The Complainant is 4Kraft Sp. z o.o., Poland, represented by FRKelly, Ireland.
The Registrant is Samba Schwab, Ireland. 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 30, 2019, via email. On August 30, 2019, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On the same day, IEDR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Registrant and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On September 2, 2019, the Registrant sent an email communication to the Center, effectively responding to the Complaint. On the same day, the Center sent the Registrant’s email to the Parties and asked the Complainant whether it wishes to request a suspension of the proceedings in order to explore settlement options. The Complainant filed an amended Complaint on September 3, 2019, and indicated by email of September 6, 2019, that no request for suspension of the proceedings would be submitted. The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on September 6, 2019. On September 9, 2019, the Registrant sent an email communication to the Center, supplementing its previous email. On the same day, the Center sent the Registrant’s email to the Parties and asked the Complainant whether it wished to reconsider requesting a suspension of the proceedings in order to explore settlement options. The Complainant emailed the Center on September 10, 2019, responding to the assertions in the Registrant’s email of September 9, 2019, and indicating that it wished the proceedings to continue. In accordance with the Rules, paragraph 5.1, the due date for Response was October 4, 2019. The Registrant did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on October 7, 2019. The Center appointed Adam Taylor as the sole panelist in this matter on October 10, 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 The Complainant has sold baby / infant travel and sleep products under the name “Kinderkraft” since 2011. The Complainant’s main website is at “www.kinderkraft.com”. The Complainant is also active on social media, including Facebook, Instagram, and YouTube. The Complainant owns the following registered trade marks: - International Trade Mark no. 1170277 for the stylized word “KinderKraft” preceded by two circular devices, each including the heavily stylized letter “k”, designated in the European Union on December 13, 2012, in classes 12, 20, and 35; and - International Trade Mark no. 1432006 for the words “kk KinderKraft”, designated in the European Union on February 12, 2018, in classes 9, 10, 12, 18, 20, 21, and 35. The disputed domain name was registered on September 27, 2017. As of November 5, 2017, the disputed domain name was used for a website branded with a logo consisting of the word “Kinderkraft” plus a device containing the letters “Kk” and which offered baby products for sale. The disputed domain name does not appear to have been used for over a year and currently resolves to a parking page. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The disputed domain name is identical or misleading similar to a protected identifier in which the Complainant has rights. The Registrant lacks rights in law or legitimate interests in the disputed domain name. The Registrant cannot show that it has made demonstrable good faith preparations to use the disputed domain name. The Registrant has not been authorized by the Complainant to undertake any activities on behalf of the Complainant. The Registrant lacks any real connection with Ireland. It does not possess any company or business name registration in Ireland. Nor does it own any relevant trade mark which applies in Ireland. It is inconceivable that the Registrant was unaware of the Complainant’s business under the name “Kinderkraft” at the time of registration of the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Registrant’s website not only uses the Complainant’s name but also a copy of its logo. The Registrant has used fake contact details. B. Registrant The following is a summary of the Registrant’s contentions in its emails of September 2 and 9, 2019, which the Panel has decided to admit (see section 6A below). The Registrant has operated a baby-related business for around eight years. Some two years ago, the Registrant was “working with” the Complainant as a reseller of the Complainant’s products. The Complainant approved the Registrant as being its “official distributor” in Ireland as well as the Registrant’s web page, which the Registrant used to sell only the Complainant’s products. The Complainant did not object to the Registrant using the Complainant’s logo and product photos, which in fact the Complainant supplied to it. The Registrant possesses emails with the Complainant proving that the Complainant approved the creation of “the domain website kinderkraft.ie”. The Registrant never pretended to be the Complainant and complied with the Complainant’s communications, which allowed it to create the website and advertise the products. The Registrant never made any sales through the website. It was used for advertising purposes only. The Registrant stopped working with the Complainant around a year ago. The Registrant has deleted the web page and no longer holds photos or logos or any other intellectual property of the Complainant. C. Complainant’s Supplemental Filing The following is a summary of the Complainant’s supplementary filing of September 10, 2019, which the Panel has decided to admit (see section 6A below). The Complainant entered into only four transactions with the Registrant between May 2017 and September 2018. The Complainant gives its buyers marketing materials including product photos and a logotype. The Complainant did not agree to registration by the Registrant of the disputed domain name or of use of its trade marks in a fashion that could give the impression that there was a close business relationship between the parties. 