The Complainant is Koninklijke KPN N.V., Netherlands, internally represented.
The Respondent is John Mal, Singapore, self-represented.
The disputed domain name <kpn.app> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 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.
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 proceedings commenced on May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent sent an email on May 8, 2019, expressing that he was willing to settle with the Complainant. Accordingly, the Center sent an email regarding possible settlement to the Parties on May 14, 2019. Upon the Complainant’s request, the proceeding was suspended on May 15, 2019, and the suspension period was extended on June 20, 2019. On July 9, 2019, further to the Complainant’s request for reinstitution, the proceeding was reinstituted on July 12, 2019, and the response due date was reset to July 21, 2019. The Response was filed with the Center on July 21, 2019.
The Center appointed John Swinson as the sole panelist in this matter on August 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 is Koninklijke KPN N.V, a company incorporated in the Netherlands. The Complainant is a telecommunications and ICT service provider and has been operating under the brand KPN since 1913.
According to the Complaint, the Complainant is one of the leading telecommunications providers in The Netherlands.
The Complainant is the owner of a number of registered trade marks for KPN, and one of the earliest trademark registrations is Benelux registered trade mark number BX 0529431, filed on March 2, 1993 which remains active (“Trade Mark”). The Complainant is also the owner of a registered domain name incorporating the Trade Mark, being <kpn.com>, registered on December 19, 1994.
The Respondent is John Mal, an individual of Singapore. The Disputed Domain Name was registered on May 8, 2018. The website at the Disputed Domain Name does not currently resolve to an active website. The Respondent states that he intends to use the Disputed Domain Name as part of his freelance portfolio.
The Complainant makes the following submissions.
The Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety.
The generic Top-Level Domain (“gTLD”) does not distinguish the Disputed Domain Name and may even add to the confusing similarity between the Complainant’s Trade Mark and the Disputed Domain Name, as the Complainant offers theirs services via apps.
No rights or legitimate interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
Registered and used in bad faith
There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name.
The Complainant has developed a strong reputation in the Trade Mark. The Respondent should have known of the Complainant and the Complainant’s Trade Marks at the time it registered the Disputed Domain Name.
The Respondent offered to sell the Disputed Domain Name to the Complainant for USD 11,400. The Respondent and the Complainant engaged in negotiations and the Complainant offered the Respondent USD 1,000 for the transfer of the Disputed Domain Name. The Respondent did not provide an invoice with company details, and therefore the Complainant did not make the transfer.
The Respondent’s passive holding of the Disputed Domain Name does not prevent a finding of bad faith (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent makes the following submissions.
Identical or confusingly similar
The Respondent searched the Singapore trade mark database and found no mention of the Complainant’s Trade Mark. In addition, when conducting a simple search for “KPN” on Tencent and Huawei App Market, which have a combined Chinese market share of 38.79 percent, there are no results related to the Complainant. All the annexes to Complaint regarding the brand name only show how big its business is in the Netherlands.
A number of other companies also have registrations for trade marks for KPN. The Complainant does not have a monopoly on the three letters “KPN”. This is also an acronym for many other terms. In other UDRP cases Panels have decided that there was a legitimate interest by registrants in three letter domain names.. The Respondent is not infringing the Complainant’s Trade Mark rights.
No rights or legitimate interests
The Complainant does not have exclusive rights to the letters “KPN”, which is an acronym for different things. The Respondent undertook a search before registering the Disputed Domain Name and did not find the Complainant. The Respondent is an active freelancer and the Disputed Domain Name will be used to demonstrate the portfolio of the Respondent. The development of the website has been delayed.
Registered and used in bad faith
The Respondent did make an offer to the Complainant for USD 11,400. This is not an unreasonable amount for the Respondent to sell the Disputed Domain Name, considering that Respondent purchased the Disputed Domain Name from a third party for USD 280, and an .app domain is new and upcoming. The Respondent has been negotiating and engaging with the Complainant in good faith to sell the Disputed Domain Name.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the Trade Mark in its entirety, and no additional words have been added. The use of a new gTLD can, in some circumstances, play a role in determining the second and third elements of the Policy. However, in this case, under the first element of the Policy, the new gTLD “.app” is disregarded.
It is not relevant in respect of the first element of the Policy that others may also have trade mark rights in respect of KPN (if this is in fact the case).
