WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kijiji International Ltd. v. Jack Shepard
Case No. D2012-2110
1. The Parties
The Complainant is Kijiji International Ltd of San Jose, California, United States of America, represented by Pillsbury Winthrop Shaw Pittman LLP, United States of America.
The Respondent is Jack Shepard of Lugano, Switzerland.
2. The Domain Names and Registrar
The disputed domain names <kijijincontri.biz>, <kijijincontri.com>, <kijijincontri.info>, <kijijincontri.mobi>, <kijijincontri.org>, <kjijincontri.com>, <kigigincontri.biz>, <kigigincontri.com>, <kigigincontri.net>, <kigigincontri.org> and <kigigincontri.info> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2012. On October 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <kijijincontri.biz>, <kijijincontri.com>, <kijijincontri.info>, <kijijincontri.mobi>, <kijijincontri.org>. On October 26, 2012, 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 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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2012. On November 21, 2012, the Center granted the Respondent an additional five days in order to indicate to the Center by return email whether it intends to participate in these proceedings or otherwise. The Respondent did not submit any communications. Accordingly, the Center informed the Parties of the commencement of the panel appointment process on November 29, 2012.
On December 13, 2012, the Complainant submitted a request to include further domain names in the Complaint.
The Center appointed Fabrizio Bedarida, Bruce E. O’Connor and Fabrizio La Spada as panelists in this matter on December 14, 2012. The Panel finds that it was properly constituted. Each member of 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.
On December 20, 2012, the Panel issued a Procedural Order to the Parties, allowing the Complainant to file an amended complaint including further domain names and giving the Respondent a further period of twenty days to provide a response in relation to these domain names. On December 22, 2012, the Complainant filed its amended Complaint including the six additional domain names registered by the same Respondent.
On January 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added domain names. On January 3, 2013, 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 Center verified that 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”).
The Center notified the Respondent of the amended Complaint on January 4, 2013. In accordance with the Procedural Order, the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center informed the Parties on January 25, 2013, that the Panel would render its decision within fourteen calendar days.
4. Factual Background
The Complainant in this administrative proceeding is Kijiji International Ltd, a division of eBay Inc., a Delaware corporation.
The Complainant has shown to be the owner of the following trademark registrations for the word mark KIJIJI and the logo mark KIJIJI and Design (collectively the “KIJIJI Marks”) in the United States, Switzerland and the European Community:
Mark Registration Date Registration Number Jurisdiction
KIJIJI 3/13/2007 3,218,713 United States
KIJIJI 3/13/2007 3,218,714 United States
KIJIJI 10/2/2007 3,303,570 United States
KIJIJI 4/17/2007 3,229,681 United States
KIJIJI 4/17/2007 3,229,682 United States
KIJIJI 4/17/2007 3,229,684 United States
KIJIJI (stylized) 3/13/2007 3,218,715 United States
KIJIJI and design 2/27/2007 3,213,992 United States
KIJIJI and design 10/16/2007 3,313,569 United States
KIJIJI 7/27/2005 541543 Switzerland
KIJIJI 1/20/2006 4249454 European Community
KIJIJI and design 9/29/2006 4289526 European Community
The Complainant also owns trademark registrations for its KIJIJI Marks in the following additional jurisdictions: Argentina, Australia, Brazil, Canada, Chile, China, Hong Kong, China, India, Japan, the Republic of Korea, Morocco, Mexico, Malaysia, Norway, New Zealand, Peru, the Russian Federation, Thailand, and Taiwan, Province of China. The KIJIJI Marks are registered for a variety of online and computer services, including “providing an online searchable database featuring classified listings,” “providing classified advertising space via global computer and wireless networks,” “providing online interactive bulletin boards, forums, and discussion groups for transmission of messages among users of global computer and wireless networks concerning classified listings,” and “hosting online web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions.”
