The Complainant is Kiko S.p.A. of Bergamo, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Li Si, Chen Hu of Jinan, Shandong, China.
The disputed domain name <kikochina.cc> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2017, 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 January 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 2, 2018. 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 was founded in 1997 in Italy and has expanded over the past 21 years worldwide. The Complainant has over than 600 points of sale in 8 countries in Europe (Italy, Spain, France, Portugal, Germany, the United Kingdom of Great Britain and Northern Ireland, Austria, and Switzerland) and has a presence in 34 other nations, including a recently-opened store in the United States.
The Complainant owns numerous trademark registrations in many jurisdictions throughout the world, including in China, where the Respondent resides. The Complainant's trademarks cover a wide variety of goods, including, but not limited to, cosmetics, soaps, perfumery, essential oils, hair lotions, dentifrices, and make-up (the "KIKO Mark"). The KIKO Mark includes International Registration No. 733.058, registered on March 24, 2000. The Complainant owns the domain name <kikocosmetics.com>, which is the Complainant's official domain name that resolves to its online store and markets and sells goods bearing the KIKO Mark.
The Respondent, an individual resident in China, registered the Disputed Domain Name on December 12, 2016. The Disputed Domain Name resolves to a website that is an online store that displays, advertises and seemingly sells KIKO cosmetics.
Prior to the commencement of this proceeding, the Complainant's counsel sent a cease and desist letter to the Respondent, but received no answer.
- The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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 was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the KIKO Mark based on longstanding use as well as its trademark registrations for the KIKO Mark in China and in other jurisdictions. The Disputed Domain Name consists of the KIKO Mark in its entirety, followed by the geographical term "china" and the country code Top-Level Domain ("ccTLD") "cc". The addition of the term "china" does nothing to minimize the risk of confusion. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element".
Further, it is permissible for the Panel to ignore the ccTLD, as it is viewed as a standard registration requirement. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a geographical term. See Compagnie Générale des Etablissements Michelin v. Xujing, WIPO Case No. DCC2017-0002.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its KIKO Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's KIKO Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant's KIKO Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant's website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website for commercial gain demonstrates registration and use in bad faith. In addition, the online store at the Disputed Domain Name is confusingly similar to the Complainant's genuine online retail store at "www.kikocosmetics.com". Thus, the Respondent's attempt to use the significant goodwill in the KIKO Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website which appears to be the Complainant's official site allegedly advertising and seemingly selling genuine KIKO goods, demonstrates the Respondent's bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondent's website is sponsored, affiliated with or endorsed by the Complainant.
Second, the Panel finds that the Respondent had actual knowledge of the Complainant's rights in its widely-used KIKO Mark when registering the Disputed Domain Name. The Respondent's actual knowledge of the Complainant's rights can be inferred from the Respondent's use of the KIKO Mark to create a website that displays and sells goods to convince customers that the website is affiliated with the genuine KIKO brand.
Third, the Respondent's registration and use of the Disputed Domain Name that is confusingly similar to the Complainant's well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Finally, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent has registered 506 domain names, which pattern of cybersquatting is strong evidence of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <kikochina.cc>, be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: February 10, 2018