WIPO Domain Name Decision: D2008-0055

The Complainant is Koninklijke KPN N.V., The Hague, Netherlands, represented by DLA Piper Nederland N.V., Netherlands.

The disputed domain name <kpn.info> is registered with Moniker Online Services, LLC.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2008. On January 16, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 17, 2008 Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 28, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2008. The Response was filed with the Center February 25, 2008.

The Center appointed David Perkins, Charles Gielen and David E. Sorkin as panelists in this matter on March 14, 2008. 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.A.1 The Complainant is Koninklijke KPN N.V., a company incorporated in The Netherlands. The Complainant was formerly the Dutch state-owned national monopoly provider of telecom services in The Netherlands. It was originally founded in the mid 19^th century and was formerly known as Staatsbedriif der Posterijen, Telegrafie en Telefonie, then Koninklijke PTT Nederland NV and changed to its present name in 1993.

4.A.2 In 1989 the Complainant was privatised. Since that time and currently the Complainant has been and remains the largest provider of telephone, Internet and television services in the Netherlands. It is, effectively, the Dutch equivalent to Deutsche Telekom in Germany, BT in the United Kingdom, France Telecom in France, Telecom Italia in Italy and Belgacom in Belgium, all of which – like the Complainant – were formerly state owned enterprises which have been privatised.

4.A.3 The Complainant is listed with the London Stock Exchange, the New York Stock Exchange and Euronext.

4.A.4 The Complainant is one of The Netherlands' most important multinational companies. It provides its services Europe-wide and is particularly active in the Belgian, German and Spanish markets as well as in its domestic market in Holland. In 2006 the Complainant acquired iBasis, a US based company which is one of the world’s largest providers of telephone services and voice over IP.

4.A.5 In 1993 the Complainant began a program to register KPN as a trademark. The Complaint lists twelve Benelux registrations and two Community Trade Mark (CTM) registrations for KPN as a word mark and KPN with logo. There is a further CTM for KPN TELECOM registered in June 1998. The earliest registration for KPN as a word mark is Benelux trademark 0529431 dated March 2, 1993 in Classes 9, 12, 16, 25 to 38 and 41 to 42. The earliest CTM was for KPN and logo registered April 1, 1996. The CTM for the KPN word mark was registered on August 26, 2006. An example of the KPN with logo trademark is illustrated below.

4.A.6 The Complainant is also the owner of a number of KPN domain names, including <kpn.com>; <kpn.net>; <kpn.org>; <kpn.biz>; <kpn.eu> and <kpn.nl>.

4.B.1 The Respondent is a Greek citizen with an address in Athens. He registered the domain name in issue on January 8, 2004.

4.B.2 The Respondent has also registered a portfolio of domain names incorporating common words, generic and short terms, useful phrases and geographical terms. For example, these include <host.info>; <weight.info> and <fees.info>, all common words and <athens.info>; <baracelona.info> and <losangelescity.info>, all geographical terms.

4.B.3 In addition, during the period from November 2003 to January 2004 the Respondent registered seventy nine 3-letter .info domain names, including the domain name in issue. These include <ktu.info>; <upx.info>; <xfm.info>; <oxl.info> etc. Respondent's case is that available short domain names are rare and are in demand. On the same day that the Respondent registered the domain name in issue, he also registered <abm.info>; <eko.info>; <lmu.info> and <tsn.info>.

4.B.4 The Respondent is a web developer, who acquires domain names with the intention of developing them, for example as an educational portal (through <dikatsa.info>) or to advertise his web development skills (through <bluepixel.gr>). The Respondent also uses his portfolio of domain name registrations to generate click through revenue by linking to various third party sites. Indeed, the website to which the domain name in issue resolves has links to categories of goods and services including gifts, shopping, travel, computers, games and electronics.

4.B.5 The Respondent also offers domain names for sale. Indeed, the domain name in issue is hosted at “www.sedo.com” where it is offered for sale “www.sedo.com” also uses an algorithm which identifies a visitor’s location and offers the webpage in over twenty languages according to the language of the visitor. This feature is apparently known as “geo-targeting”, see, further in this respect paragraph 5.B.3.7 below.

The Complainant asserts that its KPN trademark is well-known and that the domain name in issue is identical to the KPN word mark and to the KPN feature of its KPN logo trademarks.

5.A.2.1 First, the Complainant states that it has not licensed or otherwise authorized use by the Respondent of its KPN trademark.

5.A.2.2 Second, the links to which the domain name in issue resolve include several telecoms, computer, entertainment and Internet related websites of other companies which compete with the Complainant.

