WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kipling Apparel Corp v. Adelere Aodu
Case No. D2018-0716
1. The Parties
The Complainant is Kipling Apparel Corp of Wilmington, Delaware, United States of America ("United States"), represented by Dumont (DBB), Mexico.
The Respondent is Adelere Aodu of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.
2. The Domain Name and Registrar
The disputed domain name <kipling.net> is registered with Pheenix, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 29, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2018, 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 Complaint was submitted in the Spanish language. The language of the Registration Agreement for the disputed domain names is English. On April 6, 2018, the Center sent a language of proceeding communication in both Spanish and English to the Parties. On April 6, 2018, the Complainant requested that Spanish be the language of proceeding. On April 9, 2018, the Respondent requested that English be the language of proceeding. On April 16, 2018, the Complainant submitted a copy of the Complaint in English.
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 April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. On May 7, 2018, the Respondent requested an automatic four-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed that the new due date for Response was May 12, 2018. The Response was filed with the Center on May 12, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 25, 2018. 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 makes, or at least offers for sale and sells, a range of bags, backpacks and related items in Mexico and, according to the Complaint, worldwide.
The Complainant has provided evidence of numerous trademarks registered in Mexico for KIPLING or KIPLING and a device. The earliest registration for KIPLING and a device was registered in June 1995 in respect of bags and other goods in International Class 18. Subsequent registrations in International Classes 9, 14, 25 and 28 followed in 2000. Also from 2000, the Complainant secured registrations for KIPLING alone in relation to those classes.
The disputed domain name was first registered on December 14, 2000.
According to the Respondent, he bought it at public auction in July 2016.
The Respondent also says he conducts a business of investing in premium domain names with the primary purpose of selling them or developing them if opportunity arises. He says he has about 5000 such domain names, giving as examples <goldsmith.org>, <ezekiel.net>, <marigold.org>, <annamarie.uk>, <applegate.net>, <sergeant.net>, <carsoncity.net>, <fulham.net>, <custart.net>, <goldbar.uk>.
It is not in dispute between the parties that, since the Respondent acquired the disputed domain name, it resolves to a "parking page" which includes in the header a banner "Inquire About this Domain Name". The object of course being to solicit inquiries from potential buyers.
When the Complaint was filed, the webpage also featured five pay-per-click ("PPC") links.
The nature of those links and the circumstances by which they came about is a matter of some dispute and is best discussed below in context. The website also includes a "disclaimer":
"The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in Whois)."
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate 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; and
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Language of the Proceeding
The Complainant has requested that the proceeding be conducted in Spanish. The Respondent opposes that request.
The Registrar has confirmed that the language of the registration agreement is English. Under the Rules therefore, paragraph 11 provides that English is the default language unless the parties otherwise agree or there is some other good reason to use a different language. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.5.
The Complaint includes materials showing that the website to which the disputed domain name resolves includes links to retailers offering goods for sale in Mexico in the Spanish language. It is often a strong reason for using a different language to the default language of the registration agreement where the Respondent's website in that different language.
The Respondent, however, is based in the United Kingdom. He says he does not speak or read Spanish and has never been to Mexico. Moreover, he has provided evidence showing that the links viewable by a user in Mexico (as submitted by the Complainant) are different to the links which a user in another part of the world, such as the United Kingdom where the Respondent is based, are not in Spanish. As one might expect, the links viewable from the United Kingdom are in English.
The Panel notes that the Complainant is itself based in the United States and, while its representatives are based in Mexico, it has been able to submit a translated Complaint in reasonably clear English. It does not appear, therefore, that the Complainant is or will be unduly inconvenienced by the proceeding continuing in English. On the other hand, it does appear that the Respondent will be significantly disadvantaged.
In all the circumstances, therefore, the Panel declines the request for the language of the proceeding to be Spanish.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks in Mexico for KIPLING alone and also with figurative elements.
The disputed domain name, disregarding the generic Top-Level Domain ("gTLD"), ".net", is identical to the registrations for KIPLING alone. KIPLING is also the significant, verbal element of the Complainant's other registrations.
The Respondent argues that the word KIPLING is a common English name, not owned by any single person. The Respondent also points out that the Complainant's trademarks are limited to the specific goods covered in the registrations and do not give the Complainant exclusive rights over all possible uses of the name KIPLING.
