WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kitchn Norge AS v. Abdulbasit Makrani
Case No. D2016-1189
1. The Parties
The Complainant is Kitchn Norge AS of Sandnes, Norway, represented by Kluge Advokatfirma AS, Norway.
The Respondent is Abdulbasit Makrani of Karachi, Pakistan, represented by the Law Office of Howard M. Neu, PA, United States of America.
2. The Domain Name and Registrar
The disputed domain name <kitchn.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2016, 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 June 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2016. The Response was filed with the Center on June 30, 2016. The Respondent submitted a “corrected” Response on July 5, 2016. The Complainant submitted a supplemental filing on July 8, 2016.
The Center appointed Luca Barbero, David Perkins and Tony Willoughby as panelists in this matter on July 27, 2016. 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.
4. Factual Background
The Complainant sells kitchen and home accessories through 125 stores located in Norway and Sweden and its website “www.kitchn.no”.
The Complainant is the owner of the Norwegian trademark registration No. 221252 for KITCH’N (figurative mark) filed on March 20, 2002 and registered on October 16, 2003, in classes 7, 8, 11, 20, 21, 24 and 35. It is also the registered owner of the domain name <kitchn.no>, which was registered on November 24, 2011.
The disputed domain name <kitchn.com> was initially registered on May 20, 2000 in the name of a third party. According to the historical WhoIs records of the disputed domain name provided by DomainTools submitted by the Complainant, the Respondent was listed as registrant of the disputed domain name as of June 12, 2013.
The disputed domain name is pointed to a pay-per-click landing page where it is stated that the same may be for lease or sale. A link on the website redirects users to a contact form which enables them to request a quote for the disputed domain name.
The Respondent operates a website at “www.abdulbasit.com”. From information in the Complaint about the Respondent’s website, it appears that the Respondent is a professional domain name investor, who buys and sells domain names.
5. Parties’ Contentions
The Complainant claims to have grown substantially in Norway in the last ten years and states that it has plans for further expansion outside the borders of this country.
The Complainant states that the sole differences between the Complainant’s registered trademark KITCH’N and the disputed domain name is the inclusion of the apostrophe before the letter “n” in the Complainant’s registered trademark and the inclusion of the “.com” generic Top-Level Domain (“gTLD”) suffix in the disputed domain name. The Complainant contends that the mentioned differences between the disputed domain name and the Complainant’s registered trademarks are without legal significance and concludes that the disputed domain name is identical or in any case confusingly similar to the Complainant’s trademark.
With reference to the Respondent’s rights or legitimate interests in the disputed domain name, the Complainant asserts that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services; that there is nothing suggesting that the Respondent has been known by the disputed domain name and that it has no interest in the disputed domain name except for offering it for sale; and that the Respondent’s use does not amount to a legitimate noncommercial or fair use.
The Complainant contends that the Respondent registered and used the disputed domain name in bad faith for the following reasons:
- The Respondent is in the business of selling and monetizing domain names and his intention at the time of registration was to sell the disputed domain name;
- The Respondent has engaged in a pattern of registration and use of domain names in bad faith since he was respondent in two prior UDRP proceedings, Theodoor Glissen Bankiers N.V. v. AbdulBasit Malaani, WIPO Case No. D2013-1229, and Gerald Hill v. Abdul Basit Makrani, WIPO Case No. D2013-1959, that were decided against him;
- The Respondent appears to have registered the disputed domain name immediately after the expiry of the registration which was previously held by another company involved in the production of kitchens, and could have become aware of the disputed domain name through an automated program that snaps up domain names which become available;
- The disputed domain name is not constituted of a dictionary term but of a special word based on the phonetic pronunciation of the word “kitchen”;
- The Complainant’s trademark is fairly strong and a simple Google search before registering the disputed domain name would have revealed its existence. Thus the Respondent would have violated its obligations under paragraph 2 of the Policy, by not conducting the necessary searches, or by willfully closing his eyes to the Complainant’s preceding rights;
- The Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring to the Complainant or one of its competitors, since the Complainant’s attorney offered an amount of USD 7,000 to the Respondent for transferring the disputed domain name to the Complainant but said offer was declined by the Respondent;
- The Respondent violated paragraph 4(b)(iv) of the Policy since it attracted for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark when Internet users who seek the Complainant’s website find their way to the Respondent’s website and click on the links thereon.
The Respondent states that the word “kitchn” encompassed in the disputed domain name is a contraction of the common word “kitchen” and points out that, pursuant to a Google search, the term has been used by many companies and individuals for different purposes, most of which are for recipes, similar to the links generated by the disputed domain name.
The Respondent asserts that he had no actual knowledge of the Complainant’s KITCH’N mark at the time that he registered the disputed domain name and that the Complainant has provided no evidence that the trademark was well-known outside of Norway at the time that the Respondent registered the disputed domain name in Pakistan, or at any time since.
The Respondent claims not to have registered the disputed domain name for the purpose of selling it to the Complainant, nor to have been interested in selling the disputed domain name to the Complainant. He further states that he is not in competition with the Complainant, nor does he utilize links to competitors of the Complainant.
As to the use of the disputed domain name, the Respondent states that the disputed domain name is pointed to a parked page operated by Uniregistry.com and that, by clicking a link, the user is taken to a page operated by DomainNameSales.com, which is wholly owned by Uniregistry.com. The Respondent also states that the majority of UDRP panels have held that parking domain names with legitimate monetization companies is a legitimate business use.
The Respondent alleges that the links displayed on his website are related to the generic meaning of the word “kitchen”, referring mainly to recipes and not to kitchen equipment and appliances.
