WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kiko Technology Limited v. Robert Gibellini
Case No. D2018-1814
1. The Parties
Complainant is Kiko Technology Limited of Hong Kong, China, internally represented.
Respondent is Robert Gibellini of Bibra Lake, Western Australia, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <kikotechnology.com> (the “Domain Name”) is registered with TPP Wholesale Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a first amended Complaint on August 23, 2018. In response to a request for clarification by the Center, Complainant filed a second amended Complaint on August 29, 2018.
The Center verified that the Complaint together with the first and second amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. An informal communication from Respondent was filed with the Center on September 11, 2018. On September, 18, 2018, Complainant filed a supplemental filing with the Center. The Response was filed with the Center on September 19, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 2, 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
Complainant is a technology company incorporated in Hong Kong, China on April 13, 2011. Complainant owns the KIKO TECHNOLOGY trademark, Hong Kong, China registration No. 30237026, registered September 6, 2012.
According to the WhoIs record, the Domain Name was initially registered on April 30, 2010. Complainant has submitted evidence to show that it obtained the registration of the Domain Name on or about February 14, 2011 and made annual payments to maintain the Domain Name’s registration, with the last payment made in May 2015 for a one-year renewal. The payments were made by Nari Kikue Osugi, a director of Complainant and the daughter of Complainant’s founder, James Osugi.
Complainant used a computer server in connection with the administration and hosting of the Domain Name, which was located at Nari Osugi’s residence in San Francisco, California. A fire occurred outside her residence, with water from fire hoses causing damage to the server. Following this incident, the Domain Name’s registration was transferred to Respondent. Complainant states that Respondent was acting only as custodian until Nari Osugi could resume the administration of the Domain Name. Respondent was a director of Kiko Technology Australasia Pty Ltd. from mid-2013 until he was terminated for cause on June 1, 2015.
In an email dated September 29, 2014, Respondent agreed to return the Domain Name to Complainant, stating that “he would obey and return the domain to its rightful owner”. However, Respondent transferred the registration of the Domain Name to himself and his company, First Page Pty Ltd. (“First Page”), located in Australia. On June 1, 2015, Respondent was terminated from Kiko Technology Australasia Pty Ltd. for cause.
Complainant states that it did not authorize Respondent to transfer the registration of the Domain Name to his company, First Page. Complainant approached the Registrar, TPP Wholesale Pty Ltd., to request return of the Domain Name to Complainant. However, the Registrar did not comply with Complainant’s request.
Respondent has posted a notice on the website linked to the Domain Name, which states that the “SITE IN DEFAULT” and further states in relevant part that:
“KIKO TECHNOLOGY WEBSITE HAS BEEN SHUT DOWN BEING IN PAYMENT DEFAULT! THEY HAVE SET UP A NEW SITE KIKOTECHNOLOGY.ORG WHICH IS IN BREACH OF COPYRIGHT AND CONTAINS FALSE INFORMATION THAT MUST NOT BE TRUSTED!”
In response to these circumstances, Complainant now uses the domain name <kikotechnology.org> for its website and operations.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. In particular, Complainant is the owner of the KIKO TECHNOLOGY trademark, registered in Hong Kong, China.
(ii) Rights or legitimate interests
Complainant states that Respondent has no right or legitimate interest in respect of the Domain Name, as Respondent’s services were terminated on June 1, 2015, and Respondent was supposed to return to Complainant all of Complainant’s property, including the Domain Name.
Complainant explains that a computer server used in connection with the administration of the Domain Name was located at Nari Osugi’s residence in San Francisco, California. Following a fire which occurred outside her residence but with water causing damage to the server, Respondent agreed to be custodian of the Domain Name until Nari Osugi could resume the administration of the Domain Name. Complainant submits that prior to the June 1, 2015 termination notice issued to Respondent, Respondent acknowledged in a September 29, 2014 email that “he would obey and return the domain to its rightful owner”. Complainant states that while Respondent acknowledged in writing that he would return the Domain Name, instead he acted maliciously, secretly and without Complainant’s approval to transfer the Domain Name to First Page, a private company located in Western Australia and wholly owned by Respondent. Complainant contends that Respondent abused his fiduciary responsibilities as a director by secretly transferring the ownership of assets, including the Domain Name, website, email administration and passcodes, and related intellectual property to First Page. The transfer was made without the approval or knowledge of Complainant, its management and board of directors.
