The Complainant is KONE Corporation of Helsinki, Finland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Thomas Hupperich of Bornheim, Germany.
The disputed domain name <kone-elevator.com> is registered with 1&1 Internet AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to 1&1 Internet AG. a request for registrar verification in connection with the disputed domain name. On February 23, 2010, 1&1 Internet AG 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 31, 2010.
The Center appointed Daniel Kraus as the sole panelist in this matter on April 13, 2010. 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 in the present administrative proceeding is KONE Corporation, a limited company incorporated in Finland, with its principal place of business in Helsinki, Finland. The company is active in the field of elevators and escalators and was founded in 1910. The Complainant operates around 800 service centers in approximately 50 countries. In 2009, it had annual net sales of EURO 4,7 billion and approximately 34,000 employees.
The Complainant uses the trade name Kone oyj, a parallel trade name Kone Corporation and an auxiliary trade name Kone Engineering, and owns the trademark KONE as a word and device mark in several classes in more than 120 countries, including a community trademark. The latter was registered on February 16, 1999, for classes 7, 9 and 37, but in some countries the trademark is also for other classes such as 6, 10, 19 or 20.
The Complainant owns and operates a website ”www.kone-evelvators.com”. It also owns domain name registrations and uses numerous domain names under more than 50 ccTLDs and numerous gTLDs, such as <kone.com>, <koneelevators.com>, <kone.eu> and <kone.fi>.
It is to be mentioned here that all these facts have not been contested by the Respondent, who has not filed a Response.
The Complainant claims that the disputed domain name is identical or confusingly similar to its trademark KONE. The dominant part of the domain name <kone-elevator.com> comprises the word “kone”, which is identical to the registered trademark KONE, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. The Complainant further asserts that the disputed domain name is confusingly similar to its registered trademark KONE, the addition of the suffix “elevator” not being relevant and not having any impact on the overall impression of the dominant part of the disputed domain name, KONE, which is instantly recognizable as a trademark. As the Complainant's core business is elevators, the suffix “elevator” is fitted to strengthen the impression that the domain name belongs to, or is affiliated with the Complainant.
The Complainant secondly claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark KONE. Research undertaken by the Complainant has not shown that the Respondent had any registered trademarks or trade names corresponding to the domain names. It is highly unlikely that the Respondent would not have known of the Complainant legal rights in the name KONE at the time of registration, on August 16, 2005.
Finally the Complainant contends that the disputed domain name was registered and is being used in bad faith. In particular, the trademark KONE, in respect of elevators, is a well established trademark with a substantial and well established reputation throughout the world, which the Complainant states has been used substantially and continuously for one hundred years. Said value and goodwill of the trademark KONE could not have been unknown to the Respondent. In addition, the disputed domain name is connected to a website containing sponsored links. The Complainant hence asserts that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website.
The Respondent did not reply to the Complainant's contentions.
According to paragraphs 11(a) and (b)of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding (Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251; Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668).
However, in certain situations, where the Respondent can clearly understand the language of the Complaint, and the Complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the Complaint, even if it is different to the language of the Registration Agreement (L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, the Complainant filed the Complaint in English, informing the Center that to the best of its knowledge, the language of the Registration Agreement was in English. The Complainant attached a copy of what it considers to be the registration agreement as annex 3 to the Complaint. However, according to information the Center received from the registrar, the language of the Registration agreement in the present case is German. Accordingly, the Center requested on March 4, 2010 the Complainant to provide either satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings were foreseen to be in English or to submit the Complaint translated in to German or, finally, to submit a justified request for English to be the language of the administrative proceedings, including arguments and supporting material. On March 5, 2010 the Complainant filed a language of proceedings request, asking for the language of proceedings be English. Although the Respondent as well as the registrar are located in Germany, the Complainant argued that the use of the term “elevator” by the Respondent in its domain name shows that the latter is familiar with English. The Complainant added that it would be cumbersome and to the Complainant's disadvantage to be forced to translate the entire Complaint into German. Adding to this the fact that the Respondent had ignored the Complainant's attempts to contact it, the Complainant requested that the proceedings be held in English or, if the Panel was not to agree to hold the entire proceedings in English, that the Complainant be allowed to submit its documentation in English while the Respondent could still file in German.
In the present case, the Panel is of the opinion that the reasoning applied in the L'Oreal and the Deutsche Messe cases, supra, apply. Taking all of the circumstances into account, the Panel finds it hard to believe that the Respondent does not understand English sufficiently in order to understand the Complaint. Additionally, it would be cumbersome and time-consuming for the Complainant to be forced to translate the entire Complaint into English. The situation might have been different if the Respondent had written to the Center, mentioning that it had difficulties with the language and that it intended to file a Response. The situation would also have been different if the language of the proceedings would not have been in English, but another, less widely known language. Finally, the Panel notes that although al lof the Center's doucments and communications have been transmitted to the parties in both English and German, the Respondent has not elected to reply. For all these reasons and having in mind paragraph 10(c) of the Rules according to which “the panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel decides that the language of proceeding will be English.
In the light of the evidence provided by the Complainant, trademark rights in KONE belong to the Complainant. The Panel also accepts the Complainant's arguments that the trademark KONE enjoys a very good worldwide reputation. The difference between the trademark KONE and the Respondent's domain name is the addition of the suffix “elevator” to the trademark. This suffix is clearly a generic and purely descriptive term. The addition of said suffix is not sufficient to consider the disputed domain name to be sufficiently distinct from the Complainant's trademark. It is hence confusingly similar to the Complainant's word trademark KONE. (see, e.g., Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522; Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488).
In the present case, the Panel hence concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed circumstances brought forward by the Complainant:
- The Respondent has no registered trademarks or trade names corresponding to the disputed domain name;
- The Respondent has been given no license or authorization of any kind by the Complainant to use the trademark KONE;
- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent rather intentionally chose a domain name based on a registered trademark in order to generate traffic to a website containing sponsored links. The Respondent hence uses the KONE trademark in order to mislead users to commercial websites, there by free-riding on the trademark KONE. Previous UDRP panels have found that such behavior may exclude the creation of rights or legitimate interests, in particular in cases where the user of the domain name at issue would not have chosen such a name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. 2001-0067).
The proof that the disputed domain name was registered and used in bad faith may be based, in particular but without limitation, on circumstances described in paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy. In the present case, the Panel finds the following:
- The registration by the Respondent of the disputed domain name <kone-elevator.com>, which includes the Complainant's trademark in full and differs from a website registered by the Complainant only by the omission of the letter “s” of the word “elevators”, clearly shows that it does not result from a coincidence. On the contrary, it clearly shows an intention to free ride on an existing domain name based on a reputed trademark;
- The fact that the disputed domain name is used to give access to a pay-per-click website, thereby damaging the Complainant's reputation, is constitutes use in bad faith (see, e.g., My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276).
For these reasons, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith in satisfaction of the requirements of paragraph 4(a)(iii) and 4(b) of the Policy.
For all 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 <kone-elevator.com> be transferred to the Complainant.
Dated: April 27, 2010