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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akris Prêt-à-Porter AG v. Fresh Enterprise Limited and Andrew Kris

Case No. D2011-0366

1. The Parties

The Complainant is Akris Prêt-à-Porter AG of Speicher, Switzerland, represented by A.W. Metz & Co. AG, Switzerland.

The Respondents are Fresh Enterprise Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”) and Andrew Kris of Antwerp, Belgium both represented by Lenz & Staehelin, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <akris.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 25, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 25, 2011, Tucows 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 21, 2011. On March 18, 2011 Respondent counsel requested a three day extension to the due date of the Response. The extension was granted, and the Response was filed with the Center on March 23, 2011.

The Center appointed Brigitte Joppich as the sole panelist in this matter on April 8, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a Swiss producer of clothing, headgear, footwear and accessories. The Complainant was founded in 1950 and is doing business in Europe, Switzerland, Hong Kong, SAR of China, Japan, Canada, Macau, the United States of America, the Russian Federation, Ukraine and the People’s Republic of China.

The Complainant is registered owner of numerous trademark registrations for “AKRIS”, inter alia International registration no. 528650 AKRIS registered on September 14, 1988, and International registration no. 1013708 AKRIS, registered on April 8, 2009 (hereinafter referred to as the “AKRIS Marks”). The Complainant’s trademarks mainly cover goods in international classes 03, 09, 18 and 25.

The disputed domain name was first registered on June 8, 1996, and has been used in connection with a placeholder website at least until March 1, 2011 and is currently used in connection with a website providing information on a certain Mr. Andrew Kris.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is identical to the AKRIS Marks, which the Complainant contends to be famous or at least well-known in central Europe, and reflects the Complainant’s company name.

(2) The Respondent has no rights or legitimate interests in the disputed domain name, as it is not known by the name Akris, is not a licensee of the Complainant, and has not received any permission to use the AKRIS Marks. A legitimate interest in the company name and trademark AKRIS is supposed to be not even conceivable as the Respondent did not reply to the Complainant’s representatives’ letter and as relevant consumers will wrongly assume that the website at the disputed domain name is somehow associated with the Complainant.

(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the disputed domain name has been registered for strategic reasons, i.e. to sell, rent or otherwise transfer the disputed domain name to the Complainant. The Complainant further contends that the fact that the disputed domain name is not actively used does not exclude use in bad faith as the Respondent may start using the disputed domain name at any time. The Complainant finally contends that the Respondent was aware of the Complainant’s domain name and the AKRIS Marks when registering the disputed domain name due to the strong reputation of these marks.

B. Respondent

The Response was filed on behalf of two Respondents, firstly, Fresh Enterprise Limited, a limited liability company having its registered seat in London and engaging in the creation, the editing and the management of websites and domain names (hereinafter referred to as the “First Respondent”), and, secondly, Mr. Andrew Kris, who is, upon the Respondent’s allegation, the beneficial owner of the disputed domain name, registered the disputed domain name on June 8, 1996, and has used the disputed domain name for operating a website to promote his business since December 26, 1996 (hereinafter referred to as the “Second Respondent”).

The Respondents deny the Complainant’s contentions and request that the remedies requested by the Complainant shall be denied. The Respondents contend that the Complainant initiated this administrative proceeding in an attempt of bad faith during pending negotiations with the Second Respondent on the potential sale of the disputed domain name to the Complainant, who repeatedly contacted the Second Respondent to enquire whether he was willing to sell the disputed domain name during a period of more than ten years and who never contested the Second Respondent’s legitimate rights in the disputed domain name, thereby accepting that the Second Respondent has always been the legitimate beneficial owner of the disputed domain name. The Respondents further contend that the Complaint against the First Respondent is presented for the sole purpose of depriving the Second Respondent from his domain name which he was not willing to sell at the price offered by Complainant. The Respondents state that the Complainant’s allegations are neither complete nor accurate but partly wrong, partly incomplete and in any case against the best of the Complainant’s knowledge, and that the Complaint must be dismissed since the Respondents have rights and legitimate interests in respect of the disputed domain name and have neither registered nor used it in bad faith.

The Respondents contend that the disputed domain name is a combination of the initial of the first (given) and the last name of the Second Respondent and that the disputed domain name has been registered as a “brand” for the Second Respondent’s personal business. The Respondents state that the Second Respondent was first contacted by the Complainant in 1998 enquiring whether he was prepared to sell the disputed domain name to the Complainant. The Second Respondent declined because he was doing business at the website under the disputed domain name. The Second Respondent was again contacted by the Complainant in 2008 for the purpose of discussing the potential sale of the disputed domain name to the Complainant. The Respondents contend that the Second Respondent had never heard of the Complainant or any trademarks for AKRIS before being contacted by the Complainant and that the Complainant’s trademark and company name were not known in the United Kingdom, which is the original residence of Second Respondent, and that the Complainant registered its AKRIS trademark in the United Kingdom for the first time on April 8, 2009.

