WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
K&N ENGINEERING, INC. v. KINNOR SERVICES aka PHENOMENA LTD.
Case No. D2000-1077
1. The Parties
The Complainant in this proceeding is K&N Engineering Inc. a corporation residing in Riverside, California, United States of America. The Respondent is Kinnor Services aka Phenomena Ltd. a corporation residing in Culcheth, Warrington Cheshire, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <knairfilters.com> (the "Domain Name"), registered with Network Solutions, Inc. ("NSI") based in the United States of America.
3. Procedural History
A Complaint consisting of a signed original together with four copies forwarded by express courier was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 16, 2000, and an electronic version was sent via email on August 28, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 28, 2000.
On August 28, 2000 a Request for Registrar Verification was transmitted to the registrar, NSI requesting it to: (1) confirm that the domain name at issue is registered with NSI (2) confirm that the person identified as the respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), email address(es)) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) provide a copy of the registration agreement that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the agreement; (5) provide a copy of the domain name dispute policy (if different from ICANN's Uniform Domain Name Dispute Resolution Policy) that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the policy.
On August 31, 2000, NSI confirmed by reply email that the Domain Name is registered with NSI and that Respondent was the current registrant of the name. The registrar also forwarded the requested Whois details, as well as copies of the registration agreement. The dispute resolution policy in effect at the time of the original registration of the domain name was NSIís Service Agreement version 5.0.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on August 31, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on September 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of September 25, 2000, by which Respondent could file a Response to the Complaint. The respondent resubmitted its reply materials, on September 25, 2000, which were served on the Complainant and its counsel by e-mail, and then filed with the WIPO Centre.
On September 25, 2000, having received the Response from the Respondent, the WIPO Center proceeded to appoint the Administrative Panel. In view of the Complainantís designation of a single panelist the WIPO Center invited Gary N. Bouchard to serve as a panelist in Case No. D2000-1077, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on October 2, 2000, Gary N. Bouchardís Statement of Acceptance and Declaration of Impartiality and Independence, on October 6, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Gary N. Bouchard was formally appointed as the Sole Panelist. The Projected Decision Date was October 19, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules, and the WIPO Supplemental Rules.
4. Factual Background
The Complainant is located in the United States and manufactures and markets high performance automotive air filters and products. The Respondent is located in the United Kingdom and distributes automotive products, including those of the Complainant. The Respondent operates a web site under the Domain Name (the "Web Site"). The current managing director (the "Managing Director") of the Respondent company was formerly employed by the Complainant.
5. Partiesí Contentions
The Complainant makes the following contentions:
(i) the Domain Name used by the Respondent is confusingly similar to the Complainant's corporate identity and may lead a visitor to the Web Site to believe that he or she is visiting the Complainant's corporate web site;
(ii) the Respondent is holding itself out as owner of the Complainant's trademark by registering the Domain Name and operating the Web Site; and
(iii) the Respondent registered the Domain Name in bad faith, which assertion is based upon the following allegations:
(a) The Respondent registered the Domain Name to retaliate against the Complainant for its termination of the Managing Director's employment,
(b) The Respondent registered the Domain Name to damage the Complainant's reputation;
(c) The Respondent registered the Domain Name to block the registration of the Domain Name by the Complainant;
(d) The Respondent registered the Domain Name to attract customers to the Web Site for the purpose of marketing the Complainant's competitors' products to those customers; and/or
(e) The Respondent registered the Domain Name to disrupt the Complainant's business.
The Complainant further bases its bad faith assertion on the fact that the Respondent is located in the United Kingdom and does not actively market its wares to markets traditionally served by the .com extension.
The Respondent responds to the Complainant's contentions as follows:
(i) The Respondent is an authorized dealer of the Complainant's products, and has not held itself out as having any other relationship with the Complainant.
(ii) The Respondent denies implying or expressing ownership of the Complainant's trademark. It contends that, as a distributor of the Complainant's products, the Respondent is entitled to use the Complainant's name and logo and the Complainant's product pictures for advertising purposes. For more than four years the Respondent has operated a web site, first under the domain name "knairfilters.u-net.com" and more recently under the Domain Name. Throughout that time, the Respondent's web site has included the following statement at the top of every page: "Kinnor Services Mail Order Specialists". Since August 29, 2000, the Respondent has maintained a notice on the front page of the Web Site stating that it is not the Complainant, but an authorized dealer, and has included a link to the Complainant's web site. In addition, the Respondent states that those customers who do e-mail the Respondent under the false belief that it is the Complainant are immediately advised that the Respondent is an authorized dealer and directed to contact the Complainant.
