domain Name “.ae” should be disregarded as it is not considered as a distinctive element. The Complainants further allege that they are the owners of two domain names with the terms “KENT” and “KENT RO WATER MAKER”. Finally, the Complainants state that since the trademark KENT RO has achieved notoriety, it is very likely that consumers searching for KENT RO goods and services would believe that there is a real connection between the Disputed Domain Name and the Complainants’ business. Rights and legitimate interests The Complainants allege that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. In addition, the Disputed Domain Name is providing unauthorized products and services in the Complainants’ name, misleading consumers to believe that they are provided by the Complainants. Moreover, the Respondent is not sponsored or affiliated in any way with the Complainants, nor commonly known by the Disputed Domain Name. The Complainants further allege that the Respondent claims to be providing services in India and Pakistan to show connection with the Complainants. Registration and use in bad faith The Complainants state that the Respondent registered the Disputed Domain Name in order to mislead consumers for commercial gain. The fact that the Respondent provides unauthorized products and services constitutes bad faith, demonstrates that the Respondent was aware of the Complainants’ KENT trademarks. In addition, the Complainants contends that the Respondent copied the exact name of the Complainants’ products such as KENT PEARL, KENT GRAND, KENT EXCEL, KENT GOLD and KENT GOLD +. In this regard, the Complainants state that the Respondent has acquired the Disputed Domain Name in bad faith. B. Respondent The Respondent replied that the Disputed Domain Name was registered at least 9 years ago. In addition, it contends that they have taken all the products from authorized dealer in UAE AQUA CARE. Moreover, it stated that the company also registered the name KENTRO but they have taken the items from authorized dealer. The Respondent further alleged that the Complainants’ products that were listed in the Disputed Domain Name, were removed from the domain name, which was owned by KENTRO RO, U.A.E. Likewise, the Respondent contended that the products were bought from the authorized dealer of the Complainants. 6. Discussion and Findings Paragraph 6(a) of the Policy lists the three elements which the Complainants must satisfy with respect to the Disputed Domain Name in this case: “(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered or is being used in bad faith.” Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases and its doctrine, where appropriate. A. Identical or Confusingly Similar Based on the evidence submitted, this Panel finds that the Disputed Domain Name Moreover, the addition of the country code Top-Level Domain (“ccTLD”) “.ae” does not change this finding, since the ccTLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 6(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 6(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: “(i) before any notice to you of the dispute, your use of, 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 at issue.” There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the KENT trademark. In addition, the Respondent replied to the Complainants but has failed to produce any contested evidence of any rights or legitimate interests in the Disputed Domain Name. The Respondent argued the Complainants’ products were bought to an authorized distributor and claims that it has a legitimate right to register the Disputed Domain Name. In this regard, the Panel is of the idea that the Respondent’s use of the Disputed Domain Name does not fulfill the requirements in Oki Data test (see: Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). For example, the website at the Disputed Domain Name does not accurately disclose the Respondent’s relationship (or lack thereof) with the Complainants. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.5.1 states: “Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. In the present case, the Disputed Domain Name reproduces in its entirety the Complainants’ KENT trademark, and the dominant portion of the KENT R-O WATER MAKER, creating a risk of implied affiliation. As such, this Panel finds that the Complainants have satisfied the second requirement of paragraph 6(a)(ii) of the Policy. C. Registered or Used in Bad Faith Paragraph 6(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Respondent registered the Disputed Domain Name after the Complainants had the registration of its trademarks. Thus, it is very likely that the Respondent was aware of the Complainant's trademarks and business when it registered the Disputed Domain Name. Moreover, the Disputed Domain Name includes the entirety of the Complainants KENT and the dominant portion of the KENT R-O WATER MAKER trademarks. The Respondent has not denied the Complainants’ assertions. But the Respondent replied that the products displayed in the website at the Disputed Domain Name were bought from the authorized dealer of KENT. However, they had removed the products from the website. Paragraph 6(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. In the case at hand, the Respondent’s registration of a domain name confusingly similar to the Complainants’ KENT and KENT R-O WATER MAKER trademarks, used for providing unauthorized products and services in the name of the Complainants, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint contentions, constitutes bad faith. Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainants’ trademark and websites in order to attract Internets users for its own commercial gain, as required by paragraph 6(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name. 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Pablo A. Palazzi
- KENT R-O WATER MAKER, Indian registration No. 883459 registered on October 26, 1999.
Panelist
Date: November 20, 2020
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