WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kombos Networks, C.A. v. Rundel, Mike
Case No. D2011-1404
1. The Parties
The Complainant is Kombos Networks, C.A., Centro Comercial of Bolivarian Republic of Venezuela represented by Estudio Antequera Parilli & Rodriguez, Bolivarian Republic of Venezuela.
The Respondent is Rundel, Mike of Calgary, Canada.
2. The Domain Name and Registrar
The disputed domain name <kombos.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. On August 19, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 19, 2011, GoDaddy.com, Inc. 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 August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on October 5, 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 a Venezuelan company which provides consulting services, distribution and products maintenance for telecommunication solutions.
The Complainant is the owner of several trademark Venezuelan trademark registrations for KOMBOS, such as the registration Nos. P299543 and P299545 of October 23, 2009, in class 9; P299544 and P299546 of October 23, 2009, in class 16. The Complainant is also the owner of Venezuelan trademark registrations for KOMBOS NETWORK & Design, such as the registration No. P285562 of October 26, 2006, in class 9; and for KOMBOS & Design, including the registration Nos. P285563 of June 23, 2009, in class 9; P286668 of August 13, 2008, in class 16; S038342 of August 13, 2008, in class 35; S039398 of November 11, 2008, in class 36; S038343 OF August 13, 2008, in class 38: S038362 of August 13, 2008 in class 41; S038363 of August 13, 2008, in class 42.
The domain name <kombos.com> was registered on December 31, 2004.
5. Parties’ Contentions
The Complainant contends that <kombos.com> is identical to its registered trademark KOMBOS. The Complainant states that it registered the disputed domain name on December 31, 2004 and used in connection with the Complainant’s products and services until the last renewal of February 16, 2011, when, due to a technical problem in the renewal payment, the domain name was released and re-registered by the Respondent.
The Complainant has submitted evidence showing that the disputed domain name was used, as of August 12, 2007 and August 12, 2009, for a web site dedicated to the Complainant’s products and services. Moreover, the Complainant has used email addresses based on the disputed domain name after its registration by the Respondent, as shown by an email sent by the Complainant’s commercial director from its address “[xxx]@kombos.com” to the Complainant’s representative on the day of the filing of the Complaint.
The Complainant points out that has not granted the Respondent with any license to use its trademarks and that the Respondent has no rights or legitimate interests in the disputed domain name, as it is merely redirected to a web site displaying advertising articles and links to third parties web sites such as “www.shops.ccs.com”, “www.luggageonline.com”, “www.evo.com” and “www.dinodirect.com”. The Complainant states that the same or similar information published on the site corresponding to the disputed domain name were also published on other web sites owned by the Respondent.
The Complainant also states that, according to its verifications through the Reverse Whois Search provided by DomainTools.com, the Respondent is the current registrant of more than 500 domain names and states that the Respondent is “building a bank of domain names with intention that differs with the purposes of registering a[…] domain name as a way to expand the presence of a product or service mark on the Internet”.
With reference to the bad faith requirement, the Complainant contends that the Respondent registered the disputed domain name identical to its registered trademark with the intention to take unfair commercial advantage of the prestige and reputation of the Complainant’s mark. The Complainant also states that the use of the disputed domain name in connection with a web site which redirects to other e-commerce web sites and the publication on this web site of the same kind of information which have been published by the Respondent on other sites is evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several Venezuelan trademark registrations for KOMBOS, alone or together with design elements. The Panel finds that the domain name is therefore identical to the trademarks owned by the Complainant.
In comparing the Complainant’s marks to the disputed domain name with reference to KOMBOS it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See, i.a., Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (“the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”) and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 (“the accused domain name <chevychasebank.org> is legally identical to the Complainant’s trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed 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 disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name 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 (see 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; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, <maybank.com>.
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s contentions, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
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 trademark.
The Panel finds there is no indication that the Respondent has been commonly known by the disputed domain name. Moreover, according to the unrebutted Complainant’s assertions, the disputed domain name has been used for a web site which merely displays sponsored advertisements and links to other commercial web sites. This alleged use is not to be considered as a bona fide offering of goods or services or evidence of a legitimate, noncommercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
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 disputed 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.
It has been repeatedly stated that the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which bad faith may be inferred and that the principal aim of the Policy is to curb the abusive registration of domain names in the circumstances in which the registrant is seeking to profit from and exploit the trademark of another. See, i.a., Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
As mentioned, i.a., in Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.
In this case, the Complainant has provided evidence of ownership of prior rights in the mark KOMBOS and has submitted screenshots highlighting its use of the disputed domain name in 2007 and in 2009 for a web site featuring KOMBOS marks and promoting the Complainant’s commercial activity. The Complainant has also stated that it has actively used the disputed domain name until the last renewal date of February 16, 2011, when, due to technical problems related to the credit card disposed to the renewal payment, the domain name expired and was re-registered by the Respondent probably by means of automated systems (the so-called “drop-catching”).
Also, according to the Complainant i) the Respondent has registered more than 500 domain names; ii) the disputed domain name has been pointed by the Respondent to a web site displaying sponsored advertisements which redirect users to third commercial party web sites; and iii) the Complainant has been using, until the date of the filing of the Complaint, at least one email address based on the disputed domain name.
In light of the particular circumstances of the case as described above and in absence of any reply of the Respondent to the Complainant’s allegations, the Panel finds that the Respondent was or ought to be aware of the Complainant’s prior rights on the mark KOMBOS when decided to register the disputed domain name.
The Panel also finds that the above-described use of the disputed domain name for merely displaying a recollection of advertisements to third parties web sites does not constitute a good faith use of the disputed domain name.
Moreover, it is likely that users may be misled as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site, provided that the disputed domain name is still being used (or at least has been used until the filing of the Complaint) by the Complainant for its email addresses.
Thus, in view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kombos.com> be transferred to the Complainant.
Dated: October 20, 2011