(iii) The Respondent temporarily maintained a link on the Web Site to its other web site, "jrairfilters.com", on which it sells competitive products to those sold on the Web Site. The Respondent removed the link following discussions with a representative of the Complainant. The Respondent denies ever advertising products on the Web Site that are competitive with the Complainant's products.
(iii) The Respondent claims that it was actively encouraged to generate a web presence in the 1990s by the Complainant's European management and to sell the Complainant's products over the Internet. It contends that the Complainant was at all times aware of the content of the Respondent's web site and of its intention to register the Domain Name.
(iv) In response to the Complainant's contention that the Respondent does not market products to markets typically serviced by the .com extension, the Respondent states that it sells products globally through its web sites and has sold products to customers in fifty countries, including Canada, France, Germany, Hong Kong, Italy, Japan, Spain, Sweden, Switzerland, the UK and the US.
(vi) The Respondent states that the Managing Director was still employed by the Complainant on November 26, 1999, the date the Domain Name was registered, and that he was not notified of the termination of his employment with the Complainant until December 15, 1999. The Respondent further cites the fact that the Managing Director's employment was terminated as part of a corporate restructuring and resizing and that he was terminated along with 10 to 15 other employees of the Complainant. According to the Respondent, the Managing Director feels no animosity towards the Complainant or its management.
(vii) The Respondent denies the Complainant's contention that it intended to disrupt the Complainant's business. The Respondent states that 90% of its sales are of the Complainant's products and that it would therefore not be in the Respondent's interest to disrupt the Complainant's business.
(viii) The Respondent asserts that the Domain Name is derived from its business name and the fact that it sells air filters, and that any similarity to the Complainant's trade and business name is merely coincidental. According to the Respondent, the word "Kinnor" in the name Kinnor Services stems from the company's original location in Warrington - Kingsway North.
(ix) The Respondent feels that it has rights and legitimate interests in the Domain Name as it is using the Domain Name in connection with a bona fide offering of goods.
6. Discussion and Findings
The Complainant has asked this Panel to issue a decision that the Domain Name be transferred to the Complainant. Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") provides that, before such a decision can be issued, the Panel must be satisfied that each of the following elements exists:
(i) the Domain Name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent must have no rights or legitimate interests in respect of the Domain Name; and
(iii) the Respondent's Domain Name must be registered and used in bad faith.
Paragraph 4(c) of the Policy lists several circumstances which, if any one or more of them are proven to exist, demonstrate that the Respondent has rights or legitimate interests in the Domain Name. Subparagraph 4(c)(i) of the Policy provides that a Respondent has rights or legitimate interests in a domain name if, before receiving notice of the dispute, the Respondent used such domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods.
It seems undeniable to the Panel that the Respondent was using the Domain Name in connection with a bona fide offering of goods before it received notice of the dispute giving rise to this proceeding. The Respondent has been an authorized distributor of the Complainant's goods for many years. The Respondent is in the business of selling the Complainant's products and is using the Domain Name in connection with that business. The Respondent's use of the Internet, both under the domain name "knairfilters.u-net.com" and the Domain Name, is merely to provide, via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the Complainant. The Complainant has not provided evidence that the Respondent, by using the Internet to advertise and sell the Complainantís products, is acting in an unauthorized way or in breach of any licensing or distribution agreement between the Complainant and the Respondent. As such, the Complainant has not provided any evidence that would lead the Panel to conclude that the Respondent is not using the Domain Name in connection with a bona fide offering of goods. It is therefore the Panel's opinion that the Respondent has, at all times, used the Domain Name in connection with a bona fide offering of goods, and that the Respondent has rights and legitimate interests in the Domain Name.
As Paragraph 4(a) of the Policy requires the Complainant to prove each of the three elements listed therein, and the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel need not discuss any of the other submissions or issues raised in this proceeding.
The Panel finds that the Respondent has rights and legitimate interests in respect of the Domain Name and therefore denies the Complainant's request that the Domain Name be transferred to the Complainant.
Gary N. Bouchard
Dated: January 19, 2001