WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Keys-Properties v. Registration Private, Domains By Proxy, LLC / Soday Kanu
Case No. D2018-1571
1. The Parties
The Complainant is Keys-Properties of Monaco, represented by In Concreto, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottdale, Arizona, Unites States of America / Soday Kanu of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK").
2. The Domain Name and Registrar
The disputed domain name <keysinvestmentmgt.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 July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2018, 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 July 25, 2018, 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 July 26, 2018.
The Center verified that the Complaint together with 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 July 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 20, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 27, 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 is part of a Luxembourgian group holding called "KEYS ASSET MANAGEMENT", who is present in six countries around Europe and Africa and who holds 12 companies which names are for the large majority of them, composed with the same basis KEYS together with descriptive words such as the name of the UK company "KEYS Investment Management".
The Complainant is specialized in the acquisition, restructuring, development, and management of real estate assets and hold trademark rights to the name KEYS including the European Union Trademark No. 13822838 KEYS filed on March 13, 2015 and registered on July 2, 2015 in class 36.
The group is also the owner of several domain names containing the word "keys" such as <keys-reim.com> and <keys.im.com> and the main website is found at "www.keys-am.com".
The disputed domain name <keysinvestmentmgt.com> was registered on October 30, 2017, and resolves to an active website.
5. Parties' Contentions
The Complainant asserts the disputed domain name is confusingly similar to the trademarks in which the
Complainant has rights, since it contains the Complainant's mark KEYS in its entirety with the addition of the term "investment" and the addition of the common abbreviation of the descriptive term "management" namely "mgt".
The Complainant further asserts that the Respondent has no rights or legitimate interests to the disputed domain name. The Complainant has not authorized, licensed, or permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating the Complainant's trademark. A closer look at the company "KEYS INVESTMENTS LIMITED" that is listed on the website reveals that it is incorporated for the principal business activity of "Licensed restaurants", which is different from the one proposed on the disputed domain name's website. In addition, the addresses that are listed on the website contains one of the Complainant's UK addresses as well as a false address. The identified company on the website is thus a priori fictitious.
Finally, the Complainant asserts that the disputed domain name was registered and is used in bad faith. The denomination KEYS is distinctive in the field of asset management, and it is unlikely that the Respondent chose the disputed domain name <keysinvestmentmgt.com> without any knowledge of the Complainant´s trademark and of the Complainant's identical UK company name. Further, many of the elements of the website indicate that the Respondent's purpose is to disrupt the business of the Complainant or to capitalize on the reputation of it. The Respondent thus uses the almost identical reproduction of the name of the UK company of the Complainant's holding, namely "KEYS Investment Management" just as the contact information page makes use of the exactly same address as the Complainant's UK company head office, which would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the registrant's website among users of the Internet who would be led to believe that such a website would be owned by, controlled by, established by or in some way associated with the Complainant. In addition, the website is not used for a real business activity since there is not any possibility to contact, email or mail the managers neither to access to the services offered.
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.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <keysinvestmentmgt.com> is confusingly similar (in the sense of the Policy) to the Complainants' registered trademark KEYS. The disputed domain name incorporates this mark in its entirety with the addition of the term "investment" and the well-known acronym for "management" "mgt". The generic Top-Level Domain ".com" does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainants have not licensed or otherwise permitted the Respondent to use their trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been and is using the disputed domain name (discussed below) the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the evidence on record including the distinctive nature and the reputation of the mark KEYS and the fact that the disputed domain name resembles the name of the Complainant's UK company "KEYS Investment Management", it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and of the Complainant's mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name is used for a website on which the Respondent uses the Complainant's trademark KEYS and the name of the Complainant's UK company "KEYS Investment Management" and on which the Respondent purports to offer services that are identical to the services offered by the Complainant, This clearly gives Internet users the impression that the website is an official website of the Complainant or a website that is authorized by the Complainant, which is not the case. The Panel therefore finds that the Respondent by its registration and use of the disputed domain names intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain names with the purpose of attracting Internet users to the websites for commercial gain as per paragraph 4(b)(iv) 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 <keysinvestmentmgt.com> be transferred to the Complainant.
Date: September 18, 2018