WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kik Interactive Inc. v. Domain Admin, Whois Privacy Corp. / John Smith
Case No. D2017-0688
1. The Parties
The Complainant is Kik Interactive Inc. of Ontario, Canada, represented by Currier + Kao LLP, Canada.
The Respondents are Domain Admin, Whois Privacy Corp. of Nassau, The Bahamas / John Smith of St. Peter Port, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Names and Registrars
The disputed domain name <kikdating.me> is registered with Gandi SAS and the disputed domain name <kikdatings.net> (the “Disputed Domain Names”) is registered with Internet Domain Service BS Corp (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2017. On April 6, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 6 and April 7, 2017, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 3, 2017.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on May 8, 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 following uncontested facts are summarized from the Complaint.
The Complainant is a well-known supplier for a worldwide instant messaging service with over three hundred million (300.000,000) users and is constituted under the Canada Business Corporation Act. As a result of the Complainant’s efforts, the KIK Marks, are widely recognized amongst consumers and embodies the Complaint’s valuable reputation and goodwill in the marketplace.
The Complainant has been using KIK Marks on a global basis since April 2010 and owns, inter alia, United States Patent and Trademark Office (“USPTO”) Registration Number 4526019, registered on May 6, 2014.
The Complainant uses and owns trademark applications and registration rights in the KIK word mark, the KIK MESSENGER word mark and design mark and various other marks that include the word KIK as well as similar designs and color schemes in connection with goods and service related to the Complaint’s real-time instant messaging software application in numerous different countries and jurisdictions around the world, for example Canada, the United States, the United Arabian Emirates, the European Union and Australia.
The Disputed Domain Names were registered on October 20 and December 5, 2016. The Disputed Domain Name <kikdating.me> resolves to a website displaying adult content; the Disputed Domain Name <kikdatings.net> redirects to said website.
5. Parties’ Contentions
The Disputed Domain Names are related as one directs traffic to the other.
The Disputed Domain Names are very similar and consolidation avoids unnecessary duplication of time, effort and expenses, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy.
The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names because the Respondents are not connected with the Complainant and therefore not authorized to use the Complainant’s trademarks and purport to use the trademarks to engage in criminal and fraudulent activities.
The fact that <kikdating.net> directs traffic to <kikdating.me> suggests that the Respondents are controlled by a single person or entity.
Both Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Panel notes that there are two nominal Respondents in this matter. However, noting the fact that the Disputed Domain Name <kikdatings.net> redirects to the other Disputed Domain Name <kikdating.me>, and in all the circumstances of this case, the Panel finds it more likely than not that both Disputed Domain Names are registered under common control by the same entity.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s mark.
The Disputed Domain Names <kikdatings.net> and <kikdatings.me> are sufficiently similar to Complainant’s trademark KIK to be confusingly similar to the mark.
Previous UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety can result in a finding of confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006.
The Disputed Domain Names differ from Complainant’s trademarks only by the addition of the word “dating” and “datings”, respectively, to an otherwise distinctive trademark. This does not serve to distinguish the disputed domain names from that trademark. The KIK word mark appears at the beginning of the Disputed Domain Names and the remainder of the Disputed Domain Names is merely descriptive. The placement of the KIK word mark at the beginning of the Disputed Domain Names clearly suggests and implies that the website reached via the Disputed Domain Names is in some way affiliated, connected, or otherwise associated with the Complainant. Internet users will be led to believe there would be a real connection between the Disputed Domain Names and the Complainant. The use of the Disputed Domain Names by the Respondents featuring the Complainant’s well known KIK marks undoubtedly leads to confusion and deception on the part of the consuming public as to whether the Disputed Domain Names are affiliated, connected, or otherwise associated with the Complainant.
Given the foregoing, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel concludes that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
Although a complainant bears the ultimate burden of proof, previous UDRP panels have recognized that this often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent, see Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, the Complainant needs only to make out a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Names. Upon such a showing of a prima facie case, the burden of production shifts to the Respondents to demonstrate its rights or legitimate interests in the Disputed Domain Names.
The Panel finds that the Complainant has made a prima facie showing that the Respondents do not have rights or legitimate interests in the Disputed Domain Names within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances:
- The Complainant has no relationship whatsoever with the Respondents and has never authorized the Respondents to use the trademarks in the Disputed Domain Names or any other domain name.
- There is no indication in the file that the Respondents are known under the Disputed Domain Names;
- The term “kik” is not an ordinary dictionary word in English, but rather it is part of the distinctive marks forming part of the Complainant’s brand. Hence, the Respondent’s use of the Disputed Domain Names appears to purposefully attempt to trade off of the goodwill that the Complainant has developed through widespread use of its KIK Marks.
Further, the Panel concludes that the Respondent has not demonstrated any rights or legitimate interests in the Disputed Domain Names. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances may be:
- use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Respondents did not reply to the Complainant’s contentions. Therefore the only plausible reason, in the view of the Panel, for the Respondents to register the Disputed Domain Names was to divert Internet users to the Respondents’ website by implying an affiliation with or sponsorship by the Complainant or that the Complainant approves of and sanctions the Respondents website, see Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where the respondent generated commercial gain by intentionally and misleadingly diverting users away from complainant’s site to a competing website); Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 (finding that the respondent’s use of the disputed domain names is confusingly similar to the complainant’s mark, and the respondent’s use to sell competing goods is an illegitimate use and not a bona fide offering of goods). This is neither noncommercial nor fair use of the Disputed Domain Names.
For the foregoing reasons, the Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Names have been established.
The third element of the Policy requires that the Complainant establish that the Disputed Domain Names has been registered and used in bad faith.
Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
(i) circumstances indicating that you [respondent] have registered or you [respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark, or to a competitor of complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [respondent] have registered the domain name in order to prevent the owner of the trade mark 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 [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with 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 your location.
The Panel finds that the circumstances set out in paragraph 4(b)(iv) of the Policy is fulfilled here. In the Panel’s view there is sufficient evidence that leads to the finding that the Respondents acquired the Disputed Domain Names primarily for the purpose of attracting Internet users to the Respondents’ website or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or services on said website.
The Disputed Domain Names have been used to tarnish the reputation of the Complainant through the use of advertisements, most or all of pornographic nature, located on the website associated with the Disputed Domain Names. The Complainant’s reputation is tarnished by the advertisements, which have questionable content that is not controlled by the Complainant.
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 Names, <kikdating.me> and <kikdatings.net> be transferred to the Complainant.
Maxim H. Waldbaum
Date: May 22, 2017