The Complainant is Virutex Ilko S.A., Chile, represented by De la Barra, Ernst & Siebel, Chile.
The Respondent is Dynadot, LLC (Super Privacy Service LTD c/o Dynadot), United States of America (“United States”) / Embrand, Michael Bilde, Denmark, represented by John Berryhill, Ph.d., Esq., United States.
The disputed domain name <ilko.com> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2020, 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 December 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2020.
On January 5, 2021, the Center transmitted an email to the Parties regarding the language of the proceeding. Complainant sent the Complaint translated into English on January 8, 2021. Respondent did not comment on the language of the proceeding.
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 January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Response was filed with the Center on February 8, 2021.
The Center appointed Luca Barbero, Rodrigo Velasco Santelices, and Richard G. Lyon as panelists in this matter on March 23, 2021. 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.
The Complainant is a company based in Chile which manufactures and sells kitchen products and household cleaning products under the trademark ILKO.
The Complainant is the owner, amongst others, of the following trademark registrations for ILKO, as per trademark certificates submitted as Annex 2 to the Complaint:
- Chile trademark registration No. 837188 for ILKO (word mark), filed on June 10, 2008 and duly renewed until July 22, 2028, in international class 7;
- Chile trademark registration No. 982818 for ILKO (figurative mark), filed on July 12, 2012 and renewed until September 10, 2022, in international class 21;
- Chile trademark registration No. 874077 for ILKO (word mark), filed on November 6, 2009 and renewed until December 20, 2019, in international class 21;
- Peru trademark registration No. 00208464 for ILKO (figurative mark), filed on March 6, 2014, in international class 21;
- Canada trademark registration No. TMA363345 for ILKO (word mark), filed on August 11, 1988, registered on November 10, 1989 and duly renewed on November 10, 2019;
- Mexico trademark registration No. 1613550 for ILKO (word mark), filed on November 12, 2014 and registered on February 15, 2016, in class 16.
The Complainant operates its main website at <cocinailko.cl>, which was registered on August 9, 2019.
The disputed domain name <ilko.com> was acquired by the Respondent in 2016. The disputed domain name is currently pointed to the website “https://www.brandbucket.com/names/ilko?source=ext”, where it is stated that the disputed domain name is no longer for sale on BrandBucket and other domain names are offered for sale.
The Complainant contends that the disputed domain name <ilko.com> is identical to its trademark ILKO.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name since it does not own rights over the term ILKO and intended to derive profits from the sale of the disputed domain name, which corresponds to the trademark created by the Complainant and used for more than 40 years.
As to the bad faith requirement, the Complainant asserts that the Respondent registered the disputed domain name for speculative purposes, as the Respondent has offered it for sale as a “premium” domain name at the amount of USD 21,595.00. The Complainant submits that the registration of a domain name at a low price to resell it at a higher price is harmful to the market and requests that the disputed domain name be transferred to the Complainant in view of the correspondence of the same with its trademark ILKO.
The Respondent denies all of the Complainant’s allegations and states that, though the disputed domain name does indeed appear to contain a four-letter name identical to the Complainant’s trademark, in Eastern Europe “Ilko” corresponds to a common first name and second name and various businesses and enterprises are often named or abbreviated as ILKO. The Respondent in fact highlights that it registered the disputed domain name in 2016, upon its abandonment by a person named “Ilko”, due to the inherent market value of a four-letter domain name corresponding to a non-exclusive and widely used name.
The Respondent asserts that it never intended to target the Complainant, its goods or its Spanish-speaking market in the first place since it was entirely unaware of the Complainant prior to the present proceeding.
With reference to rights or legitimate interests in respect of the disputed domain name, the Respondent states that it operates a naming consultancy at Embrand.com, which offers an array of domain names that it registered, along with listings from other domain investors, including four-letter names such as the one used in the disputed domain name.
The Respondent thus asserts that its registration of the disputed domain name was not an isolated outlier but was consistent with its general pattern of seeking relatively pronounceable four-letter domain names and that, considering that the name “Ilko”, commonly used in Eastern Europe, also corresponds to a considerable number of registered domain names in the name of other people or businesses, it is evident that the Respondent was in no way targeting the Complainant and its services. The Respondent also highlights that, in instances where the case does not involve particularly well-known trademarks, the market for non-exclusive short domain names is recognized as a classic and legitimate market allocation method to their highest valued use.
