The Complainant is Cath Kidston Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Hammonds LLP, United Kingdom.
The Registrant is Splurge Limited of Dublin, Republic of Ireland.
The disputed domain name <cathkidston.ie> is registered with IE Domain Registry Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2010. On February 5, 2010, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On February 8, 2010, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the Registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on February 9, 2010. In accordance with the Rules, paragraph 5.1, the due date for Response was March 9, 2010. The Registrant did not submit any response. Accordingly, the Center notified the Registrant's default on March 11, 2010.
The Center appointed John P. Gaffney as the sole panelist in this matter on March 25, 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 describes itself as a “unique global lifestyle and design company”, with twenty eight shops and concessions in the United Kingdom, two shops in the Republic of Ireland and five shops in Japan.
According to the Complainant, its main website, “www.cathkidston.co.uk”, attracts around 1.5 million page views per week, consisting of around 100,000 separate visits. The Complainant states that it has an annual turnover of approximately £5 million from Internet sales via its main website. The url “www.cathkidston.com” automatically re-directs users to “www.cathkidston.co.uk”
The Complainant owns a Community Trade Mark (“CTM”), bearing the CTM registration number 2670412, for the mark CATH KIDSTON in respect of International Classes 2, 24, 25 and 27, registered on August 21, 2003. It owns a further CTM for the mark CATH KIDSTON, bearing the CTM number 2969772, for International Classes 3, 8, 14, 18, 20, 21, 24 and 27, registered on October 29, 2004.
The Registrant registered the disputed domain name on January 6, 2010.
Cath Kidston Limited has accumulated substantial goodwill as a result of the quality of its products, the large volume of its customers and the extensive advertisement and promotion of its brand.
The disputed domain name is identical to trade marks in which the Complainant has rights. <cathkidston.ie> is identical to the Complainant's CATH KIDSTON trade marks. As such, the registration by the Registrant infringes the Complainant's trademark rights, and will cause confusion to the public as to the ownership of the domain name and the website to which it points.
Furthermore, the Complainant is the registered owner of the domain name <cathkidston.com>, which is used as part of its business since it automatically re-directs users to <cathkidston.co.uk>. The disputed domain name is almost identical to the above domain names and as such is likely to cause confusion.
The Complainant submits that the Registrant did not have at the time of registration, nor has it subsequently acquired, any rights in law or legitimate interests in the disputed domain name.
It argues that the combination of words “cath kidston”, representing as it does both the brand and the founder of Cath Kidston Limited, is not one which the Registrant would have legitimately selected for any reason other than to create the impression of association with the Complainant.
The circumstances in which the Registrant is using the disputed domain name suggests that the use has created and will continue to give the impression that the domain name is registered, operated or authorised by, or otherwise connected with the Complainant. Since the disputed domain name was only registered on 6 January 2010, it is likely that the Registrant has not yet had the opportunity to fully use the domain name, and as such may cause further detriment to the Complainant.
The Complainant considers that by using the disputed domain name, the Registrant is attempting to disrupt the Complainant's business by preventing it from using this domain name for legitimate business purposes in the Republic of Ireland.
The Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.
In the Complainant's view, both the registration and subsequent use of the disputed domain name are of such a nature as to take unfair advantage of and be unfairly detrimental to the Complainant's rights and, as such, the domain name is being used in bad faith.
The CATH KIDSTON mark is well-known and distinctive, rather than descriptive or generic. Given that the Registrant operates in the same field as the Complainant, its use of the mark is aimed at unfairly taking advantage of the Complainant's goodwill.
This is evidenced by the timing of the registration of the domain name, which took place when the Registrant would have been aware of the Complainant's existence and operations in the Irish retail market. The Complainant has a substantial reputation and acquired goodwill in the United Kingdom and the Republic of Ireland, and has a store in Dublin, where the Registrant has its registered office. As such, the Registrant would have been fully aware of the Complainant's reputation and commercial value when it registered the disputed domain name.
The Complainant considers it likely that its potential customers will visit the Registrant's site and be confused as to whether it has reached an official Cath Kidston Limited site. It is crucial that such confusion be avoided, given the importance of the reputation of online retail sites.
The Registrant has not been commonly known by the name “cath kidston”, and has not registered any limited company in this or a similar name, as far as the Complainant is aware.
The Registrant has not provided any evidence that the registration of the disputed domain name was not effected in bad faith in the sense of paragraph 188.8.131.52 of the Rules (incorrectly referred to in the Complaint as “[p]aragraph 3 (b)(ix)(3) of the Rules”).