The Domain Names were registered on the following dates:
Domain Names Registration Date
kijijincontri.biz December 7, 2010
kijijincontri.com March 5, 2010
kijijincontri.org December 7, 2010
kijijincontri.info December 7, 2010
kijijincontri.mobi December 7, 2010
kjijincontri.com October 30, 2012
kigigincontri.biz October 26, 2012
kigigincontri.com October 26, 2012
kigigincontri.net October 26, 2012
kigigincontri.org October 26, 2012
kigigincontri.info October 26, 2012
5. Parties’ Contentions
A. Complainant
The Complainant claims that:
1) The Domain Names are confusingly similar to the Complainant’s trademarks. The addition of the generic word “incontri” (which in Italian means “meetings”) is not sufficient to distinguish the Domain Names from the Complainant’s trademarks. As well the minor misspellings of the Complainant’s distinctive and well-known KIJIJI Marks in the Domain Names do not avoid a finding of confusing similarity.
2) Consumers, upon viewing the Domain Names, are highly likely to expect an association with the Complainant.
3) The Respondent has not at any time been commonly known by the Domain Names.
4) The Respondent is not using the <kijijincontri.com> and <kigigincontri.com> Domain Names in connection with a bona fide offering of goods or services. Specifically, the Respondent is using those Domain Names to operate a sexually explicit personal ad website that is similar in format to the Complainant’s Kijiji websites featuring classified ads. The remaining nine Domain Names resolve to a parked web page provided by the Registrar.
5) The Respondent is not an authorized dealer, distributor, or licensee of the Complainant, and does not have permission or authority to use the KIJIJI Marks.
6) The Respondent had no plausible reason to register the Domain Names, which are confusingly similar to the KIJIJI Marks, other than to be associated with and capitalize on the Complainant’s good will.
7) By registering and using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the KIJIJI Marks as to source, sponsorship, affiliation or endorsement of the website under <kijijincontri.com> and <kigigincontri.com>.
8) Further, the Respondent’s bad faith use and registration of the Domain Names is indicated by the fact that the website under the Domain Names <kijijincontri.com> and <kigigincontri.com>, which intentionally trades on the goodwill of the KIJIJI Marks and uses a confusingly similar imitation of the KIJIJI logo, contains sexually explicit content and photographs and therefore tarnishes the Complainant’s marks.
9) The Respondent’s bad faith is further indicated by his failure to provide a valid mailing address when registering ten of the eleven Domain Names. All of the correspondence which the Complainant has sent to the Respondent at the Lugano, Switzerland address listed in the relevant domain name registrations has been returned as undeliverable.
10) The Respondent registered five of the Domain Names in March and December of 2010, long after the Complainant had established valuable rights and goodwill in its KIJIJI Marks and shortly after the Complainant publicly announced its decision to discontinue allowing personal ads on its Kijiji classified advertising websites. The Respondent registered the remaining six of the Domain Names in October
2012, mere days after the Complainant instituted this UDRP proceeding.
The Complainant requests that the Panel issue a decision that the Domain Names be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the Domain Names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
- The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the KIJIJI Marks and has stated that the Domain Names are confusingly similar to those marks.
In order to substantiate this claim, the Complainant has argued that the addition of the generic term “incontri” to the KIJIJI Marks or to minor variations of the same, does not avoid the confusing similarity between the Domain Names and the Complainant’s marks.
This Panel agrees with the Complainant’s view that “kijiji” is the distinctive part of the Domain Names <kijijincontri.biz>, <kijijincontri.com>, <kijijincontri.info>, <kijijincontri.mobi>, <kijijincontri.org> and that the addition of the generic term “incontri” (i.e. meetings) is not sufficient to avoid confusing similarity between these Domain Names and the Complainant’s KIJIJI Marks.
Indeed, it is now well established by many previous UDRP decisions that the addition of a generic term to a trademark is generally not sufficient to avoid confusing similarity.
The Domain Name <kjijincontri.com> is composed of a slight variation of the KIJIJI Marks and the generic term “incontri”, while the remaining Domain Names <kigigincontri.biz>, <kigigincontri.com>, <kigigincontri.net>, <kigigincontri.org> and <kigigincontri.info> are composed of the generic term “incontri” also combined with minor variations of the KIJIJI Marks. In fact, in these Domain Names the distinctive part “kigigi” is obtained by replacing the letter “j” with the letter “g”. It should be noted that the letter J does not belong to the Italian alphabet, being used only when borrowed from other languages, in addition the words “kijiji” and “kigigi” in Italian are phonetically identical, being pronounced in the same way.
