WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KION Material Handling GmbH v. Kion Printing Inc.

Case No. D2017-0025

1. The Parties

The Complainant is KION Material Handling GmbH of Wiesbaden, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

The Respondent is Kion Printing Inc. of City of Industry, California, United States of America ("US").

2. The Domain Name and Registrar

The disputed domain name <kion.com> (the "Disputed Domain Name") is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 8, 2017.

The Center appointed Nick J. Gardner as the sole panelist in this matter on February 13, 2017. 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 Disputed Domain Name was first registered on August 5, 1996 by the Respondent.

The Complainant, based in Wiesbaden, Germany is a manufacturer of fork-lift machinery and other products relating to storage technology and warehouse equipment. It is the world's second biggest supplier of
fork-lifts and warehouse equipment and the market leader in Europe. It employs more than 23,500 employees and has an annual turnover of more than EUR 5 billion.

Whist the origins of the Complainant can be traced back via predecessor companies to 1904 the Complainant did not adopt the term "kion" as part of its name until 2006. According to the Complaint:

"In 2006, the three fork lift brands under the Linde Group, namely Linde, Still and OM were grouped under one "umbrella" company (independent from the Linde Group) which was then named "KION Group". The term kion had not previously been used by any of the Complainant's predecessor companies.

The Complainant owns various registered trademarks for the word "kion". By way of example, US trademark no. 79120076 KION, filed on May 8, 2012 and registered on April 29, 2014. These trademarks are referred to in this decision as the "KION trademarks". None of the KION trademarks were applied for or registered before 2006.

The Complainant is also owner of various domain names incorporating the word "kion", including:

<kiongroup.com>; <kion.industries>; <kion.group>; <kion.us>; and <kionnorthamerica.us>.

The Respondent is (or was) a printing business. According to California State records placed in evidence by the Complainant, the Respondent currently has a legal status under California law of "SOS/FTB SUSPENDED". The meaning and significance of this status is discussed below.

The Respondent is (or was) a Californian corporation carrying out business as a printer. From 2000 until some time in 2010 the Disputed Domain Name was used in relation to a website which promoted the Respondent's business. At some stage in 2010 that website ceased to be live and the Disputed Domain Name no longer resolved to that, or any other website. There is no evidence before the Panel of any use of the Disputed Domain Name subsequent to 2010.

5. Parties' Contentions

A. Complainant

The Complainant says that the Domain Name is identical to the KION trademarks.

It then says that the Respondent has no rights or legitimate interests in the term "kion". It relies on the fact that the Respondent's status under California law means it has no right to use its own name. This issue is discussed further below.

The Complainant says that the Respondent's registration and use is in bad faith. In advancing its case the Respondent recognises that the Disputed Domain Name was registered long before the Complainant adopted the term KION as its name and registered the KION trademarks. It relies upon the reasoning of the panel in Deutsche Kreditbank AG v. DKB Data Services (USA), Inc., WIPO Case No. D2009-1084 which it says is directly applicable to the present case. This case and its applicability are discussed further below. The Complainant also says that the requirement for registration in bad faith can be assessed at the time when the Disputed Domain Name registration is renewed. This issue is discussed further below.

B. Respondent

No Response has been filed.

6. Discussion and Findings

Preliminary Matter

Before considering the substantive issues, it is necessary to consider whether the lack of Response prevents the Panel proceeding to resolve this dispute. Under the Rules, paragraph 2:

"Communications
(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:

(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and

(ii) sending the complaint, including any annexes, in electronic form by e-mail to:

(A) the e-mail addresses for those technical, administrative, and billing contacts;

(B) postmaster@<the contested domain name>; and

(C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and

(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).

(b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii))."

The Complaint was served by the Center via email to the appropriate email addresses as identified in the Complaint and as confirmed in respect of the Respondent in the Registrar's records. No Response was received to any of these. The Center then sought to serve the Written Notice of the Complaint by courier to the Respondent's postal address. The Respondent could not be located at the applicable address and delivery was not effected.

In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ "reasonably available means calculated to achieve actual notice to Respondent". Under the Rules (paragraph 5(e)) "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint". The Panel concludes that there are no exceptional circumstances which prevent the Panel deciding the dispute. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:

(i) the Disputed Domain Name is identical with 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 in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it owns the KION trademarks. The Panel holds that the Disputed Domain Name is identical to the KION trademarks. It is well established that the specific Top-Level Domain (in this case ".com") does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No.
D2000-0429.

It does not matter for the purposes of this element that the Disputed Domain Name was registered before the KION trademarks existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.4:

"Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP" (see below as to bad faith issues).

Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:

i. before any notice to you of the dispute, your use 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. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

iii. you are 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.