This misunderstands the nature of the inquiry at this stage. All the inquiry involves at this stage is simply a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademarks for KIPLING and confusingly similar to those with figurative elements. The requirement under the first limb of the Policy is satisfied.
C. Registered and Used in Bad Faith
In the present case, it is appropriate to consider the requirement that the disputed domain name be registered and used in bad faith next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant points to its long ownership and use of its trademarks in Mexico and the use of the disputed domain name to resolve to a website with PPC links to retailers of bags from competing brands. It contends these establish that the Respondent registered the disputed domain name to divert traffic from the Complainant.
The Panel finds that the use of the disputed domain name to resolve to a website with PPC links to goods falling within the Complainant's trademark rights, but not sourced from the Complainant, constitutes use in bad faith under the Policy. See, e.g., Hobbex AB v. Vertical Axis Inc., Domain Administrator / Whois Privacy Services Pty Ltd, WIPO Case No. D2013-2111. In that connection, the Panel notes that it does appear to be the case that such "competitive" links feature on the "Mexican" version of the Respondent's website.
The Respondent does say that he was unaware that such links were being included on the website until receipt of the Complaint in this proceeding. As the Hobbex case, above, shows, however, it has long been established under the Policy that a responsibility to avoid trading on the trademark significance of a term included in a domain name falls on the registrant. It is not clear from a review of the website of the service provider, ParkingCrew.com, whether and to what extent the Respondent could control what links are included on the website. The Response appears to suggest that the Respondent may have had that possibility. In any event, a registrant of a domain name cannot avoid the consequences under the Policy of use which takes advantage of the trademark significance of a domain name by choosing a service provider who does not allow such control. Having made such a choice, the registrant must bear the consequences.
For these reasons also, the "disclaimer" included on the Respondent's website does not excuse the conduct.
It is also necessary for the Complainant to show that the registration of the disputed domain name was in bad faith. As the Panel explained in the Hobbex case, above, that will require careful consideration of the facts of the particular case.
In the present case, the Respondent denies knowledge of the Complainant when he acquired the disputed domain name. As noted above, the Respondent points out that it is a common or well-known English name; there being, according to the Respondent, hundreds of company names in the United Kingdom using it. He says he acquired it as part of his business of buying and selling domain names which reflect common words or phrases. He disclaims any intention to trade on the Complainant's trademark or reputation.
The Respondent says anyone doing a Google search on "kipling" will not receive a listing showing the disputed domain name. That appears to be correct, at least for the first two pages of search results.
The Respondent also provides evidence that the disputed domain name resolved to a website which was just a parking page with a statement that "This domain name is for sale" and a "contact us" form. That is, there were no PPC links on the webpage. He says this was the case until December 2017 when he "was having issues" with the then registrar and moved the registration to the current registrar. When moving the registration, the Respondent says he did not change the default setting which points to the current form of website with PPC links.
A review of the websites archived in the Wayback Machine at "www.archive.org" supports the Respondent's contentions. The version of the website with PPC links, therefore, appears to have emerged shortly after March 23, 2018.
In the particular circumstances of this case, the Panel does not think it can be concluded that the disputed domain name was registered in bad faith. Bearing in mind the Respondent's express denial of knowledge of the Complainant's trademark, the fact that the disputed domain name resolved to a website which did not include PPC links for almost 17 months after the Respondent acquired the disputed domain name is not suggestive of a registration of the disputed domain name to take advantage of its significance as the Complainant's trademark.
The Complainant does assert its trademark has acquired a reputation over the years for high quality and prestige. The Panel's own Internet searches indicate that the Complainant operates on a larger scale than just Mexico. The evidence included in the Complaint to support the claim of the worldwide reputation falls well short of what would be required to override the Respondent's express denial, given the nature of "Kipling" as a name and the way the Respondent "parked" the disputed domain name for 17 months.
As the Complainant has not established that the disputed domain name was registered in bad faith, the Complaint must fail. Given that, no good purpose would be served by considering whether the second requirement under the policy – whether the Respondent has rights or a legitimate interest in the disputed domain name – has been satisfied.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: June 8, 2018