WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Radio Network Pty Ltd. v. Private Registration
Case No. D2014-1481
1. The Parties
The Complainant is Australian Radio Network Pty Ltd. of Macquarie Park, New South Wales, Australia, represented by Thomson Geer, Australia.
The Respondent is Private Registration of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The Disputed Domain Name <kiis1065.com> is registered with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 4, 2014, 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 September 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 26, 2014.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 2, 2014. 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name <kiis1065.com> in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243, and in view that many UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the Complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondent Private Registration of Sydney South, New South Wales, Australia is the proper respondent (the “Respondent”) (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the Registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the Complaint, it appears that the applicable mutual jurisdiction1 is Australia.
Finally, the Panel finds that appropriate notice of this proceeding has been given to the Respondent and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
5. Factual Background
The Complainant operates a commercial radio station business operating in Australia including an FM radio station in Sydney known as KIIS1065 operating at 106.5MHz. The Complainant is a private company registered in Australia and, through a wholly owned subsidiary, Speedlink Services Pty Ltd, holds a registration for the KIIS trademark in Australia which it uses to designate broadcasting services in class 38. Its registration No. 1592389 has been in effect since November 20, 2013 but the mark has other registration with a priority date of November 25, 2013 in other classes including the marks KIIS, KIIS1065, KIISFM1065, KIISFM, KIIS1065FM, 1065KIIS, 1065KIISFM and two “accepted” but unregistered composite marks incorporating stylized lips for the marks KIIS1065 and KIIS.
The Complainant operates a website on the Internet using the domain name <kiis1065.com.au> registered on November 11, 2013.
The Respondent registered the Disputed Domain Name <kiis1065.com> on November 26, 2013, which resolves to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <kiis1065.com> was typed in, it redirected traffic to a landing page with advertisements and links for the Registrar’s website, rival radio stations and a number of vulgar articles.
6. Parties’ Contentions
The Complainant cites its trademark registrations of the trademarks KIIS and KIIS1065 in Australia as prima facie evidence of ownership.
The Complainant submits that the marks KIIS and KIIS1065 are well-known in Sydney, Australia. The Complainant submits that its rights in these marks predate the Respondent’s registration of the Disputed Domain Name <kiis1065.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the KIIS1065 trademark and submits that the similarity is not removed by the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”, citing Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No.D2009-0828.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that: “the Respondent has created its website to mimic the Complainant’s Website, or at least give the impression that it is the official website of KIIS 1065”…and that “the Respondent for commercial gain has registered the Domain Name and created a corresponding website...(for the purpose of)...cybersquatting.”
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules. On the issue of registration, the Complainant submits the mark KIIS1065 is well-known in Sydney, Australia and that the Respondent must have been aware of the rights the Complainant has in the trademark at the time of registration because in the few days prior the Complainant had applied to register the trademark KIIS1065, had registered a “Twitter handle kiis 1065” and provided a copy of an article about the rebranding to KIIS1065 that appeared in the Sydney Morning Herald newspaper on the morning the Disputed Domain Name was registered. On use, the Complainant submits that by using the Complainant’s KIIS1065 mark in the Disputed Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website, which “mimics the Complainant’s website and gives the impression that it is the official website for the radio station KIIS 1065” evidently to deceive the Complainant’s customers by creating a likelihood of confusion with Complainant’s marks.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark 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 produced sufficient evidence to demonstrate that it has registered trademark rights in the mark KIIS1065 in Australia. The Panel finds that the Complainant has rights in the mark KIIS1065 pursuant to Australian Trademark Registration No. 1593132 from November 25, 2013, which predates registration of the Disputed Domain Name by one day. The Panel finds that the Complainant has rights in the marks KIIS and KIIS1065.
The Panel also finds that the mark KIIS1065 is well-known in Sydney, Australia and associated with the Complainant.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the KIIS1065 trademark, the Panel observes that the Disputed Domain Name <kiis1065.com> comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the top level domain suffix “.com”.
It is well established that gTLD suffix “.com” used as part of a domain name may be disregarded. Accordingly, in this case, the relevant comparison to be made is with the second level portion, “kiis1065”, of the Disputed Domain Name.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is generally confusingly similar to that mark.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Panel finds that the Disputed Domain Name is therefore confusingly similar to the KIIS1065 trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice of the dispute, respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it 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 consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the relevant Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 2.0, paragraph 2.1.
It is well established that a respondent may register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2.). The Panel notes that in the present case, the Disputed Domain Name does not reflect a commonly used or descriptive phrase; the disputed domain name incorporates the Complainant’s distinctive trademark KIIS1065.
The Complainant contends that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page offering competing services and thereby illegitimately seeking to mislead their customer. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page for nefarious purposes.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel notes that the Respondent has not provided any Response to the Complainant’s contentions in this regard. Accordingly, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see: Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries before registering a domain name that includes someone else’s trademark. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademark searches or search engine searches, supports a finding of bad faith in this case.
Having regard to the trademark application for the mark KIIS1065 made on November 25, 2013, and the widespread publicity as evidenced by the article that appeared in the metropolitan daily newspaper, The Sydney Morning Herald, on November 26, 2013 about the impending rebranding of an existing FM radio station to KIIS1065; it is inconceivable to the Panel that the Respondent was unaware of the KIIS1065 trademark when it registered the Disputed Domain name, which wholly incorporates the Complainant’s trademark without knowing of it.
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. The disputed domain name resolves to a webpage containing services directly in competition to those advertised on the website operated by the Complainant. The Respondent’s website also uses the Complainant’s composite trademarks in a way that, in the Complainant’s own words, “mimics the Complainant’s website and gives the impression that it is the official website for the radio station KIIS 1065”. The failure of the Respondent to file a Response does not easily permit the Panel to disagree with the Complainant’s submission. The evidence is that it is not a website critical of, or satirizing, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. The inference the Panel is open to draw is that the Respondent’s conduct, in conjunction with the fact that the Disputed Domain Name was registered on the same day the article about the FM station rebranding to KIIS1065 appeared in a metropolitan daily newspaper, exhibits a pattern of bad faith behaviour, and the Panel does so draw that inference. In the circumstances, it seems reasonable to infer that the main purpose for which the Respondent has used a privacy service is to cause the Complainant difficulty in identifying whether or not there are other domain names registered by the same Respondent (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
This Panel finds that the Respondent has taken the Complainant’s trademark KIIS1065 and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Respondent’s web page which offers directly competing services for commercial gain. The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is in part for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill, combined with Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s KIIS1065 radio station. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. .
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Disputed Domain Name <kiis1065.com> be transferred to the Complainant.
Date: October 15, 2014
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.