5.A.2.3 Third, the domain name is offered for sale on the “www.sedo.com” website.

5.A.2.4 Fourth, the Respondent failed to reply to “cease and desist” letters from the Complainant’s counsel.

5.A.2.5 Fifth, having established that the Respondent has no obvious connection to the domain name in issue, the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in that name.

5.A.2.6 Sixth, the Complainant says that the Respondent cannot establish any of the circumstances set out in paragraph 4(c) of the Policy. Specifically, since the KPN trademark was first registered and used as long ago as 1993 and the domain name in issue was not registered until January 2004, such use as the Respondent has made of the domain name cannot amount to bona fide use.

5.A.2.7 Further, the Respondent cannot show that he has been commonly known by the domain name in issue.

5.A.2.8 Still further, since the domain name in issue resolves to a Dutch language website, the Complainant submits it is clearly aimed at the Benelux public where the Complainant’s KPN trademark is particularly well known and that, coupled with the fact that it links to goods and services of companies which compete with the Complainant (and the Respondent thereby receives click-through revenue), emphasises the Respondent’s lack of bona fides.

5.A.2.9 Finally, the Complainant says that the use made by the Respondent of the domain name in issue is neither a legitimate noncommercial use nor a fair use but is intended to misleadingly divert consumers. It is a commercial use because, as already noted, the Respondent derives click-through revenue. That revenue is (the Complainant says) purely due to the power of the KPN trademark and consumers being mislead into believing that the domain name and the site to which its resolves are in some way related to or authorized by the Complainant.

5.A.3.1 First, registration of a domain name incorporating the well known KPN trademark is, the Complainant says, of itself evidence of opportunistic bad faith by the Respondent.

5.A.3.2 Second, given the Respondent’s lack of association, relationship or affiliation with the Complainant, the combination of registration of the domain name in issue and using it in relation to websites which in turn link to websites of the Complainant's competitors (for example, Vodafone, Orange and Rabo Mobiel) is illustrative of bad faith use.

5.A.3.3 The Complainant asserts that circumstances exist which fall within paragraphs 4(b)(i), (ii), and (iv) of the Policy so are conclusive as to registration and use in bad faith. As to paragraph 4(b)(i), the domain name in issue is offered for sale on “www.sedo.com” website.

5.A.3.4 As to paragraph 4(b)(ii), in terms of demonstrating a “pattern of conduct” the Complainant cites two decisions under the Policy which he says were decided against the Respondent. They are Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas, NAF Case No 610713 and Mercer Human Resource Consulting, Ltd., Mercer Human Resource Consulting Inc. v. Konstantinos Zournas, WIPO Case No. D2007-1425.

5.A.3.5 As to paragraph 4(b)(iv), the Complainant relies on the Respondent having constructive notice of the KPN trademark, the widespread use of by the Complainant of the KPN mark, the Respondent’s continuing use of the domain name notwithstanding the “cease and desist” letter from the Complainant's counsel (paragraph 5.A.2.4 above), the offer for sale of the domain name (paragraph 5.A.3.3 above), the decisions adverse to the Respondent noted in the preceding paragraph and use of the domain name in issue to generate click-through revenue (paragraphs 4.B.4 and 5.A.2.8 and 5.A.3.2 above).

5.B.1.1 The Respondent points to the fact that the Complainant is not the only party with rights to use the letters KPN. There are other parties, quite unrelated to the Complainant, with rights to use KPN, singly or in combination. For example, the Respondent cites KPN Music Academy, KPN Travels, KPN Consulting, KPN Life Style, KPN Katolska Pedagogiska Nämunden, and KPN Group Oy.

5.B.1.2 The Respondent also refers to numerous domain names using the KPN 3 letter combination which, again, have no relationship to the Complainant. For example, <kpn.us>; <kpn.se>; <kpn.ru>; <kpn.org.pl>; <kpn.fi>; <kpn.co.uk> and <kpn.gr> which latter resolves to the website of a Greek organisation known as the Youth Information Centre of Pilea.

5.B.1.3 Accordingly, the Respondent says that the Complainant’s KPN registered trademarks do not give the Complainant a monopoly on the 3 letters KPN. For example, KPN is an acronym for, inter alia, Konfederacja Polski Niegodleglej (the Polish Conservative Party); Kipnuk SPB Airport in the United States of America for which KPN is the Airport IATA Code; Kahn Process Networks (KPNs), a distributed model of computation where a group of processing units are connected by communication channels to form a network of processes; and the Greek Government KPN “Youth Information Centre” which has been operating since 1998.

