WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kik Interactive Inc. v. KikFinder Admin / Registration Private, Domains By Proxy
Case No. D2016-2340
1. The Parties
The Complainant is Kik Interactive Inc., of Waterloo, Ontario, Canada, represented by Currier + Kao LLP, Canada.
The Respondent is KikFinder Admin / KiKFinder.com of Gilbert, Arizona / Registration Private, Domains By Proxy, LLC, Scottsdale, Arizona, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <kikfinder.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2016. On November 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 25, 2016.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on January 4, 2017. 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 operates KIK Messenger, a real-time instant messaging application with some 300 million users. It has traded under the names “KIK” and “KIK Messenger” since 2010.
The Complainant owns a number of registered trade marks for KIK including US trade mark no. 4526019, filed April 27, 2010, registered February 7, 2012, in classes 9 and 42.
The disputed domain name was registered on August 11, 2013.
As of November 4, 2016, there was a website at the disputed domain name, whose homepage was headed “Chat with Kik users!”. The site invited visitors to find the usernames of people to talk to on Kik and to list their own usernames. The Respondent also claimed: “1,952,118 usernames submitted”. The footer included a disclaimer acknowledging that “Kik” was a trade mark of the Complainant and claiming that the Respondent was not affiliated with the Complainant or its trade marks. Other pages of the site contained sponsored advertisements, including for adult chat sites.
5. Parties’ Contentions
The Complainant’s marks are widely recognized amongst consumers and embody the Complainant’s valuable reputation and goodwill.
The disputed domain name is confusingly similar to the Complainant’s KIK mark. The placement of the mark at the start of the disputed domain name implies that it is associated with the Complainant. The remainder of the disputed domain name is purely descriptive. The likelihood of confusion is compounded by the content of the website.
The Respondent lacks rights and legitimate interests in the disputed domain name. The Complainant did not authorise the Respondent to use its marks.
The Respondent fails to comply with any of the circumstances listed in paragraph 4(c) of the Policy.
There is no bona fide offering as the Respondent set out intentionally to trade on the Complainant’s reputation.
Furthermore, the website at the disputed domain name contains false information. A significant number of the alleged usernames on the website are invalid. The Respondent could easily have verified this information but has failed to do so.
The Respondent is not commonly known by the disputed domain name.
The Respondent is not making legitimate noncommercial use of the disputed domain name. Instead it is profiting from advertisements and “clickbait”.
The disputed domain name was registered and is being used in bad faith.
The Respondent intentionally attempted to create a likelihood of confusion with the Complainant’s marks.
The disputed domain name was registered well after the Complainant started using its marks. The Respondent sought to cause confusion by suggesting that it was associated with KIK Messenger.
The Complainant’s reputation has been tarnished by association with the questionable content of the advertisements on the website.
The disputed domain name is being used for commercial gain through third party advertisements.
The disputed domain name is being used primarily to disrupt the Complainant’s business by reducing traffic to the Complainant’s own website.
The Respondent’s disclaimer is a clear indication that the Respondent knew of the Complainant’s marks when it registered the disputed domain name but fails to reduce confusion since users rarely read such disclaimers. In any case, the Respondent has already achieved its objective of attracting traffic to its site by exploitation of the Complainant’s marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark KIK by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
The Complainant’s distinctive trade mark is the dominant component of the disputed domain name and the addition of the descriptive term “finder” is insufficient to avert a finding of confusing similarity.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel stated that:
“… use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
The Respondent has used the disputed domain name for a website which provides a supposed service matching users of the Complainant’s service. However, it appears that the Respondent’s real purpose was to attract traffic by reference to the Complainant’s mark and then profit from advertisements including for adult chat sites.
The Respondent has not appeared in these proceedings to deny the Complainant’s allegations.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <kikfinder.com> be transferred to the Complainant.
Date: January 18, 2017