WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Basic Trademark S.R.L. v. David Klein, Tom Nadel, Annett Mehler, Frank Sommer, Jens Schulze, Markus Wolf, Jens Scholz, Patrick Baier, Julia Eisenhauer, Dieter Theissen, Anja Abend, Christ Bieb, Andreas Rothstein, Annett Schmid, Daniel Kalb, ZhuangLi Feng (庄丽风), Jani Fassbin, Uta Freit, Karol Vog, Andre Mey, zhiling lin, Web Commerce Communications Limited

Case No. D2021-4255

1. The Parties

The Complainant is Basic Trademark S.R.L., Italy, represented by Studio Sindico e Associate, Italy.

The Respondents are David Klein, Tom Nadel, Annett Mehler, Frank Sommer, Jens Schulze, Markus Wolf, Jens Scholz, Patrick Baier, Julia Eisenhauer, Dieter Theissen, Anja Abend, Christ Bieb, Andreas Rothstein, Annett Schmid, Daniel Kalb, Jani Fassbin, Uta Freit, Karol Vog, and Andre Mey, Germany; ZhuangLi Feng (庄丽风), China; zhiling lin, Hong Kong, China; and Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrars

The disputed domain names <buykappacanada.com>, and <kappa-chile.com> are registered with Mat Bao Corporation. The disputed domain name <discountkappa.com> is registered with GoDaddy.com, LLC. The disputed domain names <kappa-argentina.com>, <kappaca.com>, <kappa-colombia.com>, <kappadk.com>, <kappa-espana.com>, <kappaireland.com>, <kappa-nederland.com>, <kappa-philippines.com>, <kapparomania.com>, <kappa-singapore.com>, and <kappausstore.com> are registered with Alibaba.com Singapore E-Commerce Private Limited. The disputed domain names <kappaaustore.com>, <kappamagazatr.com>, <kappasuomi.com>, <kappausastore.com>, and <tiendakappaespana.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain names <kappa-australia.com>, <kappaenmexico.com>, <kappa-germany.com>, <kappagreece.com>, <kappa-italia.com>, <kappa-malaysia.com>, <kappa-nz.com>, <kappaoutletuk.com>, <kappaschweiz.com>, and <kappa-southafrica.com> are registered with NameSilo, LLC. The disputed domain names <kappabutikdk.com>, <kappanederland.com>, <kappasverige.com>, and <kappaukshop.com> are registered with 1API GmbH. The disputed domain name <kappaclearance.com> is registered with eName Technology Co., Ltd.

Mat Bao Corporation, GoDaddy.com, LLC, Alibaba.com Singapore E-Commerce Private Limited, PDR Ltd. d/b/a PublicDomainRegistry.com, NameSilo, LLC, 1API GmbH, and eName Technology Co., Ltd are separately and collectively referred to below as the “Registrar”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021 with annexes submitted on December 27, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verifications in connection with the disputed domain names. On December 17, 18, 20 and 21, 2021, the Registrar transmitted by email to the Center its verification responses disclosing registrants and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 29, 2021 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 in English on January 26, 2022.

On December 29, 2021, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding as regards the disputed domain name <kappaclearance.com>. The Complainant confirmed its request that English be the language of the proceeding as regards all the disputed domain names on January 26, 2022. The Respondents 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on January 31, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 22, 2022.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 28, 2022. 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 part of the BasicNet Group, which designs and markets clothing, footwear and accessories sold under various trademarks, including KAPPA. The Complainant holds International trademark registration number 820762 for KAPPA, registered on October 13, 2003, designating multiple jurisdictions, specifying goods in classes 9, 16, 18, 25 and 28. That trademark registration remains current. The Complainant has also registered domain names, including <kappa.com> and <kappa-usa.com>, that it uses in connection with websites where it offers its products for sale.

The Respondents are variously identified as a Malaysian company named “Web Commerce Communications Limited” (with the registrant contact “Client Care”); 19 different individuals all ostensibly resident in Germany; one individual resident in Hong Kong, China (“zhiling lin”); and another individual resident in mainland China (“ZhuangLi Feng (庄丽风)”).

All the disputed domain names resolve to online stores offering for sale what are purported to be the Complainant’s KAPPA brand products.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s KAPPA trademark.