Complainant states that its intellectual rights (including Domain Name) were established from the onset of the incorporation of Complainant in 2011, at a time when Respondent was unknown to Complainant. Respondent’s behavior has been disruptive since he was dismissed from the business relationship with Complainant on June 1, 2015.
Complainant states it is not sure of the date when Respondent transferred the Domain Name without authorization to his company, First Page. Complainant alleges this was an act of dishonesty, fraud and deceit, intended to damage the reputation of Complainant and its founder, James Osugi. Respondent is not a director or shareholder of Complainant, nor was he given permission as a temporary custodian of the Domain Name to transfer its registration to a company that he owned, First Page.
(iii) Registered and used in bad faith
While Respondent claims there were out-of-pocket expenses related to his time as custodian of the Domain Name, Complainant states that the costs to host the Domain Name were pre-paid by Complainant’s director, Nari Osugi. Moreover, Complainant has submitted evidence to show that the expenses to prepare the website that was linked to the Domain Name were paid fully by Complainant, as were the legal fees to file the KIKO TECHNOLOGY trademark. Thus, Complainant asserts that the fees that Respondent is now demanding are tantamount to a ransom for the Domain Name.
Supplemental Filing: Complainant submitted a supplemental filing with the Center on September, 18, 2018, emphasizing that this is a case of domain name theft, as well as Complainant being threatened by Respondent to extort money in return for the Domain Name. Complainant asserts that the definition of “theft” is a person who steals another person’s property, especially by stealth, without the consent of the owner and with the intention of depriving the owner of it permanently. Complainant states that it has submitted evidence to demonstrate clearly that the ownership of the Domain Name belonged to Complainant from Complainant’s inception in February 2011 and that the relevant fees for the Domain Name were paid by Complainant until May 15, 2015. Complainant asserts that at no time was Respondent given authority to steal the Domain Name and transfer its registration to Respondent’s company, First Page.
On September 11, 2018, Respondent sent an email to the Center, stating in relevant part as follows:
“The complainant is currently avoiding resolving a commercial dispute and now attempting to use [WIPO] as a path to regaining ownership of the said domain.
My company holds this domain legally and retains it as security with commercial charge over it. First Page Pty Ltd has previously advised Mr Osugi that he can regain ownership and control of this domain following a satisfactory payment of the outstanding amounts owed by his company. To date he has refused to so.
Does WIPO want to engage in this commercial dispute or is this outside your guidelines?
Once I have received your acceptance and confirmation that any commercial liability caused by WIPO becoming involved is accountable by and claimable against WIPO engaging in this commercial dispute i will accept involvement by your organisation.
My advice currently is that your organisation will not and should not become involved in a commercial financial dispute. I will arrange my legal council [sic] to respond accordingly following your considered response to this advice”.
On September 19, 2018, Respondent filed his Response, requesting that the Panel deny the remedies requested by Complainant.
Respondent states that Complainant has made accusations that are false and misleading in an attempt to evade commercial responsibility for its actions. Respondent states that he, as a director of First Page, is the registered legal owner of the Domain Name and holds it as security for services that were rendered to Complainant. In particular, Respondent contends that Complainant has no right to request that the Domain Name be transferred to Complainant without firstly resolving the outstanding commercial issues between the parties. Respondent emphasizes that this dispute can be resolved by Complainant providing a fair and equitable settlement to pay for the services rendered to Complainant by First Page and himself. Respondent argues that, should Complainant not wish to do so, then Complainant will not receive the transfer of the Domain Name.
Respondent states that his company First Page is a retail supplier of domain name and website services and management. Respondent claims that First Page was engaged on a commercial basis by Complainant to receive the transfer of and the ongoing management and support of the Domain Name. Respondent further states that in order for a domain name to be registered, the certificates and registration must to be completed to the satisfaction of the registrar and any transfer requires original password and logins. Thus, Respondent asserts that it was not possible to steal the Domain Name, as Complainant has asserted. Respondent contends that Complainant incorrectly claims that no authorization was provided for the relocation of the Domain Name’s registration. However, all required documents and passwords were supplied and authorized by the then current holders, James Osugi and his daughter, Nari Osugi, to Go Daddy for the legal transfer and management of the Domain Name to the current holder, Respondent as director of First Page. Respondent states the Domain Name has been held under this current structure following its transfer in 2014. Respondent states the Domain Name is held as security for a commercial dispute and will continued to be held as security in regards to this dispute until Complainant chooses to resolve the outstanding financial issues.
