WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke KPN N.V. v. Cui Daoen
Case No. D2015-1577
1. The Parties
The Complainant is Koninklijke KPN N.V. of Hague, Netherlands, represented by Ilse Janssen, Netherlands.
The Respondent is Cui Daoen of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <kpn.club> (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 3, 2015. On September 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 4, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 16, 2015. 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, Koninklijke KPN N.V. and its predecessor Koninklijke PTT Netherlands have been active in the field of telecommunication services since 1913 and also involved in related services, including television, mobile communications, mobile and fixed line telephones and accessories. The Complainant owns in particular the following trademarks (the "Trademarks") for goods and services in different classes, inter alia, relating to telecommunications:
The word trademark KPN, a Benelux trademark with registration number 0529431 of March 2, 1993.
The word trademark KPN, a Community trademark with registration number 005310099 of May 29, 2008.
The figurative trademark KPN, a Benelux trademark with registration number 0798741 of March 22, 2006.
The figurative trademark KPN, an International trademark designating in particular the European Union with registration number 911242 of September 11, 2006.
The Disputed Domain Name <kpn.club> was registered on November 14, 2014. The website at the Disputed Domain Name resolves to a pay-per-click (PPC) parking page.
5. Parties' Contentions
The Complainant had been providing telecommunication services to the Dutch public under the brand KPN. KPN is a well-known trademark and brand. The Complainant currently operates many KPN stores and KPN Business centers in the Netherlands.
The Disputed Domain Name consists of two distinct elements, being the second level domain "kpn" and the generic Top-Level Domain (gTLD) ".club". The gTLD ".club" does not prevent a finding of confusing similarity between the Complainant's trademarks and the Disputed Domain Name. On the contrary, given the generic meaning of the word "club" and in the current context, the addition of the gTLD ".club" adds to the confusing similarity as the customers could easily link the Disputed Domain Name to some kind of customer club related to the Complainant's business.
The Complainant notified the Respondent of the infringement of its trademarks by the Disputed Domain Name and summoned the Respondent to bring such infringement to an end. The Respondent replied that the Disputed Domain Name was for sale for the amount of RMB 128,000 (around EUR 20,000). The Complainant made a counteroffer of EUR 150. The Respondent has not responded to this counteroffer.
The Disputed Domain Name consists solely of the Complainant's trademark so that the Disputed Domain Name is identical to the Complainant's trademarks.
The Respondent was not authorized by the Complainant to register and/or use the Disputed Domain Name. Also, before the dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a corresponding name in connection with a bona fide offering of goods or services. Additionally, the Respondent is not commonly known (either as a person, business, or organization) by the Disputed Domain Name. Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant invested significantly in its KPN trademark, which became well-known in the Netherlands. It is therefore beyond reasonable question that the Respondent is well aware of the KPN trademark. Nevertheless the Respondent has registered the Disputed Domain Name because of the potential value of the trademark, and tried to monetize the Disputed Domain Name. By registering the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain by means of sale of the Disputed Domain Name to the Complainant for a hugely inflated price, which is ground for determination of registration and use in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view is that a respondent's default does not automatically result in a decision in favor of the complainant. Although, the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant's reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for KPN, including the examples cited in the factual background. The Panel therefore turns to the second part of the inquiry.
It is well-established that "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). Here, the Disputed Domain Name incorporates the Complainant's KPN trademark in its entirety without any other word or letter.
Regarding the addition of the gTLD ".club" to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case the Panel thus concurs with the Complainant's claim that the addition of the gTLD ".club", may even add to the confusing similarity between the Complainant's trademarks and the Disputed Domain Name since Internet users may easily link the Disputed Domain Name to a customer club related to the Complainant's business.
In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; o
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a disputed domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant's KPN trademark.
The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the trademark KPN or the Disputed Domain Name. Furthermore there is no evidence that the Respondent has made demonstrable preparations to use or is using the Disputed Domain Name in connection with a bona fide offering of goods and services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in light of the Complainant's evidence that the Respondent's intention was to sell the Disputed Domain Name to the Complainant or a third party for significantly more than the out-of-pocket costs directly related to the Disputed Domain Name.
The Respondent has not rebutted this by way of a formal response or otherwise and the way that the Respondent has been "using" the Disputed Domain Name (see immediately below under section C) does not support a finding of rights or legitimate interests.
In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 Complainant has shown extensive and long use of its KPN trademark in the Netherlands and its operation of many KPN stores and KPN business centres in the Netherlands. The Disputed Domain Name resolves to a parking page with sponsored links and a message "buy this domain" indicating that the Disputed Domain Name is available for sale. In the absence of any explanation from the Complainant, the Panel finds more likely than not that the Respondent intentionally registered a domain name identical to the Complainant's mark to benefit from the good will associated with the Complainant's mark and is using the Disputed Domain Name to intentionally attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark.
Moreover, the fact that the Respondent offered to sell the Disputed Domain Name to the Complainant for an amount of RMB 128,000 (around EUR 20,000) which is likely in excess of his out-of-pocket costs directly related to the Disputed Domain Name, further indicates bad faith use of the Disputed Domain Name.
Noting that the Disputed Domain Name solely comprises of the Complainant's trademark KPN, together with the gTLD ".club", that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the Disputed Domain Name, and considering all facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <kpn.club>, be transferred to the Complainant.
Date: October 28, 2015