The Respondents state that the Second Respondent promoted his services in the field of business process outsourcing and shared services on his personal website under the domain name, that the business of the Second Respondent was and is closely related to his person and his broadly recognized expertise and reputation, and that the Second Respondent was always and still is commonly referred to as “akris.com”. The Respondents state that the Second Respondent started a new business at the beginning of 2004, namely the Shared Services and Business Process Outsourcing Organisation, SBPOA, that he has used the disputed domain name to redirect Internet users to the SBPOA website under the domain name <sharedxpertise.org> since 2003, that he has promoted his business on several websites, all featuring content which originated on the “www.akris.com” website, and that they all contain multiple references to “akris” and/or <akris.com>. Having sold his business to a United States company, the Second Respondent decided to restart his personal business, thereby using the disputed domain name as a vehicle to promote his personal services again in October 2010.

With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondents state that;

- it is not contested that the disputed domain name is identical with the Complainant’s AKRIS Marks but that there is no likelihood of confusion between such marks and the disputed domain name since the goods for which the Complainant’s trademarks are registered and used are completely different from the services offered by the Second Respondent;

- the Second Respondent has rights and legitimate interests in the disputed domain name not only by using a domain name which is identical with his legal name, but also by using a domain name which is similar to his legal name and/or consists of parts of his name and that he has always made a fair use of the disputed domain name without any intent for commercial gain by misleadingly diverting consumers;

- the Second Respondent did not acquire or register the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant or any other third party, did not register the disputed domain name in order to prevent the Complainant or any third party from reflecting the mark in a corresponding domain name, has no interest in disrupting the Complainant’s business, and never intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website either.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s AKRIS Marks and is identical to such marks. It is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. 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; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy, and the burden of rebuttal is correspondingly shifted to the Respondent.

In the Response, the Respondents state that the disputed domain name was registered in the name of the Second Respondent, who is still the beneficial holder of the disputed domain name, and that the Second Respondent can rely on rights or legitimate interests in the disputed domain name. Having reviewed the evidence provided by the Respondents, the Panel finds it more likely than not that the Second Respondent, Mr. Andrew Kris, registered the disputed domain name because it is comprised of the first letter of his first (given) and his last name, and that the Second Respondent has used the disputed domain name in connection with a bona fide offering of goods and services, namely business process outsourcing and shared services, before notice of the dispute, which, according to the evidence provided by the Respondents, must have been clear to the Complainant based on the fact that the Complainant had been in touch with the Second Respondent for many years re the acquisition of the disputed domain name.

The main question in this case is whether or not the First Respondent, who is presently the registered owner of the disputed domain name, can rely on the Second Respondent’s rights or legitimate interests for the purposes of this proceeding. Based on the evidence before the Panel, the Complainant contacted the Second Respondent many times regarding the acquisition of the disputed domain name, even after the First Respondent had been registered as owner of the disputed domain name. The present case must be distinguished from ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785; which also dealt with a transfer of the disputed domain name to another entity, on the grounds that the use of the disputed domain name has in the present case not significantly changed since the disputed domain name was first registered by the Second Respondent in 1998 – it has always been used in connection with the Second Respondent’s business. Given that the Complainant itself felt confident that the Second Respondent was the beneficial holder of the disputed domain name and that it discussed the acquisition with the Second Respondent even after the disputed domain name had been transferred to the First Respondent, the Panel finds that the First Respondent can indeed rely on the Second Respondent’s rights or legitimate interests in this case and that the Complainant must therefore be denied.

C. Registered and Used in Bad Faith

Even if the Panel had not found in favor of the Respondent because of its rights or legitimate interests in the disputed domain name, it would have had to deny the transfer of the disputed domain name also because the Panel finds insufficient evidence of bad faith registration and use.

The Second Respondent most likely registered the disputed domain name because it is a combination of the initial of the first name and the last name of the Second Respondent and therefore bona fide. The question whether or not the transfer of the disputed domain name to the First Respondent constitutes a new registration under the Policy, which has in most cases been accepted by previous panels (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition), is not relevant in this case. Even if the Panel found the date of the transfer of the disputed domain name to the First Respondent to be relevant in this regard (although evidence clearly establishes an unbroken chain of underlying ownership by the Second Respondent, and although the transfer of the disputed domain name to the First Respondent was not accomplished to conceal the Second Respondent’s identity, i.e. to frustrate assessment of liability in relation to the registration or use of the domain name) and that the First Respondent knew of the Complainant’s AKRIS Marks, there is no bad faith use for the following reasons:

The disputed domain name has been used in connection with the Second Respondent’s business ever since its registration. There is no evidence that the disputed domain name was registered primarily for the purpose of selling it to the Complainant or to prevent the Complainant from reflecting its AKRIS Marks in a corresponding domain name or for the purpose of disrupting the business of a competitor as the parties are not competitors and as the disputed domain name has not been used in any way to attract Internet users to the Second Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location. The fact that the Second Respondent actually offered the disputed domain name to the Complainant at a price of USD 100, 000 does on its own not lead to a finding of bad faith as such offer reflects the economic value of the disputed domain name to the Second Respondent, resulting from its use in commerce for many years.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Brigitte Joppich
Sole Panelist
Dated: April 22, 2011

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