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name does not currently resolve to an active website. The Respondent states that he intends to use the Disputed Domain Name as part of his freelance portfolio but has not provided any evidence of his intention to do so.
- The Panel accepts the Complainant’s submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
The Panel notes the Respondent’s claim that “KPN” can be an acronym of many different things and the examples provided. However, none of the examples provided by the Respondent demonstrate that the Respondent is commonly known by or associated with the Disputed Domain Name.
The Respondent states that he engaged in a trade mark review in Singapore prior to registering the Disputed Domain Name. The Respondent provides as his supporting Annex, an undated search page of “Singapore Company Name Check search tool”. Whilst there may not have been any business names of the Complainant registered in Singapore, this is not the same as a trademark search and in any event the Respondent should have been alerted to the Complainant by a simple Internet review, noting the long-time presence of the Complainant on the Internet through the use of the domain name <kpn.com> and the large number of websites and media referring to the Complainant.
Such review might not be considered necessary in registering a domain name containing “dictionary words”, but the likelihood of creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is sometimes true for certain acronyms (see e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).
The Panel finds that the Complainant has made out a prima facie case. The Respondent has provided no evidence of his plans to use the Disputed Domain Name. Accordingly, the Respondent has not rebutted the prima facie case and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Registering or acquiring a domain name for the purpose of selling, renting or otherwise transferring the domain name registration to a trade mark owner for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name is an indication of registration and use of the relevant domain name in bad faith (see paragraph 4(b)(i) of the Policy).
Out-of-pocket costs include the costs of obtaining, registering, and maintaining a domain name. This issue of “excessive” out-of-pocket costs is considered on a case-by-case basis.
In this case, the initial contact regarding the selling of the Disputed Domain Name was made by the Complainant, in or around September 2018, to the Respondent through the Registrar. This initial correspondence was not made available to the Panel. The Respondent replied stating:
“… We do however understand the potential value of this domain for your company. We discussed this and since the site is still under development, it might be possible to make some changes and use a second choice domain. This said, we are willing to transfer the domain to you for 11.400,00 USD. …”
There are then a number of emails back and forth between the Respondent and the Complainant and the Respondent eventually offers the Disputed Domain Name for sale for USD 1,000 with payment made via PayPal. However, after significant back-and-forth between the Parties, the Complainant refused this proposal as they do not want to transfer money through PayPal.
The following circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit off the Complainant and the Complainant’s Trade Mark rights:
- The Complainant has a well-known Trade Mark, has been operating the domain name <kpn.com> for a long time, and the Respondent likely had knowledge of the Complainant and the Complaint’s Trade Mark when he registered the Disputed Domain Name;
- The failure of the Respondent to present a credible evidence-backed rationale for registering the domain name;
- The initial offer by the Respondent to sell the Disputed Domain Name for USD 11,400;
- The fact there is no active website associated with the Disputed Domain Name and no evidence that there has been.
In the Panel’s experience USD 11,400, and even USD 1000, given the lack of evidence from the Respondent as to his expenses, would greatly exceed the Respondent’s out-of-pocket costs in respect of the Disputed Domain Name. The Panel finds that the Respondent’s offer to sell the Disputed Domain Name for an amount in excess of its out-of-pocket costs is evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(i) of the Policy.
In the circumstances, the Panel will also consider the current use of the Disputed Domain Name, which resolves to an inactive page. The fact that the Disputed Domain Name is not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).
Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The particular circumstances of this case which affirm a conclusion of bad faith use are:
- the Trade Mark has a strong reputation and is widely known; and
- the Respondent has not provided any evidence of actual or contemplated good-faith use of the Disputed Domain Name.
While the Panel understands that there is a legitimate market in domain names (and even putting aside for a moment the apparent fame of the Complainant) none of the third-party uses cited by the Respondent of “KPN” advance the Respondent’s case. For example, the Respondent mentions inter alia an arm of the Greek government, an airport, and a Polish political party – what the Respondent overlooks here is that any use of “KPN” by those entities would be grounded in a right or claim to such term by those third parties, not by the Respondent. Based on the evidence before the Panel, it seems more likely than not that the Respondent’s purported justification for having acquired the Disputed Domain Name (of which he has not provided any evidence) is a rather pretextual afterthought and that his true intention was to sell the Disputed Domain Name to the Complainant (or possibly another entity using the term).
The Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <kpn.app> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: August 19, 2019