On January 18, 2010, the Complainant wrote to the Registrant requesting that the disputed domain name be transferred and seeking its agreement to comply with certain undertakings preventing future trade mark infringements. The Complainant has not received a response to this letter.
The Registrant did not reply to the Complainant's contentions.
The Registrant's failure to reply in this administrative proceeding does not automatically result in a decision in favour of the Complainant. The Panel has proceeded on the basis that while the Panel may draw negative inferences from the Registrant's default, “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 [of the Policy] are met.” (Paragraph 1.4 of the Policy). The Panel views paragraph 1.4 of the Policy as requiring the Complainant to support its assertions with actual evidence in order to prove that each of the conditions specified in paragraph 1.1 of the Policy are met.
The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Pursuant to paragraph 1.3.1 of the Policy, protected identifiers include “trade and service marks protected in the island of Ireland”.
In the present case, the Complainant has provided evidence that it owns two CTMs for the mark CATH KIDSTON. Each CTM is protected in the island of Ireland and therefore constitutes a protected identifier.
Apart from the domain suffix “.ie” (which is immaterial in this context), the disputed domain name is identical in all material respects to the protected identifiers.
The Panel concludes that the disputed domain name is misleadingly similar to the protected identifiers in which the Complainant has rights.
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests in the disputed domain name.
The factor in paragraph 3.1.1 is fulfilled:
“…where the registrant can demonstrate that, before being put on notice of the complainant's interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business”.
The Registrant (not having participated in this proceeding) has not demonstrated that the conditions of paragraph 3.1.1 have been met.
The Complainant states that it has not licensed or otherwise authorized the Registrant to use its trade mark and the Registrant has not sought to contradict this.
Paragraph 3.1.2 does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant. Paragraph 3.1.3 does not apply as the disputed domain name does not include a geographical indication.
The Complainant has established prima facie a lack of rights and legitimate interests and the Registrant has not sought to contest this.
The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name.
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
Paragraph 2.1 of the Policy specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith. The Panel considers that paragraphs 2.1.1, 2.1.2 and 2.1.3 of the Policy apply in this case:
“2.1.1 where the domain name has been registered or is used primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the registrant's documented expenses which are directly related to the registration of the domain name; or
2.1.2 where the domain name has been registered or is used primarily in order to prevent the complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name; or
2.1.3 where the registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the complainant;”
The Panel is of the view that the name, CATH KIDSTON, is a highly distinctive, non-descriptive name, which, as the Complainant observes, represents not only its brand, but also its founder, Cath Kidston. The Complainant's trade marks have been in existence for in excess of five years prior to registration of the disputed domain name. As such, it is highly probable that the registration was effected for the purposes of targeting these trade marks (see Kelkoo SA v. Lina Musinkiene, WIPO Case No. DIE2007-0002 and Facebook Inc. v. Talkbeans Media Limited, WIPO Case No. DIE2007-0009).
In the absence of a Response by the Registrant, there is no obvious explanation for the registration by the Registrant of such a distinctive domain name, other than an intention to prevent the Complainant from registering this domain name, and/or to interfere with or disrupt the Complainant's business (for the purposes of paragraphs 2.1.2 and 2.1.3).
The Panel concludes that the disputed domain name was registered in bad faith.
Since paragraph 1.1 of the Policy requires only that the domain name has been registered or is being used in bad faith, the Panel's conclusion in relation to registration suffices to satisfy the third condition in paragraph 1.1 of the Policy. Nonetheless, the Panel will also consider the allegation that the domain name has subsequently been used in bad faith.
The Panel notes in that regard that the Registrant has, since the commencement of this proceeding, offered to transfer the domain name to the Complainant in exchange, on February 12, 2010, for a payment of €1,200 and, on February 13, 2010, for the reduced sum of €800. This proposed transfer is described by the Registrant in its communications with the Complainant as “an act of goodwill if the necessary costs are met.”
The Registrant has not documented its alleged costs. It is highly improbable that either of the respective sums of €1,200 or €800 requested by the Registrant for transfer of the disputed domain name accurately reflect the costs directly incurred by it in connection with the registration of the disputed domain name. In the Panel's view, such offers to transfer the disputed domain name evidence the use thereof “primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the complainant… for valuable consideration in excess of the registrant's documented expenses which are directly related to the registration of the domain name.” (Paragraph 2.1.1). 1
The Panel concludes that the disputed domain name has been used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name <cathkidston.ie> be transferred to the Complainant.
John P. Gaffney
Dated: April 9, 2010
1 See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.6 in which it is noted, among other things, that “[e]vidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner launches a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort.” The Panel sees no reason why evidence of offers to sell a disputed domain name in settlement discussions should not be admissible under the Policy.