6. Discussion and Findings Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that: - the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; - the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered or is being used in bad faith. A. Additional Material As a preliminary matter, the Panel will address the admissibility of the additional material submitted by each party outside the pleadings provided for in the Rules. The Respondent has responded to the Complaint in the form of two emails to the Center, which do not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit these emails in accordance with its powers under paragraph 9.4 of the Rules, in order to better inform the Panel of the Registrant’s position. The Panel will bear in mind the Registrant’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Registrant’s assertions. The Complainant has made an unsolicited supplemental filing responding to the Registrant’s emails. The Panel has decided to admit this also, as the Registrant’s emails raised new matters, which could not necessarily have been anticipated by the Complainant in its Complaint. B. Identical or Misleadingly Similar Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Complainant owns a registered trade mark for the words “kk KinderKraft” which have effect in Ireland. At this point, it is relevant to refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited,WIPO Case No. DIE2018-0006. Section 1.7 of the WIPO Overview 3.0 makes clear that, where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of “standing”. In the Panel’s view, the same approach applies when assessing “misleading” similarity under the IEDR Policy. In this case, a dominant feature of the Complainant’s distinctive protected identifier, namely the word “Kinderkraft” is readily recognisable within the disputed domain name. The country code Top-Level Domain “.ie” is disregarded for the purpose of this comparison. The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy. C. Rights in Law or Legitimate Interests section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant contends that it has not licensed or otherwise authorised the Registrant to use its trade mark in a fashion that could give the impression that there was a close business relationship between the Parties. Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name. As to paragraph 3.1.1 of the IEDR Policy, the Registrant claims that it registered and used the disputed domain name to promote the resale of the Complainant’s own goods, albeit that it did not sell goods directly on the website itself. Section 2.8 of WIPO Overview 3.0 explains that, to establish a bona fide offering of goods or services in such circumstances, the respondent must comply with certain requirements (known as the “Oki Data test”): 1. the actual offering of the goods and services at issue; 2. use of the site to sell only the trademarked goods or services; 3. the site’s accurately and prominently disclosing the Respondent’s relationship with the trade mark holder; and 4. the respondent not trying to “corner the market” in domain names that reflect the trade mark. Section 2.8 of WIPO Overview 3.0 adds that cases applying the Oki Data test usually involve a domain name comprising a trade mark plus a descriptive term (e.g., “parts”, “repairs”) but that the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trade mark. In the Panel’s view, that applies here as the disputed domain name is almost identical to the Complainant’s registered trade mark for the words “kk kinderkraft” and does not include any additional descriptive terms which might signal that the Registrant is a reseller. In any case, the Registrant has failed to comply with the Oki Data test, as the evidence before the Panel indicates that the Registrant has used the disputed domain name for a website branded only with the Complainant’s name and logo. The Registrant has not provided the Panel with any evidence that it has accurately and prominently disclosed its relationship with the trade mark holder. The Registrant relies on alleged consent by the Complainant to the Registrant’s activities, but it is not clear exactly what the Complainant is said to have consented to. Registration of the disputed domain name? Use of the disputed domain name for the version of the Registrant’s website branded with the Complainant’s logo as exhibited by the Complainant? Some other version of the Registrant’s website at the disputed domain name? Or simply use of the Complainant’s product photos and logo on a reseller website independently of any particular domain name? For its part, the Complainant says that the Registrant bought the Complainant’s products from it on four occasions and that it gives its buyers marketing materials including product photos and a logotype. The Complainant denies that it agreed to registration of the disputed domain name by the Registrant or to the Registrant’s use of its logo in a manner that implied that there was a close business relationship between the parties. The Registrant claims that it possesses emails from the Complainant, which prove that the Complainant gave some measure of consent. But the Registrant has not produced those emails. Given the lack of such supporting evidence from the Registrant, the low degree of likelihood that the Complainant consented to the Registrant’s use of the Complainant’s logo to brand the Registrant’s website in the way that it has, and the lack of a formal Response from the Registrant with a statement of truth (see section 6A above), the Registrant has not satisfied the Panel that the Complainant consented to the Registrant’s website or that the Registrant’s use of the disputed domain name was otherwise bona fide. Additionally, the Panel notes that the disputed domain name carries a risk of implied affiliation. And there is no evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case. Moreover, the disputed domain name does not appear to have been used for over a year and currently resolves to a parked page. The Panel therefore finds that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy. D. Registered or Used in Bad Faith As explained, the Registrant used the disputed domain name, which effectively consists of the Complainant’s trade mark without “adornment”, for a website branded with the Complainant’s logo to promote resale of the Complainant’s goods. There is no indication that the Registrant made any effort to explain to website users in a clear and prominent manner that it was merely a reseller of the goods and not officially connected with the Complainant. Nor has the Registrant satisfied the Panel that the Complainant knowingly consented to such activities of the Registrant. Furthermore, as previously noted, the disputed domain name does not appear to have been used for over a year and currently resolves to a parked page. The Panel concludes from the foregoing that the Registrant has registered and used the disputed domain name in bad faith in accordance with paragraph 2.1.4 of the IEDR Policy. The Registrant has, through its use of the disputed domain name, intentionally attempted to attract Internet users to its website by creating confusion with the Complainant’s protected identifier. The Panel therefore finds that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy. 7. Decision For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name Adam Taylor
Sole Panelist
Dated: October 24, 2019
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