WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kids & Us English, S.L. v. Target Success.Com, Incorporated
Case No. D2016-0356
1. The Parties
The Complainant is Kids & Us English, S.L. of Manresa, Barcelona, Spain, represented by Emme & Pi The Trademark Company S.L.P., Barcelona, Spain.
The Respondent is Target Success.Com, Incorporated of Seattle, Washington, United States of America (the "United States").
2. The Domain Name and Registrar
The disputed domain name <kidsandus.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2016. On February 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on March 4, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 1, 2016. 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 company incorporated in 2007 and registered in Spain. It is a provider of language schools aimed particularly at young learners.
The Complainant is the owner of trademark registrations for the marks KIDS & US SCHOOL OF ENGLISH, KIDS & US LANGUAGE SCHOOL and KIDS & US in numerous territories worldwide. Its registrations include, for example:
- Community Trade Mark number 9,625,708 for KIDS & US SCHOOL OF ENGLISH, filed on December 24, 2010 and registered on June 3, 2011 in International Classes 16, 35 and 41 for goods and services including instructions and teaching materials.
- Community Trade Mark number 13,016,076 for KIDS & US, filed on June 20, 2014 and registered on November 11, 2014 in International Classes 16, 35 and 41 for goods and services including instructional and teaching material, books and educational manuals.
- International Trade Mark number 1,216,445 for KIDS & US, registered with effect from July 1, 2014 in International Classes 16, 35 and 41 for goods and services including instructional and teaching material, books and educational manuals and designating China, Morocco, Tunisia, Turkey and the United States.
The disputed domain name was registered on May 7, 1999.
The Complainant has submitted evidence that, on January 11, 2016, the disputed domain name resolved to a website at "www.kidsandus.com" offering "Related Links" to a number of websites including third party websites offering language tuition services. At the date of the Panel's review, the disputed domain name did not resolve to any active web page.
5. Parties' Contentions
The Complainant submits that its trademark KIDS & US is well known internationally in the language tuition sector. It states that it has 266 centres in several countries in Europe and in Mexico with more than 82,000 students worldwide. Its turnover in 2014 was around EUR 12,020,000. It operates websites at locations including "www.kidsandus.net" and "www.kidsandus.es", the latter including an online store. The Complainant provides evidence of substantial media coverage of its business and the fact that it has won numerous sector awards for its services and for its website. It also provides evidence of it presence on social media networks including YouTube, Facebook, Twitter, Instagram and Google.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In particular, the Complainant states that the disputed domain name is the same as its trademark KIDS & US, except that the word "and" is used instead of the ampersand, which cannot be included in a domain name. The Complainant also submits that the inclusion of the generic Top-Level Domain ("gTLD") ".com" in the disputed domain name is irrelevant when considering confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has not licensed or permitted the Respondent to use its trademarks and that the Respondent has no independent trademark rights relating to the disputed domain name. The Complainant submits that the Respondent has not commonly been known by the disputed domain name, that it is not making any legitimate noncommercial or fair use of the disputed domain name and that it cannot show that it has used the disputed domain name in connection with any bona fide offering of goods or services. On the contrary, the Complainant alleges that the Respondent is taking unfair advantage of the Complainant's rights in the mark KIDS & US by using the disputed domain name for the purposes of a website which includes "pay per click" links to third party websites offering language tuition services which are competitive with those of the Complainant.
The Complainant submits that the disputed domain name is being used in bad faith. It contends that the Respondent's website would not have included links to language tuition websites if the Respondent was unaware of the Complainant's business and trademarks and that the Respondent has used the disputed domain name only for the purpose of capitalizing on the reputation of the Complainant's trademarks in order to earn "pay-per-click" revenues. Specifically, the Complainant submits that, by using the disputed domain name, 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 trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Complainant acknowledges that in this case "there is no evidence that the Respondent has registered or acquired the [disputed] domain name in bad faith." However, the Complainant relies on Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278, in which the panel held that the requirements of the Policy could in certain circumstances be met even though the respondent may not have been acting in bad faith at the date of acquisition of the relevant domain name. The panel in that case stated that the intent of the Policy is to provide a fair and efficient mechanism for trademark owners to prevent their rights being abused, and that a strict interpretation of paragraph 4(a)(iii) of the Policy (which requires that the disputed domain name "has been registered and is being used in bad faith"):
"… would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired [and] would give a 'green light' to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy."
