WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kairos Investment Management SPA v. John Smith, Company No. 54527 dba Kairosinvest Holdings Ltd.
Case No. D2011-0223
1. The Parties
The Complainant is Kairos Investment Management SPA of Milano, Italy, represented by Dechert, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Smith, Company No. 54527 dba Kairosinvest Holdings Ltd. of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <kairosinvest.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 3, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2011 providing the registrant and contact information disclosed by eNom, and inviting the Complainant to submit an amendment to the Complaint. The Center also informed the Complainant that the registrar of the disputed domain name was not correctly identified in the Complaint. The Complainant filed an amended Complaint on February 14, 2011.
The Center verified that the Complaint together with the amended 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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on March 17, 2011. 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
The Complainant is an investment manager with offices in London, Milan, New York, Rome and Turin. The Complainant was founded in 1999 and has approximately EUR 5 billion in assets under management. Between 2005 and September 2009, the Complainant’s turnover related to services provided was GBP 520.12 million. The Complainant spends more than GBP 3 million annually in advertising its services. The Complainant has received broad media coverage and has won numerous awards in the last years and provides its services on the Internet at “www.kairospartners.com”.
The Complainant is proprietor of numerous trademarks containing KAIROS, including in the United Kingdom, where the Respondent is located, inter alia Community registration no. 1064476 KAIROS, registered on February 4, 1999, Community registration no. 2988012 KAIROS, registered on December 24, 2002 and United States registration no. 3033415 KAIROS, registered on December 27, 2005 (hereinafter referred to as the “KAIROS-Marks”).
The disputed domain name was registered on December 29, 2003. According to the Complainant, the domain name has been used in connection with a website referring to the Respondent as “one of the most reputable investment clubs” and describing itself as “a financial service provider who sees it with moderation and professional knowledge of the global investment environment, at the right place at the right time your investment”. Furthermore, the disputed domain name was blacklisted by “Das Geldinvestment Forum” as a domain name through which scams are carried out.
In October 2010, the Complainant became aware of the Respondent and the disputed domain name after having received a notification of a warning published by the Austrian Financial Market Authority stating that the Respondent was not permitted to carry out certain banking transactions. This warning has been published on independent third party financial services websites as well. On November 3, 2010 the Complainant’s representatives sent out a cease and desist letter to the Respondent and two chaser letters but did not receive any response.
5. Parties’ Contentions
The Complainants assert that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks as it wholly incorporates the KAIROS marks and only contains the additional word “invest”, which is entirely descriptive and non-distinctive for the Complainant’s services. The Complainant further states that addition of the TLD “.com” to the disputed domain name is non-distinctive because it is a generic top-level domain designation for registration of a domain name and does not avoid likely confusion.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that;
the Respondent must have known the Complainant at the time of the registration of the domain name,
the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its KAIROS marks or to apply for a domain name incorporating such marks;
the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services before notice of the dispute as the website at the disputed domain name offers investment management services in direct competition to the Complainant;
the Respondent is not commonly known by the domain name as – upon the Complainant’s best knowledge – the Respondent’s company “Kairosinvest Holdings Limited” is not registered in the United Kingdom and the company number provided in the WhoIs database is also false;
the Respondent has no registered trademark rights for KAIROS and does not own any companies in the United Kingdom which include the word “kairos”; and
the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue as the domain name has been used in business connection with fraudulent scam.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant contends that the Respondent:
must have known the Complainant at the time of the registration of the domain name;
used the domain name in a way which lead to a warning being published by the Austrian Financial Market Authority and to being blacklisted as a domain name through which scams are carried out, which constitutes bad faith;
is operating the domain name intentionally to attract for commercial gain Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s KAIROS-Marks as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website or location;
provided false or misleading company and contact details for the WhoIs database,
has no legitimate interest in the disputed domain name and use of the domain name constitutes an infringement of the Complainant’s KAIROS marks; and
registered the disputed domain name in order to unfairly benefit from the Complainant’s rights in the KAIROS marks and has not used the disputed domain name for any legal purpose but in a way that is likely to dilute the reputation of the Complainant’s KAIROS marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚ WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
First, the disputed domain name wholly incorporates the Complainant’s KAIROS marks. It is well established that a domain name that wholly incorporates a complainant‘s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks, such as “invest” (See BSI S.A. v. M Subhi, WIPO Case No. D2009-0275 (<bsiinvest.com>); AllianceBernstein L.P. v. Alliance Investment Management Ltd., WIPO Case No. D2007-0589 (<allianceinvest.com>); Morgan Stanley v. Morgan Stanley Investments Inc c/o Stanley Morgan, NAF Claim No. 590735 (<morganstanleyinvest.com>); Wells Fargo & Company v. Domain Asia Ventures a/k/a Domains Asia Ventures, NAF Claim No. 273436 (<investwellsfargo.com> et al.)).
Second, it is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr, WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that disputed the domain name <kairosinvest.com> is confusingly similar to the Complainant’s KAIROS-Marks and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among UDRP panels that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy or any other right or legitimate interest it may have in the domain name, then paragraph 4(a)(ii) may be deemed satisfied.
The Complainant asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not been authorized to use the Complainant’s trademarks, as it does not use the disputed domain name in connection with a bona fide offering of goods or services, as it has not been commonly known by the disputed domain name, and as it is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is therefore also satisfied.
C. Registered and Used in Bad Faith
The Complainant provided evidence that the KAIROS-Marks are well-established in connection with its services. Given the broad media coverage of the Complainant’s business, the fact that the Respondent registered a domain name which is composed of the Complainant’s KAIROS-Marks and its major service (“invest”) and that the Respondent appears to have offered investment services on its website, it is inconceivable to the Panel that the Respondent registered the disputed domain name being unaware of the Complainant’s rights in its trademarks.
Furthermore, by fully incorporating the Complainant’s marks in the disputed domain name and using the domain name in connection with a website offering services in direct competition with the Complainant’s ones, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The finding of bad faith is supported by the fact that the disputed domain name has apparently been used in connection with scam, which is a strong evidence of bad faith use under the Policy (See The Coca-Cola Company v. Laura Prusinowski, WIPO Case No. D2007-0480; Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; HPR Commodities LLC v. John Galledo, WIPO Case No. D2007-0154).
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <kairosinvest.com> be transferred to the Complainant.
Dated: March 25, 2011