WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KKCG SE v. MustNeed.com
Case No. D2008-0614
1. The Parties
The Complainant is KKCG SE, Limassol, Cyprus, represented by Tomáš Zacha, Czech Republic.
The Respondent is MustNeed.com, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed Domain Name <atlantik.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 22, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 22, 2008, 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”), 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 May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 3, 2008. 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
According to the Complaint and the English-language pages of the Complainant’s principal website at “www.kkcg.cz/en-kkcg.aspx”, KKCG is a multinational investment group centered in the Czech Republic. The group has some 6,500 employees in more than 20 companies established in the Czech Republic and eight other countries: The Netherlands, The United Kingdom of Great Britain and Northern Ireland, Germany, Russian Federation, Ukraine, Slovakia, Romania, Morocco, Yemen, Pakistan, Canada, and the United States of America. The group is engaged in oil and gas exploration and production, machinery and metallurgy, securities trading, financial asset management and consulting, and business investments and transactions in tourism, real property, media, and other sectors. The Complainant is the parent company of the group, established in the Republic of Cyprus as a European Public Limited Liability Company on May 3, 2007.
The KKCG Finance division of the Complainant’s group includes two Czech companies that use the name “Atlantik”: Atlantik Finanční Trhy, A.S. (rendered as “Atlantik Financial Trade” or “Atlantik FT” on English-language website pages) and Atlantik Asset Management Investiční Společnost, A.S. (“Atlantik Asset Management” or “Atlantik AM”). According to the Complainant’s website, Atlantik FT was established in 1993 and is the largest non-banking securities trader in the Czech Republic; it also acts as a securities trading intermediary in 105 countries. Atlantik AM, established in 1995, is advertised as the second-largest non-banking asset manager in the Czech Republic.
The Complainant owns a Czech national trademark for the word ATLANTIK, registration number 287551, registered February 22, 2007. The Complainant also has pending applications for the trademarks ATLANTIK FT and ATLANTIK AM before the Industrial Property Office of the Czech Republic and the Office of Harmonization for the Internal Market.
The Domain Name was registered on June 28, 2001 in the name of “MustNeed.com” in Taiwan, Province of China (there is no evidence that this is a legal entity) and has been renewed through June 28, 2008 with the Registrar, Moniker.com, which is located in the United States of America according to the list of ICANN-accredited registrars found at “www.icann.org/registrars/accredited-list.html”. The Registrar’s website at “www.moniker.com” indicates that the Registrar is a subsidiary of Oversee.net, an online advertising company headquartered in Los Angeles, California, United States of America (see “www.oversee.net/about.php”).
The Domain Name resolves to an English-language domain parking landing page with category links to “sponsored results” that appear to be pay-per-click (PPC) advertising links. The landing page, which also includes a search box, is headed as follows:
This Domain Might Be For Sale!!! Please contact us for more information.”
The category links on the landing page concern “Radio Stations”, “Christian Radio Stations”, and radio stations in many individual states or regions of the United States of America. Selecting one of these categories leads the website visitor to pages with sponsored links for individual radio stations, Christian ministries, Internet and satellite media services, music download websites, and general online retail shopping websites such as “www.shoplocal.com”. Each subsequent page features additional “Related Searches” category links for “radio stations” in the United States of America, Indonesia, Spain, England, Cuba, and the Dominican Republic, although those links in turn produce pages with a wide variety of third-party advertising.
The landing page associated with the Domain Name operates in a manner consistent with domain parking used for third-party advertising, as described by the Registrar’s affiliate (see “www.oversee.net/directnav.php”):
“Domain landing pages serve as a medium to draw attention to goods and services. Publishers work with domain monetization services (like us) to monetize the type-in (or direct navigation) traffic visiting undeveloped domain names. When a visitor reaches a given domain, it redirects to a landing page featuring text advertisements relevant to the visitor, benefiting publisher, advertiser and consumer.”
It is not evident why the advertising network’s search engine determined that the Domain Name would be relevant to persons seeking information about radio stations in various states and countries.
Apart from what may be inferred from this use of the Domain Name, nothing is known about the Respondent, which has an English name and a Taiwan, Province of China postal address. As discussed further below, the Respondent has been named in numerous UDRP complaints.
A representative of the Complainant made an email inquiry on January 30, 2008, through the website associated with the Domain Name, concerning the possibility of purchasing the Domain Name. A person named “Lee” responded on February 5, 2008, asking for a “realistic offer” commensurate with the potential value of the Domain Name. According to the Complainant, there have been no further communications between the parties.
5. Parties’ Contentions
The Complainant observes that the Domain Name is identical to its ATLANTIK mark and argues that there is no evidence that the Respondent legitimately uses that mark. The Complainant asserts that the Respondent registered and used the Domain Name in bad faith by (a) attempting to sell it for an excessive price and (b) using it to mislead Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under 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.”
A. Identical or Confusingly Similar
The Complainant has rights under the Policy in its registered ATLANTIK mark. The “.com” top-level domain name is not a distinctive part of the Domain Name for trademark or UDRP purposes. Therefore, the Domain Name is considered identical to the Complainant’s registered ATLANTIK mark for purposes of the first element of the Complaint.