5.B.1.4 Finally, the Complainant does not and cannot as a matter of law (at least in the United States of America) claim to be the owner of common law trademark rights in the letters KPN.

5.B.2.1 The Respondent reiterates that the Complainant does not have exclusive rights to use the letters or mark KPN. Accordingly, the first to register a domain name incorporating those letters has a legitimate interest in such domain name, provided that it is not registered or used in bad faith.

5.B.2.2 The Respondent says that he registered the domain name in issue because it was an available 3 letter domain name that the Respondent believed nobody had exclusive rights to. According to the Respondent, 3-letter domain names are valuable and the Respondent is in the business of registering and selling domain names, which business of itself is an entirely bona fide activity.

5.B.2.3 The Respondent registers domain names that become available for registration through expiration and failure to renew by the original registrant. The Respondent says that he only registers domain names which incorporate common and descriptive terms to which he believes no third party has exclusive rights. In the light of the evidence set out in paragraph 5.B.1 above, the Respondent says that the letters KPN fall into that category.

5.B.2.4 Additionally, the domain name has been registered since January 2004 and no complaint was made by the Complainant for almost four years.

5.B.2.5 Between November 2003 and January 2004 the Respondent registered seventy nine 3-letter domain names. On January 24, 2004 – which is the date of registration of the domain name in issue – the Respondent also registered <abn.info>, <eko.info>, emu.info>, and <tsu.info>. In that respect, the Respondent cites UWE GmbH .v. Telepathy, Inc. WIPO Case No. D2007-0261. There the complainant had UWE as a registered trademark in a number of countries, which dated from 1969 but the UWE trademark had been used for more than fifty years. The respondent registered <uwe.com> and at the same time a large number of other 3-letter domain names. The Panel accepted that UWE was used by parties quite unrelated to the complainants, for example it is an abbreviation for the University of West England. It is also a first name in German. Accordingly, the complaint was denied for failure to show bad faith registration under paragraph 4(a)(iii) of the Policy.

5.B.2.6 As explained in Section 4.B above, the Respondent acquires domain names with the intention of developing them, for example, <bluepixel.gr> to advertise its web development skills and <dikatsa.info> an educational portal; see, paragraph 4.B.4 above. The Respondent also develops themed search portals. The specific use to which the domain name in issue is put is as a search portal, which provides links to a number of various unconnected areas in the same way as <yahoo.com>; see, again paragraph 4.B.4 above. This activity generates revenue and is an entirely legitimate business, as confirmed by a number of decisions under the Policy.

5.B.2.7 The Respondent also cites a number of decisions under the Policy involving 3-letter trademarks and corresponding domain names, where it was held that the registrant had established a legitimate interest in such domain names. For example, Phillipe Tenenhaus v. Telepathy, Inc, NAF Case No FA94355 (no exclusive rights in the name DAF); Transcontinental Records, Inc v. Compana LLC, WIPO Case No. D2002-0105 (no exclusive rights in LFO, the trademark for the musical group the Lyle Funky Ones); Front Range Internet, Inc v. Murphy, NAF Case No. FA14231 (where the trademark and domain name complained of were both FRONT RANGE INTERNET); RMT, Inc v. Domain Finance Ltd, NAF Case No FA313834 (where both the trademark and the domain name complained of comprised the 3-letters RMT); and Kis v. Anthing.com Ltd, WIPO Case No. D2000-0770 (where, again, the complainant's trademark and the domain name complained of comprised the 3-letters KIS, which were an abbreviation for the Respondent’s website Korean Information Site, to which the <kis.com> domain name resolved).

5.B.2.8 Finally, the Respondent exhibits a google.com search against the 3-letters “kpn”, which lists KPN Travels India Ltd, ahead of the Complainants, both using the KPN acronym.

5.B.3.1 The Respondent registered the domain name in issue when the original registration lapsed by reason of the previous owner's failure to renew. It is quite legitimate to register a domain in such circumstances, provided that such new registration does not amount to willful exploitation of the trademark of the previous owner. In this case, the Respondent says he had no knowledge of the Complainant, nor its KPN trademarks when the domain name was registered in January 2004. The Respondent is not a competitor of the Complainant and did not register the domain name in issue primarily for the purpose of disrupting the Complainant’s business.