With reference to the circumstances evidencing bad faith, the Respondent underlines that it clearly had a motivation for registering the disputed domain name, independent of the Complainant’s claim of rights. The Respondent also notes that it has never offered kitchen implements, has never posted a Spanish language web page at the disputed domain name and has never engaged in any behavior or use of the disputed domain name that could be reasonably considered predatory in relation to the Complainant’s trademark.
The Respondent points out that, before it acquired the disputed domain name, the disputed domain name was registered by a person called […] Ilko of San Diego. (The Panel notes that this fact alone would not vest the Respondent with any claim to a right or legitimate interest.) The disputed domain name was due to expire in June 2016 and was reassigned to the Respondent after its expiration, in July 2016.
Moreover, the Respondent asserts that it offered the domain name on sale at a posted “list price” to invite negotiation and was in no way targeting the Complainant or attempting to pass itself off as the Complainant in the attempt to tarnish the Complainant or to otherwise exploit or harm the Complainant’s goodwill in connection with its South American Kitchen implements. On the contrary, it was intending to sell it to anyone who may have needed to make use of such four letter regardless of the market niche.
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the case at hand, the language of the Registration Agreement of the disputed domain name is English. The Complaint was filed in Spanish. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding requesting them to comment on the issue. The Respondent sent an email communication on December 29, 2020 to the Center in which it requested clarifications on the language to be used in this case.
On January 8, 2021, the Complainant submitted a translation in English of the Complaint, requesting anyway that the language of the proceeding be Spanish for the following reasons:
i) the Complainant is based in Chile, which is a Spanish-speaking country;
ii) the term “Ilko” encompassed in the disputed domain name corresponds to the Complainant’s coined mark, a word with no dictionary meaning in the Spanish language;
iii) the Complainant’s websites are drafted in Spanish since the Complainant’s products are marketed in Spanish-speaking countries.
In view of the circumstances of the case, especially the fact that the registration agreement is in English (see Rules, paragraph 11(a)) but also considering that the Complainant has not provided any evidence of the Respondent’s ability to communicate in Spanish and that the Complainant has spontaneously submitted a translated version of the Complaint and the related annexes in such language, the Panel finds that English is the appropriate language of this proceeding and will thus proceed to render the Decision in English.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These requirements are conjunctive; failure to prove any one of them results in a denial of the Complaint. As the Complainant here has not convincingly alleged (focusing much on the sales price, and not on the Respondent’s knowledge and targeting of the Complainant), nor proven, registration or use in bad faith, this Complaint fails.
The Complainant’s core argument on bad faith is that the Respondent offered the disputed domain name for sale to the general public for in excess of USD 20,000, an amount far greater than the going rate charged for registration of an available domain. But the Complainant makes no allegation and offers no proof that:
- five years ago the Respondent registered “the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who isthe owner of the trademark or service mark or to a competitor of that complainant” (Policy, paragraph 4(b)(i));
- the Respondent ever used the disputed domain name to target the Complainant or its ILKO marks; or
- there was any reason why the Respondent would have been aware of the Complainant’s trademark.
Neither registration nor use in bad faith has been proven, so the Complaint fails.
Paragraph 15(e) of the Rules requires the Panel to address the question of abuse of the administrative proceeding even if the Respondent has not requested such a finding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), section 4.16, third paragraph; Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344.
A thorough reading of the WIPO Overview 3.0 would or should have informed the Complainant or its counsel that trafficking in domain names is not per se bad faith, that short (three- or four-letter) domain names may have intrinsic value, and that without proof of cybersquatting the value of a domain name is a matter for the marketplace and not for determination by a UDRP panel.
Sufficient grounds for a finding of abuse therefore exist in this case. Such a finding, however, is discretionary with the Panel. Here the Panel, by majority, chooses not to make one, while cautioning the Complainant (or perhaps more accurately, its counsel) in future to limit invocation of the Policy to cases fully presented and in particular taking account of relevant (freely-available) jurisprudence.
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Presiding Panelist
Richard G. Lyon
Panelist
Rodrigo Velasco Santelices
Panelist
Date: April 9, 2021