WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Four Marketing, Okini Limited, BC Technologies v. Private Registrations Aktien Gesellschaft
Case No. D2011-1641
1. The Parties
The Complainant is Four Marketing, Okini Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), and BC Technologies of Staines, United Kingdom, represented by Olswang LLP, United Kingdom.
The Respondent is Private Registrations Aktien Gesellschaft, of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <okini.com> is registered with Answerable.com (I) Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 27, 2011, the Center transmitted by email to Answerable.com (I) Pvt Ltd a request for registrar verification in connection with the disputed domain name. On September 29, 2011, BigRock.com on behalf of Answerable.com (I) Pvt Ltd. 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 October 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2011.
The Center appointed Leon Trakman as the sole panelist in this matter on November 1, 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 in this procedure is three companies working together to provide online men’s products and services, founded in September 2001.
The Complainant owns a European Union Community trade mark registration for OKI-NI (CTM number 002309169). That trade mark was filed by Complainant on July 19, 2001.
The Complainant also owns a United States of America Federal trademark for OKI-NI (registration number 3935701), and a Japanese trademark (registration number 4741896).
The Complainant’s main website can be accessed at “www.oki-ni.com”.
The Complainant also owns a number of domain names which redirect to the main website above. These include: <okini.co>, <oki-ni.co>, <oki-ni.com>, <oki-ni.net>, <okini.org>, <oki-ni.org>, <okini.org.uk>, <oki-ni.org.uk>, <okini.tv>, <oki-ni.tv>. <okini.co.uk>, <oki-ni.co.uk>.
One of the Complainant’s companies incorporates the OKI-NI trade mark in its unhyphenated form for its company name. Okini Limited (company number 04072884).
The Complainant previously owned the disputed domain name, <okini.com>, but did not renew it.
The Respondent is the registrant of the disputed domain name <www.okini.com> registered with Answerable.com (I) Pvt. Ltd.
The Respondent is listed on the WhoIs database at “www.who.is” as Private Registrations Aktien Gesellschaft.
The disputed domain name was registered on June 10, 2009.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name comprises Complainant's trademark for OKI-NI.
It maintains that, although the registered trademarks owned by Complainant are for OKI-NI with a Hyphen, Complainant is well known for and makes widespread use of OKI-NI in both its hyphenated and unhyphenated form.
The Complainant explains further that, in the Kansai dialect of Japanese “oki ni” literally translates to “thank you”, “thanks” or “very much”. This would not be known by the average consumer in the United Kingdom or elsewhere outside of Japan and consequently “Okini” and “Oki-ni” are highly unusual and very distinctive marks in virtually all markets around the world.
The Complainant acknowledges that it previously owned the disputed domain name <okini.com>, but that it inadvertently failed to renew it, that in attempting to renew it, it ascertained that it was no longer available and had been secured by Respondent.
The Complainant alleges that Respondent registered the disputed domain name <okini.com> which is confusingly similar to Complainant’s trademark, that Respondent is using it illegally, and that Respondent is in bad faith in knowing of the Complainant's business and legitimate interest in the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <okini.com> is confusingly similar to the Complainant's trademark, OKI-NI.
Other than for the absence of a hyphen between “oki” and “ni” in the disputed domain name, that name is identical to Complainant’s trademark.
Although not dispositive under the first element, which entails an objective comparison between the Complainant’s trademark and the disputed domain name, the Panel notes confusion may be further augmented insofar as Respondent’s webpage is prominently headed by the Complainant’s trademark OKI-NI. That confusion is accentuated by the fact that the Respondent is running or promoting an online fashion store from its website which is similar to Complainant’s business as a men’s online clothing retailer.
B. Rights or Legitimate Interests
The Respondent's use of the disputed domain name to offer or link to a website offering similar goods and services to those provided by the Complainant does not represent a "legitimate non-commercial or fair use of the domain name" pursuant to paragraph 4(c)(iii) of the Policy.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not associated in any way with the Complainant. The Complainant has not authorised or given permission to Respondent to provide goods or services under or by reference to the disputed domain name.
There is no evidence that the Respondent is or ever was known by the name "Okini".
There is no evidence that the Respondent has any trademark applications or registrations anywhere for the words "Okini".
The Panel concludes that the Respondent has no rights and legitimate interests in accordance with paragraphs 4(c) and 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent has registered and is using the disputed domain name in bad faith, contrary to paragraph 4(b)(iii) of the Policy.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services
Given that the Complainant had operated its business under the trademark, OKI-NI, for over ten years prior to the Respondent’s registration of the disputed domain name and that Complainant operated a men’s fashion online retail business throughout that time, this Panel finds that the Respondent was aware of Complainant’s OKI-NI trademark when it registered and then used the disputed domain name.
The Respondent’s bad faith is further evidenced by the fact that it has sought to provide similar services as the Complainant’s business, and that Respondent’s purpose is to direct Internet traffic away from the Complainant’s website to Respondent’s website at the disputed domain name for economic gain and at the expense of the Complainant’s reputation, products and services.
The Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark, contrary to paragraph 4(b)(iv) of the Policy.
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 <okini.com>, be transferred to the Complainant.
Dated: November 10, 2011