5.B.3.2 There is no evidence that the Respondent has behaved with intent to divert the Complainant’s customers, to tarnish the KPN trademark, to pass himself off as the Complainant, nor to derive commercial gain by confusing users looking for the Complainant’s website. The Respondent points to its website which bears no resemblance to the Complainant’s website either in appearance or content. For example, the Respondent’s website has no graphics whereas the Complainant’s does – for example, the logo depicted in paragraph 4.A.5 above. The two websites have different fonts, colour and structure. The Complainant’s website focuses on mobile phones, whereas the Respondent’s website is a simple generic page with search engine capabilities.

5.B.3.3 Where, as in this case, the domain name comprises 3 non-distinctive letters, an allegation of bad faith registration cannot (the Respondent says) succeed. Here there are no circumstances such as those set out in paragraph 4(b) of the Policy, which evidence bad faith registration as in paragraph 4(b)(i). The Respondent registered the domain name in issue in ignorance of the Complainant or its KPN trademark. In any event that trademark gives the Complainant no exclusive right to use the 3-letters KPN; the Respondent used the domain name for almost four years without complaint by the Complainant; and the Respondent has never sought to sell that name to the Complainant. In the circumstances, the Respondent says there is no evidence of registration in bad faith.

5.B.3.4 As to the Respondent’s lack of knowledge of the Complainant, the Respondent points to the fact that the Complainant has no registered trademark rights in Greece, the Complainant has no office or branch in Greece, and the Complainant’s own website illustrating its European Network does not include Greece. Nor is Greece included in the Complainant’s Global Network. Its website at “www.kpn.com” and Customer Support at “www.kpn.net” are offered only in the Dutch language and, while its KPN trademark may be well-known in The Netherlands, there is no evidence that it is well-known in Greece such that the Respondent should have been aware of it when it registered the domain name in issue in January 2004. As to knowledge of KPN outside its home market, the Respondent points to a finding by a WIPO Panel that a US Respondent could not reasonably have been expected to know about the Complainant or its “Money Planet” or “Travel Planet” Benelux trademarks (Koninklijke KPN v. Telepath Inc., WIPO Case No. D2001-0217).

5.B.3.5 As to the Mercer case relied on by the Complainant in paragraph 5.A.3.4 above, the Respondent points to the fact that the decision was made in his favor that the domain name in issue <mercer.com> was not registered in bad faith.

5.B.3.6 In support of the Respondent’s case that there has been no bad faith use of the domain name in issue, the Respondent reiterates the nature of its use for a generic directory / portal. Even if, contrary to its case, the Respondent is found to have had constructive knowledge of the Complainant's KPN trademark, such use for a generic directory / portal cannot amount to bad faith use under paragraph 4(b) of the Policy, particularly in terms of paragraph 4(b)(iv).

5.B.3.7 As to the Dutch language version of the website to which the Respondent's domain name resolved (see, paragraph 5.A.2.8 above), the Respondent further explains the geo-targeting feature of the “www.sedo.com” website; see, paragraph 4.B.5 above. When a visitor request is transmitted to “www.sedo.com”, a rough approximation of the visitor's location is determined on the basis of that visitor’s IP address. This is based on a selection algorithm used by Google. Sedo.com offers the webpage in over 20 languages. Accordingly, when the Complainant located in Holland visited that site via the domain name in issue, it was sent to a Dutch language version. By comparison, when the Respondent similarly visited “www.sedo.com” from a proxy website located in the United States, it was taken to an English language version.

5.B.3.8 As noted, the Complainant’s webpage relates to mobile phones. The link from the Respondent’s website to mobile phones is only one of more than 60 categories of goods and services offered on the directory page. As already explained it is a generic directory / portal. This cannot, therefore, be said to amount to a deliberate intention to confuse visitors and divert them to other websites; paragraph 4(b)(iv) of the Policy.

5.B.3.9 Nor is there any evidence of an intention of preventing the Complainant from reflecting its KPN trademark in a corresponding domain name; paragraph 4(b)(ii) of the Policy. As noted, the Complainant has a number of “kpn” domain names; see, paragraph 4.A.6 above.

5.B.3 10 In terms of bad faith actions, the Respondent refers again to the Koninklijke KPN N.V. v. Telepathy, Inc Decision (paragraph 5.B.3.5 above) where not only was the present Complainant’s Complaint rejected but a holding of reverse domain hijacking was made by a majority 2-1 Panel holding.

5.B.3.11 Finally, the Respondent refers to HSM Argentina S.A. v. Vertical Axis, Inc, WIPO Case No. D2007-0017 as a decision having a similar fact pattern to this administrative proceeding. In that case, the domain name in issue was <hsm.com> and the complainant, which provided services in the field of executive education, was the owner of registered trademarks including HSM and HSM prefixed marks. There, the respondent relied – as in this case – on the 3-letters HSM being in widespread third party use and a lack of knowledge of the complainant or its HSM marks when registering the domain name in issue. The complainant was based in Argentina and had its trademarks registered in the Americas and in the European Union, whereas the respondent was resident in the Republic of Korea. A 3-member Panel rejected the Complaint finding no evidence of registration in bad faith.