The Respondents have no rights or legitimate interests with respect to the disputed domain names because the Complainant has never authorized any third party to register any domain names including the KAPPA trademark.

The disputed domain names were registered and are being used in bad faith. As a result of the fame and distinctiveness of the KAPPA trademark all over the world, the registration of the disputed domain names qualifies as being made in bad faith per se. By using the disputed domain names, the Respondents intentionally attempted to attract for commercial gain, Internet users to their websites, by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondents

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

6. Discussion and Findings

6.1 Preliminary Issues

A. Consolidation: Multiple Domain Name Registrants

The amended Complaint initiates disputes in relation to 22 nominally different domain name registrants regarding 34 disputed domain names. The Complainant alleges that the domain name registrants are under the same control. The Complainant alleges that all the websites associated with the disputed domain names are identical and mirror copies of its official website at “www.kappa-usa.com”. The Complainant also points out other commonalities in the disputed domain names and some of their respective registrant details.

The Complainant requests consolidation of the disputes against the 22 nominally different domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider: (i) whether the disputed domain names or associated websites are subject to common control; and, if so, (ii) whether the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that 11 disputed domain names are registered by the same domain name holder, i.e., Web Commerce Communications Limited. While 21 other disputed domain names are registered in the names of 19 individuals all ostensibly resident in Germany, four of these disputed domain names share two registrant names and nine share three contact email addresses. All these 32 disputed domain names were registered within the relatively short period of six months and they all follow the pattern of combining “kappa” with a geographical term and, in some cases, another word. All these 32 disputed domain names resolve to websites in different languages displaying product images (often the same images) from the Complainant’s online store and they all have the same layout. In these circumstances, the Panel is persuaded that these 32 disputed domain names or the associated websites are under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes regarding these 32 disputed domain names would be unfair or inequitable to any Party.

However, the Panel does not find a sufficient basis in the record to infer that the disputed domain names <discountkappa.com> and <kappaclearance.com> are under common control with the other 32. It is true that these two disputed domain names incorporate the same trademark as the others plus another word, but they were registered over two years earlier, by registrants in China, and they do not follow the pattern of including a geographical term. While they too resolve to online stores that display product images from the Complainant’s online store, the site associated with <discountkappa.com> displays the Complainant’s marks differently, and the site associated with <kappaclearance.com> sells handbags as well as clothing. Each is also registered with a different Registrar from those with which the other disputed domain names are registered. In these circumstances, the Panel is not satisfied that, on the balance of probabilities, these two disputed domain names are under common control with the other 32.

Accordingly, the Panel will decide the complaint regarding the disputed domain names <buykappacanada.com>, <kappa-argentina.com>, <kappaaustore.com>, <kappa-australia.com>, <kappabutikdk.com>, <kappaca.com>, <kappa-chile.com>, <kappa-colombia.com>, <kappadk.com>, <kappaenmexico.com>, <kappa-espana.com>, <kappa-germany.com>, <kappagreece.com>, <kappaireland.com>, <kappa-italia.com>, <kappamagazatr.com>, <kappa-malaysia.com>, <kappa-nederland.com>, <kappanederland.com>, <kappa-nz.com>, <kappaoutletuk.com>, <kappa-philippines.com>, <kapparomania.com>, <kappaschweiz.com>, <kappa-singapore.com>, <kappa-southafrica.com>, <kappasuomi.com>, <kappasverige.com>, <kappaukshop.com>, <kappausastore.com>, <kappausstore.com>, and <tiendakappaespana.com> (referred to below as the “disputed domain names”) registered in the names of Web Commerce Communications Limited, Annett Schmid, Andre Mey, Karol Vog, Uta Freit, Jani Fassbin, Andreas Rothstein, Daniel Kalb, Christ Bieb, David Klein, Annett Mehler, Dieter Theissen, Julia Eisenhauer, Jens Scholz, Jens Schulze, Frank Sommer, Tom Nadel, Patrick Baier, Anja Abend and Markus Wolf (separately and collectively referred to below as the “Respondent”).

On the other hand, the Panel declines to consolidate the disputes regarding the domain names <discountkappa.com> and <kappaclearance.com>. This decision is made without prejudice to the possibility of refiling complaints regarding these two domain names.

