WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kik Interactive Inc. v. Registration Private, Domains By Proxy, LLC / Oliver Cozzi

Case No. D2016-1593

1. The Parties

The Complainant is Kik Interactive Inc. of Waterloo, Canada, represented by Currier + Kao LLP, Canada.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Oliver Cozzi of Seminole, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name, <kikfriends.com>, is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2016, 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. The Center sent an email communication to the Complainant on August 15, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 24, 2016.

The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2016.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 28, 2016. 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 Kik Interactive, Inc., a Canadian corporation with its seat in Ontario, Canada.

According to the Complainant, it offers goods and services connected to its real-time instant messaging software application “KIK Messenger”.

The Complainant owns, among others, the following trademarks:

The disputed domain name <kikfriends.com> was registered on September 4, 2012. The disputed domain name redirects Internet users to a website at “www.konlinefriends.com” that states “Kik friends is the largest social networking companion to Kik Messenger.” The website at the dipusted domain name includes a disclaimer that states “kik friends is not affiliated with, endorsed by, or approved by Kik Messenger. You’re crazy for thinking otherwise.”

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submits:

That it has used some of the KIK and KIK MESSENGER marks since as early as April 2010.

That the KIK word mark appears in the first three characters of the disputed domain name and that the remaining part of the disputed domain name is clearly descriptive.

That the placement of the KIK word mark, at the beginning of the disputed domain name, suggests that the website is in some way affiliated, connected or otherwise associated with the Complainant.

That the website to which the disputed domain name resolves, states that it is a “social networking companion to Kik Messenger”.

That the preceding statement adds confusion about the Respondent’s and the disputed domain name’s affiliation to Kik Messenger by using the word marks KIK and KIK MESSENGER.

That Internet users would be led to believe that there is a real connection between the disputed domain name and the KIK marks and that this fact is supported by the fact that Kik Messenger has been downloaded by over three hundred million users

That the use of the disputed domain name, featuring the Complainant’s well-known and famous KIK marks undoubtedly leads to confusion, mistake and deception as to whether the disputed domain is affiliated, connected, or otherwise associated with the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues:

That the Respondent does not have rights to, or legitimate interests in, the disputed domain name.

That the Complainant’s domain name, <kik.com>, was registered on November 6, 1999, and has been used exclusively by the Complainant since as early as April 2010.

That the Respondent registered the disputed domain name incorporating one of the Complainant’s trademarks without authorization from the latter.

That the KIK marks are associated with goods and services relating to the Complainant’s Kik Messenger application, and that the website to which the disputed domain name resolves makes reference to said messaging application, which could create traffic towards the Respondent’s website.

That the registration of the disputed domain name appears to be a purported attempt to trade off on the goodwill that the Complainant has developed through the widespread use of its KIK marks.

That the term “kik” is not an ordinary dictionary word in English, but rather part of a distinctive mark built by the Complainant.

That the only reasonable explanation that the Respondent would have to use the disputed domain name is to exploit the recognition of the KIK marks for the purpose of driving Internet traffic to the website to which the disputed domain name resolves for illegitimate purposes.

That there is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services.

That the Respondent is not and has not been commonly known by the disputed domain name.

That the Respondent is not making a legitimate, noncommercial use of the disputed domain name.

That the website to which the disputed domain name resolves, displays multiple banners and generates pop-up pages, each of which can provide financial compensation to the Respondent.

That the website associated to the disputed domain name contains false and misleading information.

(iii) The disputed domain name has been registered and is being used in bad faith.

The Complainant adduces:

That, as early as April 2010, it has been using some of the KIK marks.

That the KIK marks are widely recognized amongst consumers and that they have become famous in the marketplace.

That the global use of the KIK marks began before the registration of the disputed domain name.

That the Respondent registered the disputed domain name in bad faith and has been using the website to which it resolves in bad faith by misleadingly attracting Internet users, by misrepresenting itself as a companion of Kik Messenger.

That the disputed domain name has been used to tarnish the reputation of the Complainant through the use of advertisements with questionable content, and that said advertisements would be unfairly associated with the Complainant due to the confusion caused by the use of the Complainant’s trademarks by the Respondent.

That the disputed domain name is used for commercial gain through the use of third-party advertisements located on the website to which it resolves.

That the disputed domain name is used for the purpose of disrupting the Complainant’s business, by deviating Internet traffic to the Respondent’s site, thus reducing the traffic that goes to the Complainant’s legitimate domain names.

That the Respondent’s website contains a metatag associated with the trademark KIK.

That the Respondent had knowledge of the Complainant’s KIK marks before registering the disputed domain name.

That the presence of a disclaimer at the bottom of the Respondent’s website is an indication that the Respondent knew of the KIK marks when registering the disputed domain name, and that by the time an Internet user finds and reads said disclaimer, the goal of attracting Internet traffic has been achieved.

That the Respondent intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s KIK marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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 in bad faith.

As the Respondent has failed to file a response to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Complainant is the owner of several trademark registrations for KIK in many jurisdictions, including the United States, where the Respondent is located.

The disputed domain name <kikfriends.com> is confusingly similar to the Complainant’s trademark KIK, as it comprises said trademark in its entirety. The inclusion of the word “friends” in the disputed domain name does not reduce the confusing similarity between the trademark KIK and the disputed domain name.

This Panel notes that, according to the evidence provided by the Complainant, its marks protect goods and services related to an instant messaging application, thus, the inclusion of the word “friends” does not diminish the confusion between the disputed domain name and the trademarks owned by the Complainant, as the word itself may increase the confusing similarity by evocating the idea of a messenger service, which is related to the goods and services offered under the KIK marks (see, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; British Telecommunications public limited company v. Joshua Stone, Openreach Telecom Ltd., WIPO Case No. D2015-0162).

