The Complainant is KONE Corporation (hereinafter the Complainant) of Helsinki, Finland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Fernando Calderon Gonzalez, of Barcelona, Spain.
The disputed domain names <ascensoreskone.com>, <kone-ascensores.com> and <kone-es.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2010. On March 5, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On March 9, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on April 18, 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 is KONE Corporation, a limited company incorporated in Finland which was founded in 1910 and has its principal place of business in Helsinki, Finland. The Complainant is one of the global leaders in the elevator and escalator industry and is the owner of trademark registrations for KONE in more than 120 countries all over the world, including the Community Trademark KONE, No. 172239, registered on February 16, 1999 in classes 7, 9 and 37.
The Complainant is furthermore the registrant of a number of Domain Names consisting in or including the sign KONE, such as < kone.com> registered on November 12, 1990 and <kone.es> registered on September 5, 2003.
The Respondent registered <ascensoreskone.com> and <kone-ascensores.com> on July 10, 2009, while <kone-es.com> was registered on June 30, 2009.
The Complainant points out that, in view of the extensive and long-term use in connection with the products and services offered by KONE Corporation since 1910, the trademark KONE has reached good reputation and international recognition in the elevator and escalator industry.
The Complainant contends that Domain Names <ascensoreskone.com>, <kone-ascensores.com> and <kone-es.com> are confusingly similar to trademarks and domain names in which Complainant has rights as they reproduce the well-known trademark KONE in its entirety.
The Complainant highlights that the addition of the terms “ascensores” and “es” are not relevant and do not have “any impact on the overall impression of the dominant part of the name”, which is constituted by the trademark KONE. Moreover, the Complainant highlights that the term “ascensores”, which means elevators in Spanish, and the addition of the suffix “es”, are “fitted to strengthen the impression that the domain names belong to or are affiliated with Complainant”.
The Complainant also states that, by using the trademark KONE as relevant part of the Domain Names, the Respondent is exploiting the goodwill of the trademark, which may cause dilution and damage for the Complainant's trademark.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that, upon information and belief, the Respondent is not the owner of registered trademarks or trade names corresponding to the Domain Names, nor has the Respondent been using KONE in any other way that would give any legitimate interests in the name. The Complainant underlines that that the Respondent has not received any license or authorization of any other kind from the Complainant to use the trademark KONE and that the Respondent is not using the name “Kone” as a company name and has no legal rights in this name.
The Complainant highlights that the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, but has intentionally registered the Domain Names in order to redirect internet users to the web site “www.kony.es” which promotes the activity of a competitor, therefore profiting of the fame of the trademark KONE to mislead Internet users to a commercial web site and causing tarnishment of the trademark KONE.
The Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent has no rights or legitimate interest in respect of the Domain Names.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, in view of the continuous use for 100 years in Europe and in many other countries, the trademark KONE has reached a “substantial and widespread reputation throughout the whole Community and throughout the world”. Therefore, according to the Complainant, the considerable value and goodwill of the trademark KONE could not have been unknown to the Respondent at the time the Domain Names were registered.
As a circumstance evidencing bad faith in the use of the Domain Name, the Complainant highlights that the Domain Names are currently pointing to the website “www.kony.es”, which is the home website of the company KONY Ascensores SL. The Complainant highlights that, consequently, the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a commercial website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. The Complainant also states that, in light of the fact that the Domain Names are pointing to the web site of a competitor of the Complainant, the Domain Names have been registered primarily for the purpose of disrupting the business of a competitor.
As a further circumstance evidencing the Respondent's bad faith, the Complainant informs the Panel that a cease and desist letter and a subsequent reminder were addressed to the Respondent by the Complainant, but the Respondent did not reply to both communications.
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of, inter alia, the Community Trademark KONE, No. 172239, registered on February 16, 1999 in classes 7, 9 and 37 and of other valid trademark registrations, including in the countries of the Respondent.
The Panel finds that the Domain Names are confusingly similar to the trademarks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.
Therefore, the mere addition of the word “ascensores”, of the suffix “es” and of the hyphen “-” does not exclude the likelihood of confusion between the Domain Names and the Complainant's trademark.
It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature. See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
More in particular, the word “ascensores”, which means “elevators” in Spanish, is descriptive of the Complainant's business; the Panel thus finds, along the lines of the interpretation adopted in all the prior decisions mentioned above, that the use of this descriptive term should be regarded as likely to increase the likelihood of confusion in the context of elevator and escalator industry. The use of these terms along with the trademark KONE is in fact apt to induce Internet users to believe that the web sites corresponding to the Domain Names are somehow linked to, or approved by, the Complainant.
The Panel concurs with the views expressed in Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227 where the panel found that “the Domain Name <riverbellecasiino.com> is almost identical, and is confusingly similar to Complainant's mark, RIVER BELLE, adding only a misspelling of the generic term “casino,” which describes Complainant's services. The result is a Domain Name that is distinctly suggestive of Complainant's “casino” services, linked with Complainant's RIVER BELLE mark.”
In view of the above, the Panel finds that the Complainant has proven that the Domain Names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of the domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant's prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Names, has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Names. In fact, the Domain Names are pointing to the web site “www.kony.es”, which promotes the activity of one of the Complainant's competitors, KONY Ascensores SL, based in Spain.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the use of the trademark KONE since 1910 and the amount of advertising and sales of Complainant's products and services worldwide - including Spain, where the Respondent is based -, the Respondent was more likely than not aware of the Complainant's trademark at the time of the registration of the Domain Names.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
With reference to the use of the Domain Names in bad faith, the Panel finds that, in light of the content of the web site connected to the Domain Names, Internet users are likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044, Fry's Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286). Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent is attempting to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent's website for commercial gain based on confusion with the Complainant's mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In accordance with prior decisions, the Panel also finds that the Respondent's failure to respond to the cease and desist letter of the Complainant is a further evidence of the Respondent's bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting”.
In view of the above, the Panel finds that the Domain Names were registered and are 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 Names <ascensoreskone.com>, <kone-ascensores.com> and <kone-es.com> be transferred to the Complainant.
Dated: April 29, 2010