The Complainant is Decoweb Brands, S.A., Spain, represented by Dionisio Chanza, Spain.
The Respondent is Andreea Dragne, Romania, represented by Giurgiu & Partners, Romania. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. On November 1, 2019, the Center notified the Parties in both English and Romanian that the language of the Registration Agreement for the Disputed Domain Name was Romanian. On November 4, 2019, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply. The Center sent an email communication to the Complainant on November 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 4, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 21, 2019. The Center verified that the Complaint together with the amendment to the Complaint and 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 in English and Romanian the Respondent of the Complaint, and the proceedings commenced on November 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2019. The Respondent sent an email communication to the Center on December 3, 2019. The Response was filed with the Center on December 3, 2019. The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 13, 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 is a home décor, textile, and furniture company based in Spain. The Complainant owns two registered Spanish trade marks for KA INTERNACIONAL (registration no. M2742224 and M2742225) which were registered on November 27, 1996, and November 28, 1996, respectively. The Complainant also owns a registered European Union (“EU”) trade mark for KA INTERNATIONAL (registration no. 008831232) which was registered on July 13, 2010, and a registered International trade mark for KA INTERNATIONAL (registration no. 1358294) which was registered on October 13, 2016. The Complainant offers its services under the trade name KA International and under its KA INTERNATIONAL trade mark through various channels, including its website “www.ka-international.com”. The Respondent is an individual based in Romania, who registered the Disputed Domain Name on July 3, 2007. The Disputed Domain Name resolves to an active website offering for sale home décor products. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: (a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark KA INTERNATIONAL, which has been wholly incorporated into the Disputed Domain Name with the only difference being a hyphen between the words “ka” and “international”; (b) the Respondent has not used the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, therefore the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (c) in an email to the Complainant on February 20, 2017 (the “Email”), the Respondent attempted to sell the Disputed Domain Name to the Complainant in consideration for “a compensation for the high investment” and were seeking a “win-in position, but also a great brand position” in the Romanian market; and (d) the Respondent does not have the rights to use the Complainant’s registered trade mark KA INTERNATIONAL and, despite being sent a notice of infringement from the Complainant through its legal representatives on April 10, 2017 regarding the use of the Complainant’s registered trade mark KA INTERNATIONAL (“Notice of Infringement”), the Respondent continued to offer its products online under the Disputed Domain Name, which support the fact that the Respondent registered and is using the Disputed Domain Name in bad faith. B. Respondent The Respondent’s contentions can be summarised as follows: (a) the Complainant only registered its EU and International trade marks for KA INTERNATIONAL after the Respondent had registered the Disputed Domain Name on July 3, 2007, and the Respondent has been actively involved in carrying out business in the sale and distribution of furniture and other home interior design products, therefore the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and had rights or legitimate interests in respect of the Disputed Domain Name; (b) given that the Disputed Domain Name was registered on July 3, 2007, and the Complainant, through its legal representatives, only sent the Respondent the Notice of Infringement on April 10, 2017, the long delay between these two events supports the fact that the Respondent had rights or legitimate interests in respect of the Disputed Domain Name; (c) the Complainant has not provided any arguments or evidence of the Respondent’s bad faith at the time of registration of the Disputed Domain Name; (d) the Email should be dismissed as irrelevant evidence of the Respondent’s bad faith as it does not provide for a direct or clear offer or a price for selling, renting or otherwise transferring the Disputed Domain Name to the Complainant and simply relates to a commercial collaboration discussion between the Parties; (e) the Respondent has already remedied all content on the website associated with the Disputed Domain Name that was listed in the Notice of Infringement to be an infringement of the Complainant’s registered trade mark KA INTERNATIONAL, therefore indicating good faith on the part of the Respondent; and (f) considering the relationship between the Complainant and the Respondent as of the date of registration of the Disputed Domain Name, the registration was done based on the implied authorisation of the Complainant and therefore there was no bad faith by the Respondent. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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 by the Respondent in bad faith. 6.1. Preliminary Matter: Language of Proceedings The Complaint was filed in English. The language of the Registration Agreement is Romanian. The Respondent submitted its response in English. On November 4, 2019, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply. The Complainant’s main arguments are that English is a neutral language as between the parties and that pre-Complaint correspondence between the Parties have been conducted in English. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Panel observes that the Response was filed in English and the pre-Complaint correspondence between the Parties was in English, which demonstrates that the Respondent is indeed able to communicate in English. Moreover, the contents of the Response indicate that the Respondent has indeed understood the case set out in the Complaint. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all evidence as filed in its original language, without translation. 6.2. Substantive Issues A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in respect of the KA INTERNATIONAL trade mark, based on its various trade mark registrations. The Disputed Domain Name is identical to the Complainant’s KA INTERNATIONAL trade mark, but for the replacement of the space between the words, which cannot be included in a domain name for technical reasons, with a hyphen, and the addition of the country-code Top-Level Domain (“ccTLD”) suffix “.ro”. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the TLD extension (“.ro” in this case) may be disregarded. See section 1.11 of the WIPO Overview Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s KA INTERNATIONAL trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Complainant asserts that the Respondent has not used the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. However, the evidence provided by the Complainant does not per se suggest the lack of a bona fide offering of goods or services by the Respondent. Furthermore, in the amendment to the Complaint, the Complainant had in fact admitted that the Respondent has been “continuously offering products in a shop, and online” through the website associated with the Disputed Domain Name. However, the Panel accepts that the Complainant has not authorised the Respondent to use the KA INTERNATIONAL trade mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the KA INTERNATIONAL trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. The Respondent argues that the Complainant only registered its EU and International trade marks for KA INTERNATIONAL after the Respondent had registered the Disputed Domain Name on July 3, 2007, and therefore it had rights or legitimate interests in respect of the Disputed Domain Name. However, UDRP panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint. See section 2.11 of the WIPO Overview 3.0. Therefore, the Panel does not agree with the Respondent’s argument since the Complainant had already registered its EU and International trade marks for KA INTERNATIONAL at the time of filing of the Complaint. The Respondent also argues that the long delay between the date of registration of the Disputed Domain Name and the date of Notice of Infringement suggests that the Respondent had rights or legitimate interests in respect of the Disputed Domain Name. It is widely recognized that while potentially relevant to the parties’ positions mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. See section 4.17 of the WIPO Overview 3.0. Therefore, the Panel does not agree with this argument by the Respondent. Furthermore, the Respondent asserts that it has already remedied all infringing content on the website associated with the Disputed Domain Name after they ceased to be a franchisee of the Complainant. However, the Panel notes that the Respondent did not in fact amend the Disputed Domain Name itself and continued to use the Disputed Domain Name to conduct its business. The Respondent’s actions in retaining the Disputed Domain Name to conduct its business after the termination of the franchise does not amount to a bona fide use and does not provide Respondent with a legitimate interest in the Disputed Domain Name. See Diet Center Worldwide, Inc. v. Rebecca Wilborn, NYC Diet Center,WIPO Case No. D2018-1797. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s KA INTERNATIONAL mark in its entirety already creates a presumption of bad faith. The Panel has also considered the following facts which further demonstrate that the Disputed Domain Name has been registered and used by the Respondent in bad faith: (i) the Complainant’s KA INTERNATIONAL trade mark is fairly well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “Ka International” are the Complainant’s website and various affiliated social media pages. Furthermore, the assertions and evidence submitted by the Respondent suggest that it was fully aware of the Complainant at the time of registering the Disputed Domain Name; (ii) in any case, in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. See paragraph 3.2.2 of the WIPO Overview 3.0. Given that both the Complainant and the Respondent (through her company, KA Design International) are operating in the same home décor, textile and furniture industry, which is a relatively specialised field of business, the Panel finds that the Respondent cannot credibly claim it was not aware of the Complainant’s mark at the time of registration of the Disputed Domain Name and therefore rejects the Respondent’s claim that it did not register the domain name in bad faith since it was unaware of the Complainant’s rights at the material time. The Respondent also failed to explain why it would choose a domain name that is not reflective of her company name and instead chose a domain name that contains the name of a competing company. (iii) as mentioned in paragraph (B) above, the Respondent claims to have remedied all infringing content on the website associated with the Disputed Domain Name, but did not in fact amend the Disputed Domain Name itself and continued to use the Disputed Domain Name to conduct its business. Therefore, the Panel finds that the Respondent’s continued use of the Disputed Domain Name was intentional and meant to cause confusion and thus amounts to use in bad faith by the Respondent. See Damon’s Restaurants, Inc. v. JBR Enterprises, Inc., WIPO Case No. D2007-1603; (iv) the Respondent claims that its registration and use of the Disputed Domain Name was made in good faith in accordance with the mutual understanding with the Complainant as its then business partner and the registration of the Disputed Domain Name was done based on an “implicit and obvious authorization / consent” from the Complainant. However, the Panel notes that the Respondent failed to provide any evidence of a legal or contractual relationship between the parties or any authorization or consent given by the Complainant to that effect; the Complainant moreover disputes that the Respondent is so authorized. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Gabriela Kennedy
Sole Panelist
Date: January 27, 2020
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