In the present case the Disputed Domain Name was registered in 1996. This was long before the Complainant adopted the name KION. It was registered by the Respondent who (on all the evidence before the Panel) is (or was) a bona fide printing business, named Kion Printing Inc. The Complainant does not suggest otherwise. In these circumstances it would seem clear that (i) and possibly also (ii) above apply. The Complaint however relies upon the fact that the Respondent's business activities appear to have ceased. It has not proved possible to contact the Respondent at its postal address or by telephone or email and various searches all suggest that the Respondent is no longer actively in business. In this regard the Complainant also submits a printout from the website "www.citysearch.com" according to which the Respondent is "Reported Closed". The Disputed Domain Name itself has not been used for the last seven years. The Complainant has provided evidence which shows that under California law the current legal status of the Respondent is recorded on the relevant register as "SOS/FTB Suspended" and has shown that the Secretary of State for California, on its website, explains this status description as follows (emphasis added):

"Suspended (domestic entities) or Forfeited (foreign entities):
The business entity's powers, rights and privileges, which include the right to use the entity's name in California, were suspended or forfeited in California as described below:

SOS Suspended or SOS Forfeited:
The business entity was suspended or forfeited by the Secretary of State for failure to file the required Statement of Information, and in the case of a domestic corporation that is an association formed to manage a common interest development, the required Statement by Common Interest Development Association.

Note: In the case of a domestic or foreign corporation, the Secretary of State suspension or forfeiture also may be due to the failure of the corporation to reimburse the Victims of Corporate Fraud Compensation Fund for a paid claim. However, in most cases, suspension or forfeiture by the Secretary of State is due to failure to file the required statement(s) as stated above. Further information about the type of Secretary of State suspension or forfeiture can be obtained by ordering a status report. For information about ordering a status report, see Information Requests."

The difficulty with this argument is that it does not establish that the Respondent's rights are necessarily extinguished, as opposed to being suspended. The website relied upon indicates the rights in question, including the right of the Respondent to use its own name, may be reinstated. This is made quite clear on the same website which goes on to state: "For information about how to revive a suspended/forfeited entity, see Frequently Asked Questions". To put it another way the evidence indicates the Respondent may have ceased carrying out business as a printer, but does not establish that it has ceased to exist. It has been suspended (most likely for failing to comply with Californian law in filing of information) but there are mechanisms available which could enable that suspension to be reversed. There is no evidence before the Panel as to what effect (if any) such a suspension has on the general rights and liabilities of the Respondent including applicable contractual rights. These will include the Respondent's contractual rights as registrant of the Disputed Domain Name. Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent has ceased to be the registrant of the Disputed Domain Name as a result of its California suspended status.

In light of this material the Panel is doubtful that the Complainant's argument is correct. It has not unequivocally established that the Complainant as a legal entity no longer exists, and in these circumstances it appears to the Panel that the Complaint has not, on the balance of probabilities, established that the Respondent has no rights or legitimate interests in the Disputed Domain Name, which it clearly adopted many years ago (and long before the Complainant adopted the KION name and trademarks) as part of a bona fide offering of goods or services. However given the Panel's finding in relation to bad faith (below) the Panel does not need to make a definitive finding in relation to this issue.

C. Registered and Used in Bad Faith

The difficulty that the Complainant faces in this case is that the Disputed Domain Name was registered in 1996 but the Complainant did not adopt the term KION as its name or register it as a trademark until 2006. This was the date when the Complainant first decided to use the term KION as its name. No case is advanced by the Complainant that it had any earlier (e.g., unregistered) rights in the name "KION". Given that paragraph 4(a)(iii) of the Policy provides that the Complainant has to establish in respect of the Disputed Domain Name that it "has been registered and is being used in bad faith", the question arises as to how this can be the case when the Complainant did not have any trademark rights when the Respondent registered the Disputed Domain Name?

The difficulty is expressly identified in WIPO Overview 2.0 which states in paragraph 3.1:

"Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."

The Complainant addresses this in two ways. The first is to say that the reasoning of the panel in the earlier case of Deutsche Kreditbank AG v. DKB Data Services (USA), Inc., WIPO Case No. D2009-1084 (referred to in this decision as the "<dkb.com> case") is applicable. That case concerned the domain name <dkb.com> and the panel in that case accepted the complainant's evidence that the respondent had been dissolved in 2003. The reasoning of the panel in that case is relatively brief but it would appear from the decision that: (1) there was no evidence before the panel of any use of the domain name in question at any time; and (2) the Complainant's trademark for the term "dkb" had been registered since 1995 and hence predated the registration of the domain name by seven years (the domain name was registered in 2002); (3) the basis for finding registration and use in bad faith was the passive holding of the domain name, following the well known approach in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panel's conclusion was expressed as follows: "Although the matter is not entirely free from doubt, on the available record the Panel is satisfied on balance that in light of all of the above circumstances in combination that the third element has been met".

The present case is rather different in that: (1) there is evidence of use of the Disputed Domain Name for what was clearly a bona fide website relating to the Respondent's own business; (2) the Complainant's name and trademark did not exist when the Disputed Domain Name was registered by the Respondent. In these circumstances the Panel declines to find that the approach in the <dkb.com> case is applicable to the present case.