B. Language of the Proceeding

The Registrar confirmed that the Registration Agreements for the 32 remaining disputed domain names are all in English.¹ The Panel notes that the Complaint and amended Complaint were submitted in English, the websites associated with the disputed domain names are in English, and the Respondent did not file a response. Therefore, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

(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.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the KAPPA mark.

The disputed domain names wholly incorporate the KAPPA mark, in all but two cases as their respective initial elements. The disputed domain names all incorporate a country name (either in English or a corresponding national language) or an abbreviation of a country name (i.e., “au”, “ca”, “dk”, “nz”, “tr”, “uk”, “us” or “usa”), in some cases separated by a hyphen. Some disputed domain names include a dictionary word (i.e., “buy”, “outlet”, “shop”, “store”, “butik” meaning “shop” in Danish, “magaza” meaning “shop” in Turkish, “tienda” meaning “shop” in Spanish or “en” meaning “in” in Spanish). Given that the KAPPA mark remains clearly recognizable in all the disputed domain names, the addition of these country names, abbreviations and words does not prevent a finding of confusing similarity with the Complainant’s mark. See WIPO Overview 3.0, section 1.8.

All the disputed domain names also include a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With respect to the first and third circumstance set out above, the disputed domain names all resolve to websites offering for sale what is purported to be the Complainant’s KAPPA brand clothing. The Complainant submits that it has never authorized any party to register any domain names including the KAPPA trademark. The websites do not display any disclaimer clarifying that there is no relationship between the Respondent and the Complainant. On the contrary, the websites prominently display the Complainant’s mark and logo and give the impression that they are operated by, or affiliated with, the Complainant. Regardless of whether the clothing offered for sale is counterfeit or not, these facts show that the Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Further, given that the websites offer goods for sale, this is not a legitimate noncommercial or fair use of the disputed domain names within the terms of paragraph 4(c)(iii) of the Policy either.

With respect to the second circumstance set out above, none of the registrant names resembles any of the disputed domain names. There is no evidence that the Respondent has been commonly known by any of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut the Complainant’s prima facie case because it did not reply to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”

As regards registration, the disputed domain names were registered in 2021, many years after the Complainant obtained its trademark registration for KAPPA. The disputed domain names all wholly incorporate the KAPPA mark and combine it with country names and abbreviations and, in some cases, another word. The disputed domain names all resolve to websites that display the KAPPA mark and product images from the Complainant’s website and offer for sale what is purported to be the Complainant’s KAPPA brand clothing. In view of these circumstances, the Panel finds that the Respondent targeted the Complainant’s KAPPA mark when it registered the disputed domain names.

As regards use, the disputed domain names all resolve to websites that display the KAPPA mark and offer for sale what is purported to be the Complainant’s KAPPA brand clothing. Given the Panel’s findings in Section 6.2B supra, the Panel finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s KAPPA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the clothing offered for sale on those websites, within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules:

(i) the Panel orders that the disputed domain names <buykappacanada.com>, <kappa-argentina.com>, <kappaaustore.com>, <kappa-australia.com>, <kappabutikdk.com>, <kappaca.com>, <kappa-chile.com>, <kappa-colombia.com>, <kappadk.com>, <kappaenmexico.com>, <kappa-espana.com>, <kappa-germany.com>, <kappagreece.com>, <kappaireland.com>, <kappa-italia.com>, <kappamagazatr.com>, <kappa-malaysia.com>, <kappa-nederland.com>, <kappanederland.com>, <kappa-nz.com>, <kappaoutletuk.com>, <kappa-philippines.com>, <kapparomania.com>, <kappaschweiz.com>, <kappa-singapore.com>, <kappa-southafrica.com>, <kappasuomi.com>, <kappasverige.com>, <kappaukshop.com>, <kappausastore.com>, <kappausstore.com>, and <tiendakappaespana.com> be transferred to the Complainant; and

(ii) the Complaint is denied as regards the domain names <discountkappa.com>, and <kappaclearance.com>.

Matthew Kennedy
Sole Panelist
Date: March 14, 2022

¹ The Registrar confirmed that the Registration Agreement for the domain name <kappaclearance.com> is in Chinese, but the Panel declines to decide the complaint regarding that domain name for the reasons given in Section 6.1A supra.