The Complainant requests a transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Even in a case such as this where the Respondent has not responded to the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations for the mark KIDS & US in territories including the European Union and the United States. The Complainant has also established to the satisfaction of the panel that its mark KIDS & US has become distinctive of the Complainant's services in the language tuition sector. Ignoring the gTLD ".com", which is typically to be disregarded for the purposes of assessing confusing similarity, the disputed domain name <kidsandus.com> is effectively identical to the Complainant's trademark, save that the ampersand is replaced by the word "and". In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. It is irrelevant to this assessment that the disputed domain name was registered prior to any of the Complainant's trademarks, although that factor is relevant to other considerations under the Policy as discussed below.
B. Rights or Legitimate Interests
The Complainant has submitted that it has never licensed or permitted the Respondent to use its trademarks, that the Respondent has no independent trademark rights that correspond to the disputed domain name and has not been commonly known by that name, and that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. It also submits that, far from using the disputed domain name in respect of any bona fide offering of goods or services, the Respondent is using it misleadingly to divert Internet users to its website where it offers links to third party websites, including those of language tuition providers who are competitors of the Complainant.
The Panel finds that the Complainant's above submissions give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any evidence of rights or legitimate interests on its part, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant's submissions that the Respondent has used the disputed domain name to resolve to a website which contains links to third party websites including those belonging to the Complainant's competitors. Having found that the Complainant's trademark KIDS & US is distinctive of the Complainant's services, the Panel infers that, by using the disputed domain name, 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 trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website (paragraph 4(b)(iv) of the Policy). Therefore, the Panel finds that the disputed domain name has been used in bad faith. The fact that the disputed domain name no longer resolves to an active website does not alter this finding.
However, paragraph 4(a)(iii) of the Policy requires that the disputed domain name both "has been registered" and "is being used" in bad faith (the so-called "conjunctive requirement"). The issue in this case is that, while the disputed domain name was registered in 1999, the Complainant did not come into existence until 2007, some eight years later, and did not file for registration of any trademark containing the term KIDS & US until 2010. Therefore, the Respondent can not have had the Complainant or its trademark in mind at the date of registration of the disputed domain name (nor is there any evidence in this case that the Respondent acquired the disputed domain name at any date subsequent to the registration date).
The Complainant has argued that where there is clear evidence of use in bad faith then registration in bad faith is not always required, but despite the sentiments expressed by the panel in the Ville de Paris v. Jeff Walter case on which the Complainant relies, the consensus view of WIPO panels remains as set out in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), namely that:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date… when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
Because this approach can lead to outcomes which some WIPO panels have considered unjust, a number of panels have departed from the strict interpretation set out above in certain categories of cases.
In one category of such cases, panels have found that bad faith can be shown where the Respondent registered the domain name in anticipation of trademark rights which were shortly to be created, e.g. upon the merger of two companies (see ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669) or following the announcement of a business venture (e.g. General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845). The present Panel has no difficulty in accepting that registration can properly be found to be in bad faith in these cases, even though the complainant may not necessarily owned trademark rights at the date of registration of the domain name.
In a further category of cases, however, panels have applied paragraph 2 of the Policy, which states that:
"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that… (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
The relevant panels have taken the view that, where a respondent subsequently uses the domain name in bad faith, then the respondent should be deemed to have been in breach of the above warranty. The present Panel does not consider it appropriate to adopt this approach, because even if it is correct that the respondent has breached the warranty in question by its use of the domain name, this can not of itself justify the imputation of an intention to do so at the date of its registration. The approach has also been rejected in subsequent cases such as A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.
In certain other cases, panels have considered the fact that, on a literal reading of paragraph 4(b) of the Policy, paragraph 4(b)(iv) does not require proof of registration in bad faith, because it deems the use of the domain name under that sub-paragraph to be "evidence of the registration and use of a domain name in bad faith." However, this is merely an evidentiary presumption which may be rebutted on a full consideration of all the circumstances of the case (see e.g. Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171).
In the present proceeding, the disputed domain name was registered some eight years before the Complainant came into being or started to trade under the mark KIDS & US. In the circumstances, even though the disputed domain name may have been used in bad faith, the Panel cannot conclude that Complainant has met its burden under paragraph 4(a)(iii). The Complaint must therefore fail on that basis.
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Date: April 8, 2016