Registration No.
Country
Trademark
Class
Registration Date
3888311
France
9 and 42
January 11, 2012
4371764
France
KIAMO
9 and 42
June 27, 2017
1368516
France
KIAMO
9 and 42
June 28, 2017
3419648
France
K
42
March 23, 2006
The Complainant is Sas Conecteo of Martillac, France, represented by Fidal, France.
The Respondent is Beats of Daegu, Republic of Korea.
The disputed domain name <kiamo.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2019. On February 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2019, 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.
On February 22, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 25, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and Korean of the Complaint, and the proceedings commenced on March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2019.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 5, 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.
The Complainant, Sas Conecteo, is a French company and a major provider of customer interaction management solutions for companies and contact centers. The Complainant’s teams comprise varied and experienced profiles that offer customer relations expertise to different Kiamo users and global support for users and Kiamo Certified Expert partners to help implement their relational procedures. The Complainant is the owner of the following KIAMO trademark registrations:
|
Registration No. |
Country |
Trademark |
Class |
Registration Date |
|
3888311 |
France |
|
9 and 42 |
January 11, 2012 |
|
4371764 |
France |
KIAMO |
9 and 42 |
June 27, 2017 |
|
1368516 |
France |
KIAMO |
9 and 42 |
June 28, 2017 |
|
3419648 |
France |
K |
42 |
March 23, 2006 |
The Complainant has also registered the following domain names:
<kiamo.fr>, registered since October 16, 2007;
<kiamo.eu>, registered since June 22, 2016;
<kiamo.info>, registered since June 17, 2016;
<kiamo.net>, registered since June 17, 2016;
<kiamo.org>, registered since June 17, 2016;
<kiamo.de>, registered since June 1, 2016;
<kiamo.io>, registered since December 7, 2017;
<kiamo.co>, registered since June 22, 2016.
The disputed domain name <kiamo.com> was registered by the Respondent on October 2, 2010.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <kiamo.com> is identical and confusingly similar to the Complainant’s trademarks in which the Complainant has rights. The Complainant has numerous trademark registrations as evidence that the Complainant has valid rights in the term KIAMO based on its use and registration of the same as trademarks, and the uses of which commenced years prior to the registration of the disputed domain name. The Respondent’s disputed domain name uses the Complainant’s trademark KIAMO in its entirety and the mere addition of the “.com”, generic Top-Level Domain (“gTLD”) may be disregarded when assessing whether a domain name is identical or confusingly similar to the trademark because it is technically required for a domain name.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name and the Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. The Respondent has no evidence of the use of the disputed domain name, nor demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent is not an authorized reseller, service provider or distributor of the Complainant and is not making a legitimate noncommercial or fair use of the disputed domain name without intent of commercial gain.
3) the disputed domain name was registered and is being used in bad faith. First, the Complainant claims that the Respondent registered the disputed domain name in bad faith because (i) the disputed domain name was registered in October 2010, which is four years after the Complainant began to use the trademark KIAMO and three years after the use of the domain name <kiamo.fr>; (ii) the Respondent’s website is available in French and English; and (iii) the term KIAMO has no meaning in any language, notably in the Republic of Korea where the Respondent is located. Therefore, it is impossible for the Respondent to have fortuitously invented the very same word KIAMO and registered the disputed domain name without knowledge of the Complainant’s company and its trademarks.
Second, the Complainant also claims that the Respondent has used the disputed domain name in bad faith because (i) the website which the disputed domain name resolved to is a landing page that includes pay-per-click links which relates to the Complainant’s business activities in order to attract, for commercial gain, Internet users to the Respondent’s website; (ii) the website of the disputed domain name also indicates that the domain name is for sale and when the Complainant contacted the Respondent to purchase the disputed domain name, the Respondent asked the Complainant to pay from EUR 7,700 to EUR 120,000; and (iii) the Respondent is passively holding the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The website which the disputed domain name resolved to contains links which are in English;
3) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments.
4) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is French and the Respondent is Korean. Therefore English would be a fair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) consider any relevant materials in Korean; and (3) issue a decision in English.
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark KIAMO and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent’s 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.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i), (ii), and (iv) by registering the disputed domain name in order to (1) prevent the Complainant, the owner of the trademark, from reflecting the mark in a corresponding domain name, and to (2) attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s mark, and (3) having an intent to sell the disputed domain name to the Complainant.
The Panel finds the Respondent intentionally registered the disputed domain name which is identical or confusingly similar to the Complainant’s trademark KIAMO in bad faith for several reasons. First, the Complainant’s commencement of its business and its first use of the KIAMO trademark since 2006 far pre‑dates the registration date of the disputed domain name. Second, the website which the disputed domain name resolves to contains links related to the Complainant’s business, and it shows a “for sale” message. Finally, the Respondent’s website is available in both the French and English languages, which indicates that the Respondent had knowledge of the Complainant, a French company.
These facts clearly show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to show that there was a business relationship between the Complainant and the owner of the disputed domain name/website. Thus, it is clear that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s trademarks and business.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks and prevented the Complainant from reflecting the mark in a corresponding domain name in order to resell the disputed domain name to the Complainant for commercial gain. The fact that the Respondent replied to the Complainant’s offering to purchase the disputed domain name with a price of EUR 7,700 to EUR 120,000, which is significantly more than the actual cost to register the disputed domain name shows that the Respondent registered and has been using the disputed domain name in bad faith.
As the conduct described above falls squarely within paragraph 4(b)(i),(ii), and (iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <kiamo.com> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: April 19, 2019