B. Rights or Legitimate Interests
It is undisputed that the Respondent was not authorized to use the Complainant’s mark. This establishes the Complainant’s prima facie case on this element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See, e.g., Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response in this proceeding and has not otherwise indicated its rights or legitimate interests in the Domain Name. There is no evidence from a perusal of the website associated with the Domain Name that the Respondent is known by that name or has made legitimate noncommercial use of the Domain Name. Instead, it appears that the Domain Name has been used commercially for a landing page with automatically generated PPC advertising links to unrelated third parties. These are not obviously related to any generic use of the term “atlantik”, even as an alternate spelling of “Atlantic” referring to the ocean or global region. Thus, this does not appear to be a legitimate “use of a generic domain name to provide information about the genus” (Admiral Insurance Services, supra).
Because of the Panel’s conclusions, below, concerning the third element of the Complaint (bad faith), it is unnecessary to consider in the abstract whether the Respondent could nevertheless have a legitimate interest in parking the Domain Name, offering it for sale, and using it in the interim for a landing page with third-party advertising that is apparently unrelated to the sense of the Domain Name.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad-faith registration and use, including the following:
“(i) circumstances indicating that you have registered or you have acquired 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or . . .
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant refers to (a) the announcement on the website associated with the Domain Name that the Domain Name “might be for sale” and (b) the email exchange with the Respondent. The Complainant infers that the Respondent “is seeking consideration exceeding its expenses related to the disputed domain name registration.” These facts alone, however, are insufficient to establish bad faith under paragraph 4(b)(i). No price is mentioned on the website, although it may be assumed that the Respondent hoped to profit from any sale. There is no evidence that the Respondent ever knowingly sought to sell the Domain Name to the Complainant or a competitor of the Complainant, much less that this was the “primary” purpose for registering the Domain Name. The email from the Complainant’s representative did not identify the Complainant or its trademark rights, and the Respondent did not name a price in replying to the email. Thus, the record simply does not contain sufficient evidence to establish the elements of paragraph 4(b)(i).
The Complainant alleges further that the Respondent “is using the domain name to misleadingly divert consumers to a generic, pay-per-click website with indexed links for commercial gain”, an apparent reference to the example of bad faith articulated in the Policy, paragraph 4(b)(iv).
To establish bad faith, however, there must be sufficient evidence from which to infer that the Respondent was aware of the Complainant’s mark and sought to exploit it, both at the time of registration and subsequently. See, e.g., Kooks Custom Headers, Inc. v. Global DNS, LLC, WIPO Case No. D2008-0233 (and citations therein). Such evidence is lacking here.
The Domain Name was registered in June 2001 by a party giving a post-box address in Taiwan, Province of China and using a Registrar and an affiliated domain parking and online advertising service provider located in the United States of America. The Complaint and the Complainant’s website indicate that the Complainant’s ATLANTIK marks may be well known in the Czech Republic today. But they do not establish the likelihood that a party in Taiwan, Province of China or in the United States of America would have been aware of the (unregistered) marks ATLANTIK, ATLANTIK FT, or ATLANTIK AM in 2001. The Complainant obtained trademark registration for the ATLANTIK mark in the Czech Republic only in February 2007, some five and a half years after the Domain Name was registered, and the ATLANTIK FT and ATLANTIK AM marks remain the subject of pending trademark applications.
The Complainant, which is the Cyprus parent company of a corporate group centered in the Czech Republic, does not advertise on its website or indicate in the Complaint any establishment or regular operations in Taiwan, Province of China even today. According to the Complainant’s website, the group currently has a branch and some undisclosed level of operations in the United States of America, but the Complaint does not indicate whether these operations existed in June 2001, and whether they used the ATLANTIK marks.
The names “Atlantik FT” and “Atlantik AM” currently appear on at least one page of both the Czech and English versions of the Complainant’s website, without any visible indication of trademark claims. The word “Atlantik” is not featured on the website without these additional abbreviations. Apart from this equivocal use of the claimed marks on the Complainant’s current website, there is no evidence before the Panel concerning the Complainant’s advertising or other use of the recently registered ATLANTIK mark, or of the unregistered ATLANTIK FT and ATLANTIK AM marks, either currently or in 2001.
Thus, it is improbable that the Domain Name was registered in contemplation of the Complainant’s marks, and nothing on the landing page associated with the Domain Name today (or on earlier versions stored by the Internet Archive at “www.archive.org”) suggests an awareness of the Complainant or its marks.
The Complainant cites “at least five other UDRP actions” naming a respondent with the same name as the current Respondent and similarly located in Taipei, Taiwan, Province of China. In each of these proceedings, no response was submitted and the panel ordered transfer of the disputed domain names. In Clinquest, Inc. v. MustNeed.com, WIPO Case No. D2006-1536, for example, the panel concluded as follows:
“There is evidence adduced before the Panel which demonstrates that the Respondent consistently engages in a pattern of behavior namely, registering domain names which [are] comprised of others’ trademarks, uses these domain names to direct Internet users to a pay-per-click website with indexed links.”
It appears likely that the Respondent in this proceeding is the same party and makes a regular practice of registering, parking, and selling domain names, at least some of which mimic third party trademarks. In a proper case, such a pattern of trademark abuse would lend support to an inference of bad faith registration and use, for purposes of the third element of a UDRP complaint.
In the current proceeding, by contrast, the record does not establish the probability that the Respondent contemplated the distant Complainant’s then-unregistered marks when registering the Domain Name in 2001. The Panel concludes, therefore, that the Complainant has not established the element of bad faith in this Complaint.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: June 17, 2008