As to the two cited UDRP proceedings wherein the Respondent was named respondent and the cases were decided for the complainants, the Respondent states that in those cases he did not file an answer to the complaints as he did not have the funds available to do so.
The Respondent also points out that the Complainant’s contention that Respondent should have known of the Complainant’s trademark KITCH’N by a simple Google search is misplaced, as the Complainant does not come up on Google until number 38 on the fourth page and almost every listing shown through a Google search for “kitchn” is for recipes.
The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking, stating that the Complainant knew or should have known that it would be unable to prove the Respondent’s bad faith in the registration and use of the disputed domain name, as the Complainant’s trademark was in Norway, the Complainant’s business was solely in Norway and the Respondent was a resident of Pakistan and had no way of knowing of the Complainant’s trademark or whether it met the threshold of being “famous” enough to prevail in this action.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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.
A. Preliminary issue: the Parties’ Supplemental filings
According to the consensus view of the UDRP panelists as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is in the panel’s discretion whether to accept Supplemental Filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.
The Complainant sent an email communication to the Center, after the submission of the Response, in which it informed “for the sake of good order” that the Complainant had been granted an International trademark registration for KITCH’N and submitted printouts of the trademark registration details as published on the Norwegian Industrial Property Office online database, showing that the registration was granted in Norway on June 28, 2016.
The Panel notes that the cited International trademark registration, which designates also other countries besides Norway, is dated July 3, 2015 and concludes that the Complainant was aware of it when it filed the Complaint in which said information was omitted.
In view of the above and since the Complainant has not demonstrated the presence of any exceptional circumstance required for admitting a supplemental filing, the Panel has decided not to consider the Complainant’s International registration brought to the Panel’s attention after the filing of the Complaint. Nevertheless, the Panel notes that, should the Panel have admitted the Complainant’s supplemental filing, the outcome of the case would have been the same.
B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a registered trademark for KITCH’N and design, filed in Norway in 2002 and registered on October 16, 2003, in classes 7, 8, 11, 20, 21, 24 and 35.
As stated in paragraph 1.1 of the WIPO Overview 2.0, ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, is irrelevant for the purpose of the assessment under the first element of the UDRP.
In addition, as indicated in paragraph 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark KITCH’N and that the presence of the apostrophe and of figurative elements in the Complainant’s trademark does not exclude the confusing similarity between the disputed domain name and the Complainant’s trademark. Moreover, the Panel finds that also the “.com” gTLD suffix can be disregarded in this case being a mere technical requirement of registration.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark KITCH’N in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Because of the Panel’s findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
As mentioned in the paragraphs above, the disputed domain name was registered in May 20, 2000 but was acquired by the Respondent in 2013. As highlighted in paragraph 3.7 of the WIPO Overview 2.0, the transfer of a domain name to a third party does amount to a new registration.
The Panel notes that, at the time the disputed domain name was acquired by the Respondent, the Complainant had been trading in Norway and Sweden for some 18 years, had been the proprietor of the Norwegian trademark No. 221252 for KITCH’N for some 11 years and also appears to have been selling through the Internet for almost 2 years.
There is no evidence that the Complainant’s trademark might have been used outside Norway and Sweden and the Complainant’s website clearly targets consumers located in Norway since it is entirely in Norwegian. Moreover, a Google search for “kitchn” shows several results unrelated to the Complainant and its mark.
The records indicate that the Respondent is a professional domain name registrant and acquired the disputed domain name through an automated process immediately after the original registration lapsed. As highlighted in previous cases, the automated nature of the acquisition cannot be an excuse for turning a blind eye to trademark rights, since otherwise it would be the “perfect shield for abusive registrations”. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
However, particularly given the nature of the disputed domain name as a contraction of the dictionary term “kitchen”, the Panel finds that nothing in the case file indicates that the Respondent had ever known of the Complainant’s rights or that the Respondent registered the disputed domain name to capitalize on the Complainant’s mark.
This finding is supported by the fact that the use of the disputed domain name does not show an intention to target the Complainant or its competitors, as the links displayed on the website published at the disputed domain name are mainly related to cooking recipes and not to the Complainant’s trademark and products (See, e.g., Billy Bob's Texas IP Holding LLC v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1221).
The Panel has also reviewed the two prior UDRP decisions cited by the Complainant involving the Respondent and notes that the circumstances of those cases were different from the one at hand. Specifically, in Theodoor Gilissen Bankiers N.V. v. AbdulBasit Malaani, supra, the domain name subject of the dispute was pointed to sponsored third-party links to the complainant’s competitors. In Gerald Hill v. Abdul Basit Makrani, supra, the Respondent contacted the complainant directly, a few months after the registration, with an unsolicited offer to sell the domain name and there was no evidence that the Respondent contacted anyone else, or otherwise used the domain name for a purpose unconnected with the complainant’s mark.
Instead, in the case at hand, there is no evidence that the Respondent might have registered the disputed domain name with the intention to sell it to the Complainant or to trade off the Complainant’s mark. Therefore, the Panel also finds that the Respondent’s refusal of the Complainant’s offer for the disputed domain name and his request of a higher sum do not amount to bad faith.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
E. Reverse Domain Name Hijacking
Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Allegations of reverse domain name hijacking have been upheld in circumstances where a complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP. See paragraph 4.17 of the WIPO Overview 2.0.
In the case at hand, the Panel denies the finding of Reverse Domain Name Hijacking. The Panel is not satisfied that in launching the Complaint the Complainant had any motivation other than a reasonable desire to protect its trademark rights and having a genuine belief in the merits of its case.
For the foregoing reasons, the Complaint is denied.
The Respondent’s request for a finding of Reverse Domain Name Hijacking is also denied.
Date: August 12, 2016