The Complainant is Kookai of Paris, France, represented by WITETIC, France.
The Respondent is Somjit Pornpatcharapong of Chiang Mai, Thailand.
The disputed domain name <kookaishop.com> (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 17, 2012, 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.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 20, 2012. 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 trade mark on which the Complaint is based is KOOKAI. The Complainant is a French company notable for its fashion designs, clothing, bags and other accessories. The Complainant obtained its first trade mark registration for KOOKAI in France in 1983. Today, the Complainant is the owner of over 35 trade mark registrations around the world for or incorporating the KOOKAI mark. The Complainant is also the registrant of many domain names incorporating KOOKAI, including <kookai.com>, <kookai.net>, <kookai-shop.co.uk>, <kookaishop.co.uk>, <kookai.asia>, <kookai.biz>, <kookai.hk>, <kookai.sg>, <kookai.tw>, <kookai.it> and <kookai.es>.
The Respondent is Somjit Pornpatcharapong of Thailand. The Disputed Domain Name was registered on October 26, 2011. The Disputed Domain Name currently resolves to a website in Thai at which women’s apparel and accessories are sold (the “Website”).
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s KOOKAI mark, in which the Complainant has rights:
(i) the Complainant is the owner of several trade mark registrations for or incorporating KOOKAI throughout the world and the brand KOOKAI has enjoyed a strong reputation for 25 years in the fields of fashion, clothes, bags and other accessories;
(ii) the Complainant is the owner of numerous domain name registrations for or incorporating KOOKAI;
(iii) the Disputed Domain Name reproduces the KOOKAI trade mark in its entirety as well as the descriptive and generic word “shop”; and
(iv) the term “shop” does not prevent confusion but rather increases the risk of inviting Internet users to purchase KOOKAI branded goods.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) as far as the Complainant is aware, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since it has no trade marks or corporate/trade names corresponding to the Complainant’s trade mark;
(ii) the Respondent used the Disputed Domain Name in an unauthorised manner to sell identical products to that of the Complainant trading off the Complainant’s reputation;
(iii) the Respondent was aware of the existence of the prior rights of the Complainant given the degree of reputation of the KOOKAI trade mark;
(iv) the trade mark KOOKAI is not the name or does not indicate the activity of the Respondent, which has no economical or financial relationship with the Complainant; and
(v) the sole purpose of the Respondent is to drag traffic away from websites belonging to the Complainant.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent uses the Disputed Domain Name to attract consumers based on the reputation of the Complainant’s KOOKAI trade mark and the addition of the generic term “shop” is further proof of this intention;
(ii) the Respondent is using the Disputed Domain Name in connection with its own online retail service in direct competition with the Complainant’s products and reproducing the KOOKAI trade mark on the Website; and
(iii) not only did the Respondent know of the Complainant’s right in the KOOKAI trade mark but it purposefully took advantage of the mark.
The Respondent did not submit a formal Response to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in respect of the KOOKAI trade marks on the basis of its registrations in various countries across the world, dating from 1983, more than 25 years before the registration of the Disputed Domain Name in 2011.
The Disputed Domain Name incorporates the Complainant’s KOOKAI trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s mark is the former’s inclusion of the generic word “shop” as a suffix. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not typically negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088; and Missoni S.p.A. v. Ahmed Salman, WIPO Case No. D2007-1485). The Panel finds that “kookai” is the distinctive and prominent component of the Disputed Domain Name, such that the addition of the word “shop” does nothing to distinguish the Disputed Domain Name from the Complainant’s KOOKAI mark, but rather increases confusion amongst Internet users that it may be associated with the Complainant, given that the Complainant is in the fashion retail business (see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 and Johnson & Johnson, Korres S.A. v. Georgios Sigalas, WIPO Case No. D2010-1602).
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden by providing evidence of rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its KOOKAI mark. Further, the Complainant submits that the Respondent has never been commonly known by the “Kookai” name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant’s evidence.
The Panel accepts that the KOOKAI trade mark is well-established worldwide and has been registered since 1983. The Panel also notes that “kookai” is an invented term with no common meaning in English, French, (the language used where the Complainant primarily carries on its business), or Thai, (the language used where the Respondent is supposedly located). As such, the Panel finds that the Complainant’s use of the widely known KOOKAI trade mark in its entirety renders no plausible explanation as to why the Respondent selected the trade mark other than to trade on the goodwill of such a mark (see RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242). The Panel also accepts that there is no evidence to suggest that the Respondent is commonly known by either the Disputed Domain Name or the KOOKAI mark, and that the use of the Website to offer for sale products under the KOOKAI brand which are in fact the products of the Complainant’s competitors precludes a finding of noncommercial or fair use of the Disputed Domain Name. Accordingly, the Respondent needs to demonstrate that it has acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services. However, given the blatant bad faith attributable to the Respondent on the facts of this case (as discussed below in relation to bad faith registration and use), the Panel is unable to find any such rights or legitimate interests on this basis.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
The Respondent has no rights or legitimate interests in the Disputed Domain Name, which in itself may constitute evidence of bad faith. Evidence of bad faith also includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. 0094313). The Complainant’s first trade mark registration for “kookai” dates back to 1983. On the contrary, the Disputed Domain Name was registered on October 26, 2011, more than 25 years after the KOOKAI mark was first registered by the Complainant. Given the degree of fame that the KOOKAI trade mark has acquired around the world throughout the many years since its registration and use, the Panel accepts that the Respondent was aware of the Complainant’s KOOKAI trade mark at the time of registering the Disputed Domain Name and is using the Disputed Domain Name solely for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits, by attracting Internet customers who the Panel accepts would be drawn to the Website on the mistaken assumption that the Website was authorised by or connected with the Complainant.
The fact that “kookai” is a “made up” word, coined by the Complainant and having no common meaning in English or any other language independent of the Complainant’s trade mark, serves to strengthen the presumption that the Respondent’s registration of the Disputed Domain Name was motivated solely to create confusion amongst Internet users and take advantage of the Complainant’s reputation in the KOOKAI trade marks (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; and Banca Popolare Friuladria S.p.A. v. Giovanni Zago, WIPO Case No. D2000-0793).
Numerous UDRP panels have decided that the use of a domain name which is identical or confusingly similar to a complainant’s mark for a site that sells products of its competitors, constitutes an improper use of a complainant’s mark to attract Internet users to the respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site (see for example, Nikon, Inc. and Nikon Corporation v. Technilab, Inc, WIPO Case No. D2000-1774; Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728; and Missoni S.p.A. v仲裁域名 / DomainJet, Inc. / Jack Sun, WIPO Case No. D2011-1058).
The Panel finds that the Respondent must have been aware of the Complainant and its rights in the KOOKAI mark because the Complainant sent several emails to the Respondent between November 9, 2012 and January 24, 2012, informing the Respondent of the Complainant’s rights in the KOOKAI mark and requesting the Respondent to transfer the Dispute Domain Name to the Complainant so as to resolve the matter amicably. The Respondent did not respond to the Complainant’s requests and continued to carry on its business via the Website, even though it had been expressly informed of the Complainant’s rights in the KOOKAI trade mark. This is evidence that the Respondent used the Disputed Domain Name being well aware of the Complainant and its rights in the KOOKAI mark, and therefore constitutes further evidence of blatant bad faith on the part of the Respondent.
Based on the above, the Panel finds that there is no basis on which to infer that the Respondent has registered or used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith. The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.
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 <kookaishop.com> be transferred to the Complainant.
Gabriela KennedySole Panelist
Dated: August 24, 2012