This Panel is therefore of the opinion that the term “incontri”, due to its genericness, is not sufficient to avoid confusing similarity between the Domain Names and the Complainant’s trademarks even when combined with the “kigigi” part, that (being phonetically identical), represents a slight variation of the KIJIJI Marks.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the Domain Names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “kijiji” or by a similar name. Finally, the Respondent has not alleged any facts to justify any rights or legitimate interests in the Domain Names.
Indeed, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the Domain Names. As well, the Respondent has not denied any of the Complainant’s claims.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the use of the Domain Names described in section 5.A above constitutes bad faith use. Besides, the Panel notes that the above-described use of the Domain Names confirms that the Respondent knew of the Complainant’s trademark, products and services when registering the Domain Names and intentionally intended to create an association with the Complainant and its business.
Indeed, the choice to combine the word “incontri” with the name “Kijiji” (or slight variations of the same) for domain names to be used to promote a website for dating, at a time when the Complainant publicly announced its decision to discontinue allowing personal ads on its Kijiji classified advertising websites, does not appear to be a credible coincidence. And, the use by the Respondent on its websites of a graphic design, emulative of the form of the KIJIJI Marks used by the Complainant on its websites, must have been intentional.
The first of the five Domain Names registered in time were in fact registered soon after the Complainant announced its decision to discontinue allowing personal ads on its Kijiji websites.
The above, together with the fact that the Domain Names were registered long after the Complainant had established valuable rights and goodwill in its well-known KIJIJI Marks, is further proof that the Respondent was aware of the KIJIJI Marks when he registered the first five of the Domain Names.
Definitive proof that the Respondent was fully aware of the Complainant’s trademark and websites is given by the fact that on the Respondent’s website there was a disclaimer affirming that: “Kijijincontri non ha legami commerciali con il portale kijiji di annunci generali si occupa solo ed esclusivamente della pubblicazione di annunci personali” (i.e. Kijijincontri has no commercial ties with the portal kijiji general ad and is involved exclusively in the personal ads). The Panel finds the use of such disclaimer does not absolve the Respondent from a finding of bad faith registration and use and as such does not otherwise provide any basis for a finding of the Respondent’s rights or legitimate interests in the Domain Names.
Further evidence of bad faith behaviour in registering the Domain Names is then given by the fact that the Respondent registered the last six of the Domain Names immediately after this UDRP proceeding was instituted. Thus, the Respondent was without a doubt aware of the Complainant’s rights in the KIJIJI Marks. In addition, on the date of this decision, the Domain Name <kigigincontri.com> is used to redirect Internet users to the website “www.sitoincontri.com” where the following descriptions appear:
“Annunci personali in Italia sul network kijiji incontri” (i.e. personal ads in Italy on the network kijiji meetings)
“Sito incontri è il network di incontri del gruppo kijiji, che si occupa esclusivamente della pubblicazione di annunci personali” (i.e. Sito Incontri is the network for meetings of the kijiji group, dealing exclusively with the publishing of personal ads).
This fact alone is further proof of the Respondent’s intention to create confusion and mislead Internet users into believing that there is an existent connection between the Respondent’s Domain Names and activity and the Complainant’s trademarks and activity.
Because the Domain Names that resolve to parking pages are practically identical to those in use, the Panel infers under the circumstances that the bad faith intent of the Respondent discussed above is applicable to them as well.
Also, the fact that the Respondent provided incorrect information when registering the Domain Names gives additional evidence that the Respondent acted in bad faith when registering them.
Indeed, it appears that before the Complaint was filed the Respondent, in order to conceal his identity, not only made use of a privacy service for one of the Domain Names, but also provided fictitious or at least incomplete information to such service.
This Panel finds that the Respondent’s use of fictitious address details constitutes a factor indicating bad faith.
Accordingly, the Panel finds on the basis of the evidence presented that the Respondent has registered and is using the Domain Names in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <kijijincontri.biz>, <kijijincontri.com>, <kijijincontri.info>, <kijijincontri.mobi>, <kijijincontri.org>, <kjijincontri.com>, <kigigincontri.biz>, <kigigincontri.com>, <kigigincontri.net>, <kigigincontri.org> and <kigigincontri.info> be transferred to the Complainant.
Fabrizio Bedarida
Presiding Panelist
Bruce E. O'Connor
Panelist
Fabrizio La Spada
Panelist
Date: February 6, 2013