WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kuoni Reisen Holding AG v. Beroca Holdings B.V.I. Limited
Case No. D2007-0216
1. The Parties
The Complainant is Kuoni Reisen Holding AG, of Zurich, Switzerland, represented by E. Blum & Co., Switzerland.
The Respondent is Beroca Holdings B.V.I. Limited, of Mayfair, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <kuoni.mobi> is registered with EuroDNS S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2007. On February 16, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the domain name at issue. On February 19, 2007, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant subsequently rectified the deficiencies by providing inter alia electronic copies of the Complaint on February 21, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2007. The Complainant by email on March 12, 2007, advised the Center of a one-word amendment to the Complaint arising from a clerical error, which was acknowledged by the Center on that date and copied to the Respondent for information.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on April 3, 2007. 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
A. The Complainant
The Complainant is internationally active and well-established in the field of travel/vacation, and operates various travel agencies throughout the United Kingdom, where the Respondent is located. It received a number of awards including the World Travel Award and the British Travel Award.
The Complainant is the owner of a large number of trademark registrations for the word KUONI in many countries all over the world; in particular it owns the following registrations for a large number of goods and services in classes 16, 39 and 42 of the International Classification:
- UK trademark registration No. 1278324 KUONI, dated October 7, 1988;
- Community Trade Mark registration No. 000152660 KOUNI, dated January 5, 1999.
On November 14, 2006, the Complainant sent a letter to the Registrant claiming the right to the domain name <kuoni.mobi>.
These facts are documented by annexes to the Complaint.
B. The Respondent
On September 26, 2006, the domain name <kuoni.mobi> was registered in the name of Marcus Zaman, and used for a website that transfers the user immediately to the website “www.berocadns.mobi”. This website offered links to several websites including websites in the field of travel/holiday. After the Complainant had sent its letter of November 14, 2006 to Mr. Zaman, the domain name appears to have been transferred to the Respondent and the contents of the website “www.berocadns.mobi” was removed. The website now displays under the heading: “Beroca Domain Name Services” a notice “under construction”. It also invites the visitor to contact the company under the phone number or email address indicated.
These facts are documented by copies of the respective websites.
On November 29, 2006, the Respondent sent an email to the Complainant, offering to sell the domain name <kuoni.mobi> to the Complainant for the amount of £5,000. This email was resent to the Complainant on January 10, 2007.
5. Parties’ Contentions
The Complainant submits that (A) the domain name <kuoni.mobi> is identical to its trademark KUONI in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit a Response. It has therefore not contested the contentions made by the Complainant, and the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <kuoni.mobi> is identical to the trademark KUONI in which the Complainant has rights (the gTLD .mobi cannot be taken into consideration when judging identity or confusing similarity).
B. Rights or Legitimate Interests
KUONI is not a descriptive term, in which the Respondent might have a legitimate user-interest. It is known as the trademark of the Complainant, who is a well-established company in the field of travel and vacation. The Respondent has no apparent connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain name.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has submitted no evidence of use of the domain name for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain name is linked to the website “www.berocadns.mobi”, on which the company “Beroca DNS”, a company bearing the name of the Respondent, informs the visitor that it is under construction. The website invites users to contact the company under a phone number which is identical to the phone number of the Respondent or under the email address […]@berocadns.mobi, which again is identical to the email address of the Respondent. Consequently the domain name <kuoni.mobi> leads users to the Respondent’s own website. Such use of the domain name, linking it to the Respondent’s website cannot in the circumstances be considered to be a bona fide offering of goods or services. However, at the same time the use of the domain name <kuoni.mobi> cannot be considered to be non-commercial. Even if the website of the Respondent is still under construction, the visitor of the website is invited to contact the Respondent, presumably in order to profit from its services, providing the Respondent’s phone number and with its email address. Finally, the Respondent apparently does not promote its own commercial activities under the domain name <kuoni.mobi>, and has not been able to become commonly known by that name.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example the Policy mentions in paragraph 4(b)(i) registration or acquisition of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the mark or to a competitor for valuable consideration in excess of his documented out-of pocket costs directly related to the domain name. A strong indication of this intent may be provided where a Respondent has attempted to sell the domain name for a sum in excess of the Respondent’s out of pocket expenses in registering or acquiring the domain name. The Panelist is satisfied that this is the case in the present circumstances.
As evidenced by the Complainant with a copy of an email that the Respondent sent to the Complainant on November 26, 2007, the Respondent offered to transfer the domain name <kuoni.mobi> for the amount of £5000 (the Complainant did not receive the Email dated November 26, 2006; however the Respondent resent it to the Complainant on January 16, 2007, as evidenced by copy of the Email). There can be no doubt that this amount is clearly in excess of the Respondent’s out-of-pocket expenses directly related to the domain name.
This conclusion is not in the present case altered by the fact that the Respondent is not the original registrant of the domain name. The Panel notes that the Respondent replied on November 26, 2006, with its offer to transfer the domain name to a letter addressed to the former Registrant on November 14, 2006. The phone number of the former Registrant is also identical to that of the Respondent. The former Registrant therefore apparently acted on behalf of the Respondent, and, for the purpose of the finding of bad faith of the Respondent, the former Registrant and the Respondent can be considered to be the same person. Also, according to paragraph 4(b) (i), evidence of registration and use of bad faith are circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling it to the Complainant.
Paragraph 4(b)(iv) of the Policy lists as a further typical situation of evidence of registration and use in bad faith that, by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
The Complainant has submitted facts and evidence that the Respondent has also fulfilled the conditions set out in paragraph 4(b)(iv). There can be little doubt in the circumstances that the former Registrant and the Respondent knew the Complainant’s well-known trademark KUONI, when respectively registering and acquiring the disputed domain name. The Panel notes that the term “kuomi” is not a common one, and that the Respondent has provided no compelling explanation for its registration as a domain name. The fact that the term is “kuoni” is also identical to the Complainant’s mark does not strike the Panel as likely to have been mere coincidence.
Internet users, when typing the Respondent’s domain name that is identical to the Complainant’s trademark and trade name, will expect to arrive at a website of the Complainant or at least a website somehow related to the Complainant. Therefore, by using the domain name for a website of the Respondent, that provided sponsored links to other websites, the former Registrant attempted to attract Internet users for commercial gain to this website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Even where Internet users realized when they viewed the Registrant’s web page that it is not connected with the Complainant, the former Registrant and the Respondent as owner of the website may still have profited from their initial confusion, since they may have been tempted to click on the sponsored links which, amongst others, referred the user to website of competitors of the Complainant.
Such exploitation of trademarks to obtain click-through commissions from the diversion of internet users has been considered in many decisions to be a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy (see L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 with references).
In conclusion the Panel believes that the former Registrant was in all likelihood pursuing an activity considered to be bad faith under the Policy. Also the Respondent in all likelihood profited from this activity since the domain name, from the very beginning, has transferred and still transfers visitors to its website “www.berocadns.mobi”. The fact that the Respondent has removed this content from its website and now informs the visitor that the site is under construction does not change the conclusion that the Respondent acts in bad faith. Additionally to the information that the site is under construction the Respondent also displays its phone number and email address and invites the visitor of the website to contact it for any service in the field of domain name services he/she may be interested in. Consequently, the Respondent still uses the domain name <kuoni.mobi> in order to attract Internet users for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
In conclusion the Panel finds that the disputed domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kuoni.mobi> be transferred to the Complainant.
Gerd F. Kunze
Dated: April 17, 2007