The Complainant also says that the <dkb.com> case is an important example of a decision in favour of a complainant where the panel found that the domain name "was first registered in good faith but then used in bad faith". It is not clear to this Panel whether this was in fact part of the reasoning of the panel in the <dkb.com> case, but in any event, as noted above this case is distinguishable in several important aspects. In the opinion of this Panel if a domain name has originally been registered in good faith then paragraph 4(a) (iii) cannot apply in circumstances where the domain name remains registered to the original registrant (see below).

The second way the Complainant puts its case is to say that registration in bad faith can be assessed not only at first registration but when the Disputed Domain Name was renewed. It says: "[…] Panels have decided that, when assessing 'registration' in bad faith, the date of the renewal of the domain name is to be taken into account, because according to paragraph 2 of the Policy, the representations made by the registrant of a domain name are not only made at the time when the domain name is first registered, but also 'by asking us to maintain or renew a domain name registration'. The Complainant strongly believes that the wording of paragraph 2 of the Policy is clear in this respect, so that the renewal should be decisive".

The Complainant recognises however that this argument is inconsistent with the generally accepted view as set out in WIPO Overview 2.0. The Complainant says as follows:

"The common view seems to be different. As discussed in WIPO Overview 2.0, at paragraph 3.7, 'Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WHOIS registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain Name'".

Although this quotation by the Complainant is accurate it omits the first part of paragraph 3.7 which is directly relevant and reads as follows:

"While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name. (Movement of a domain name registration from one privacy or proxy service to another may in certain circumstances constitute evidence of a new registration for this purpose.)"

This Panel agrees with the generally accepted view – mere renewal of a domain name is not to be taken as a "registration" when the renewal is effected by the same entity as previously owned the domain name, and such a renewal cannot form the basis for a finding of registration in bad faith. The Complainant has however anticipated this finding and goes on to say as follows:

"In the Complainant's view, even if one would follow the (more or less) common sense [view] that renewal shall not be the decisive point in time, it should be noted that the WIPO Overview 2.0 explicitly acknowledges that there are cases where a renewal or changes in the contact data can be of importance. This is, in particular, where there is no "unbroken chain" of ownership or where the identity of the underlying registrant is concealed. Such circumstances have occurred in the case at hand:

- the WHOIS data has been changed to an invalid E-Mail address and an inactive phone number;

- there is no "unbroken chain" of ownership, as the registered owner, i.e. the Respondent, has been closed/suspended and does no more exist;

- the identity of the person (or company) controlling or holding the disputed domain name, i.e. the true or underlying registrant (who cannot be the nonexistent company of the Respondent) is concealed, so that an assessment of the liability of such true registrant under the UDRP is impossible.

The Complainant is of the opinion that these circumstances are sufficient to support a registration and use in bad faith, so that the third element of the UDRP is met, as well".

For the reasons already discussed above the Panel does not accept the Complainant's assertion that the Respondent no longer exists. The filed evidence establishes the Respondent's current status under California law is suspended, but it appears that such a suspension can in at least some circumstances be reversed. It is not clear to the Panel whether, as the Complainant suggests, the WhoIs data relating to the Disputed Domain Name has been changed, or if so when that happened. It would appear to contain an email address for the registrant of "no.valid.email@worldnic.com" which seems likely to be a placeholder, although the "admin contact details" contain what appear to be a valid email address and telephone number. It may well be, as the Complaint says, that these are no longer in use, but that does not, in the Panel's view establish there has been a break in the chain of ownership in the Disputed Domain Name. The fact is that the Disputed Domain Name was registered by the Respondent long before the Complainant adopted the name KION and the Respondent is still the named registrant, even though its status under Californian law is suspended. That does not, in the Panel's opinion, establish that the Disputed Domain Name has been registered and used in bad faith.

The Panel would also observe it is important to bear in mind the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of cybersquatting. See, e.g., Libra v. NA Global Link, WIPO Case No. D2000-0186. The Complainant may have known (had it inquired at the time) when it decided to adopt KION as its name in 2006 that a bona fide third party owned and was using the Disputed Domain Name. In those circumstances the Policy is not the appropriate mechanism to use to attempt to obtain the Disputed Domain Name from that third party.

Accordingly the Panel declines to find that the Disputed Domain Name has been registered and is being used in bad faith. The third condition of paragraph 4(a) of the Policy has not been fulfilled.

7. Reverse Domain Name Hijacking

Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Panel considers that such a finding can in appropriate cases be made by a panel of its own motion, and this Panel has in previous cases done so, in circumstances where inter alia the date of the domain name registration predated any plausible claim to complainant trademarks.

In the present case the Panel considers such a finding is not appropriate. The status of the Respondent is unusual and the Complainant had anticipated the difficulties that arose in its case and presented carefully reasoned arguments addressing those difficulties. Whilst the Panel has not accepted those arguments it does not consider it appropriate to make a finding of Reverse Domain Name Hijacking.

8. Decision

For the foregoing reasons, the Complaint is denied.

Nick J. Gardner
Sole Panelist
Date: February 24, 2017