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.5 The Complainant has established that it has rights in the KPN trademark. The domain name in issue is identical to that trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

6.6 The fact that the Complainant’s registered KPN trademarks do not provide the Complainant with exclusive rights to prevent other parties from making use of the 3-letters “KPN” is, however, of relevance to the other requirements of paragraph 4(a) of the Policy discussed below.

6.7 The Respondent contends that prior to notice of this dispute, he had made use of the domain name in issue in connection with a bona fide offering of services.

6.8 The Panel accepts on the facts presented that it is quite possible that at the date when the domain name in issue was registered by the Respondent (January 2004) he had no actual knowledge of the Complainant or its KPN trademark. It does not appear to the Panel from the present record that the Complainant's KPN trademark was so well known that the Respondent must have known of it. The Respondent apparently operates from Greece, and it appears that within Europe the Complainant has no activities or business in Greece.

6.9 The Respondent has been involved in other Complaints under the Policy where he has both won and lost. In the Mercer case (paragraph 5.A.3 and 5.B.3.5) the Complaint against the Respondent failed. By contrast, in the Executrix of Anthony Quinn v. Konstantinos Zournas, NAF Case No. FA610713, where the Respondent had registered <anthonyquinn.com> the complaint against him was upheld. From the detailed Response and the carefully crafted arguments advanced by the Respondent in this case, in support of which he cites some sixty Decisions under the Policy, it is clear that he is well-versed in the jurisprudence which has been developed around the Policy. The Respondent also appears to be engaged in the business of registering names incorporating common and descriptive terms. However, as this matter turns primarily on the issue of whether the Respondent knew or ought to have known of the Complainant’s mark, the Panel finds it convenient to proceed directly to a consideration of paragraph 4(a)(iii) of the Policy.

6.10 Even if the Panel had found in favour of the Complainant under paragraph 4(a)(ii) of the Policy, the Panel finds that the Complaint fails under paragraph 4(a)(iii). This is because, on the evidence summarized in Sections 4 and 5 above, there is insufficient evidence of registration of the domain name in issue in bad faith.

6.11 This finding flows in part from the nature of the 3-letter word involved. Although the Complainant has established trademark rights in KPN for the purposes of paragraph 4(a)(i) of the Policy, it cannot establish a monopoly right to use of those 3-letters. The letters are clearly used as an abbreviation by a number of parties unconnected with the Complainant, ranging from the Greek State founded Youth Information Centre, to the Polish Conservative Party, a Catholic Church in Sweden, the IATA Code for an airport in the United States, a Music Academy, a Travel Company, a Finnish Company and an acronym for Kahn Process Networks.

6.12 There is also evidence that the Respondent registered a significant number (seventy nine) of 3-letter domain names over a 3-month period (November 2003 to January 2004), of which the domain name was but one of five such domain names registered on January 8, 2004; paragraph 4.B.3 above. This may not of itself establish Respondent’s bona fides, but it is at least consistent with the Respondent’s claim that his reasons for registering the domain name in issue were unrelated to the Complainant or its trademark in particular.

6.13 Nor, quite apart from registration in bad faith, has the Complainant made out a compelling case of use in bad faith, whether by establishing the circumstances set out in paragraph 4(b) of the Policy, or otherwise. The nature of the Respondent’s use of the domain name in issue for a generic directory / portal is overwhelming. Although the services to which it provides links include mobile phones – which are a principal feature of the Complainant’s website – that is only one of more than 60 categories of goods and services for which links are provided. The respective websites of the parties are quite dissimilar and the likelihood of confusion arising amongst Internet users must be remote.

6.14 The Respondent’s business of registering and offering for sale domain names is not, absent bad faith registration, of itself an impermissible activity so far as the Policy is concerned. Nor in such circumstances is the generation of click-through revenue from a domain name parked with a website such as “www.sedo.com”, whether or not in combination with the geo-targeting operated by that website.

6.15 Generally, the Panel agrees with the Respondent that the facts of the HSM Argentina v. Vertical Axis case (paragraph 5.B.3.11 above) are very much in line with those in this case. That Complaint was denied and, similarly, this Complaint is denied.

David Perkins Presiding Panelist
Charles Gielen Panelist	David E. Sorkin Panelist