The addition of the generic Top-Level Domain (“gTLD”) “.com”, in this case, is immaterial for purposes of assessing confusing similarity (see, Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s KIK trademarks.

The first requirement of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to the Complainant, the Respondent registered the disputed domain name without its authorization, and without having a legitimate reason to incorporate the KIK mark in said domain name. These allegations were not rebutted by the Respondent.

The Respondent has provided no arguments or evidence to demonstrate a legitimate use of the KIK mark or to otherwise show that it has rights or legitimate interests in the disputed domain name (see, Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408).

Nothing on the available record suggests that the Respondent has been commonly known by the disputed domain name.

Throughout the website to which the disputed domain name resolves, the Respondent repeatedly references the Complainant’s marks. This leads the Panel to find that the Respondent knew of the Complainant and its trademarks KIK and KIK MESSENGER before registering the disputed domain name.

In this case, the use of a disclaimer on the website to which the disputed domain name resolves does not render the use of the disputed domain name as a bona fide offering of goods or services. As argued by the Complainant, and not refuted by the Respondent, by the time Internet users get to read the disclaimer, the disputed domain name has already diverted them from the Complainant, and the objective of attracting visitors for financial advantage to the Respondent’s website would already have been achieved (see, Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; and LEGO Juris A/S v. Andrew Orr, WIPO Case No. D2015-1311).

The website to which the disputed domain name resolves features advertisements associated with third parties. Therefore, Internet users who in fact know of the Complainant’s KIK and KIK MESSENGER trademarks may easily be confused as to the source of the Respondent’s website and could be diverted to websites of different companies. The Respondent cannot be said to have rights or legitimate interests in the disputed domain name when it is profiting on the goodwill of Complainant’s trademarks in this manner.

Correspondingly, this Panel finds it implausible to consider that the Respondent did not intentionally adopt its website and the association of said site to the disputed domain name, so as to benefit from the goodwill of the KIK mark (see, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).

In addition, as elaborated in section 6.C. below, the disclaimer provided by the Respondent is in itself insufficient towards accurately disclosing the nature of the Respondent’s relationship with the Complainant.

The Complainant has established a prima facie case on the Respondent’s lack of rights to, or legitimate interests in, the disputed domain name, shifting the burden of production to the Respondent. Since the Respondent did not provide any argument or evidence in this case, its use of the disputed domain name, which misleadingly trades on the goodwill of the Complainant, cannot constitute a bona fide offering of goods or services (see, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

The second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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 its website or location.

The word “kik” appears to have no meaning in the English language, and its presence on the Respondent’s website is owed only to the recognition enjoyed by the Complainant’s marks. The Respondent has had no authorization to use the Complainant’s marks as part of a domain name, or otherwise as part of a website or application. Accordingly, this Panel sees no reason for the Respondent to have registered and used the disputed domain name, other than to increase the Internet traffic going to its website by taking advantage of the Complainant’s marks.

The disputed domain name <kikfriends.com> redirects Internet users to the Respondent’s website, associated with the domain name <konlinefriends.com>. The site to which the domain name <konlinefriends.com> resolves promotes a web application called “Kik friends”, which it claims is “the largest social networking companion to Kik Messenger”. It is evident that such claims intend to confuse Internet users.

According to the allegations and evidence provided by the Complainant, the Respondent’s site contains advertisements of third parties’ goods and services, and that some of these advertisements feature questionable content. These advertisements could confuse consumers, and tarnish the reputation of the Complainant’s marks (see, Merck Sharp & Dohme Corp. v. ZhenHui, HuiZhen, WIPO Case No. D2016-1431; Prada S.A. v. Ms. Loredana Salvatori, WIPO Case No. D2007-0064; and Cox Holdings, Inc. v. Gary Lam, WIPO Case No. D2004-0931).

The Respondent’s website sets forth a disclaimer which states: “kik friends is not affiliated with, endorsed by, or approved by Kik Messenger. You’re crazy for thinking otherwise”. However, the Respondent has impersonated the Complainant to attract Internet users to the Respondent’s website, by using the disputed domain name. The Respondent offers a web application that is presented as a companion to the Complainant’s service. Since the Respondent’s application seems to be complimentary to the Complainant’s service, it is reasonable to infer that the Respondent had a motive to misrepresent itself as being somehow associated with the Complainant, in order to promote the Respondent’s application by attracting Internet users who are looking for the Complainant’s services.

As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.5, the existence of a disclaimer cannot in itself eliminate bad faith, when bad faith has been established by other factors.

In this case, the Respondent did not use the disputed domain name to advertise or resell the services of the Complainant, but to promote its own application, which is an accessory to the Complainant’s services. It is clear that the Respondent has used the disputed domain name, which entirely incorporates the trademark KIK, to offer its application to Internet users who are searching for the Complainant. This conduct cannot be deemed to have taken place in good faith.

This Panel concludes that the Respondent has embarked in a process of deliberately misrepresenting the nature of its relationship with the Complainant. This process is evidenced through the adoption and use of a domain name that entirely incorporates the KIK mark of the Complainant.

The Respondent has attempted to create the impression amongst Internet users that the website to which the disputed domain name resolves is related to the Complainant’s marks and services, allowing advertisements related to third parties to be posted on the Respondent’s website, for profit, via a pay-per-click arrangement. By doing so, the Respondent has situated itself in the hypothesis contained in paragraph 4(b)(iv) of the Policy.

The third element of the Policy has been met.

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, <kikfriends.com>, be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: October 13, 2016