Respondent contends that Complainant’s claim that it paid for all expenses is scurrilous. Respondent states that not only was he an authorized representative of Complainant in Australia, but he was also a director of Complainant, the Hong Kong company. Respondent states that the fact that he held office in both organizations – for Complainant and also as a director of his company, First Page – was merely one of convenience for the benefit of supplying the required services between the two operations. Respondent states he had full operational control of much of Complainant’s international business, including the technology applications, and had been authorized to arrange the establishment of all services with a new provider. This provider was First Page. Respondent states that First Page provided services and credit to Complainant. Respondent claims Complainant promised large returns and payment, and these commitments were understood by Respondent at the time as honest and trustworthy. However, Respondent asserts that Complainant lied about this and to-date has failed to make good on these commitments. When Complainant decided the relationship was over, it refused to pay outstanding fees and charges owed to Respondent and First Page for services rendered. Respondent states that it is this issue that has resulted in the Domain Name being linked to a website with the posted “default notice” to forewarn other suppliers who might be considering placing trust in Complainant.
Respondent states that Complainant has received a commercially responsible letter of claim for settlement, but Complainant has made no serious attempt to negotiate a fair outcome. Rather, Complainant has avoided responsibility to pay the amounts owed and wasted time by frivolous attempts to obtain ownership of the Domain Name through alternative means.
Regarding Respondent’s email dated September 29, 2014 – which Complainant claimed proves Respondent’s agreement to return the Domain Name – Respondent states that the commercial dispute between the parties arose in 2015, so this fact alone makes the email of 2014 irrelevant. Respondent asserts that once Complainant’s liability is removed by commercial settlement to First Page, then Respondent will not need to hold the Domain Name for any further purpose. Respondent states “[t]hat is where the liability is for the Domain Name and that is where it is to remain until he settles”.
Respondent states that the security and maintenance of the “default notice” on the website linked to the Domain Name will remain in place as a public notice. Respondent claims that as with all organizations that need to make other providers of credit aware of risky or untrustworthy people and organizations, this is a legal and valued procedure. Finally, Respondent contends that the fact Complainant avoided paying his liabilities, then registered the similar domain name <kikotechnology.org> and relocated the hosting, website and email servers, is evidence that Complainant is prepared to pay for services when it suits Complainant.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its trademark, KIKO TECHNOLOGY, based on ownership of the trademark’s registration in Hong Kong and use of the KIKO TECHNOLOGY mark in commerce. Further, the Panel determines that the Domain Name is identical or confusingly similar to the KIKO TECHNOLOGY mark. The Domain Name incorporates the mark in its entirety, while only adding the “.com” suffix.
Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines, on the balance of the probabilities, that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, while Respondent has failed to provide evidence or justification to demonstrate any right or legitimate interest in the Domain Name.
Respondent is not commonly known by the Domain Name, nor has Respondent used it in connection with a bona fide offering of goods or services. Instead, this dispute centers on Respondent’s asserted explanation for why he is holding the registration of the Domain Name, which is admittedly identical to Complainant’s KIKO TECHNOLOGY trademark. Respondent claims that he is holding the Domain Name as “security” in connection with a commercial dispute with Complainant, and that he will continue to hold it until Complainant chooses to resolve outstanding financial issues by making payment to Respondent and his company, First Page. Indeed, Respondent has acknowledged that once Complainant’s asserted liability is removed by commercial settlement to First Page, then Respondent will not need to hold the Domain Name for any further purpose.
The Panel finds that Respondent’s statements, even if accepted as true, do not give rise to any right or legitimate interest in the Domain Name. Respondent has not claimed, nor submitted any evidence to show, that Complainant intended to transfer ownership of the Domain Name to Respondent. Moreover, no evidence has been submitted to show that there is any agreement between the parties under which Respondent was permitted to hold the Domain Name as “security” for any payment allegedly owed by Complainant to Respondent and his company, First Page.
Instead, Complainant stated that after a computer server used in connection with the administration of the Domain Name was damaged due to a fire, Respondent agreed to be custodian of the Domain Name until Nari Osugi, one of Complainant’s directors, could resume administration of the Domain Name. Respondent has not disputed this explanation. In addition, before Respondent’s termination in June 2015 and the dispute over money arose between the parties, Respondent in an email dated September 29, 2014 agreed that “he would obey and return the domain to its rightful owner”.
Based on Respondent’s own admissions, the Panel determines that he is holding the Domain Name without any right or legitimate interest in it. Even if there is merit to Respondent’s claim that he is owed money by Complainant – a point as to which the Panel makes no finding – this would not justify his self-help action of transferring the Domain Name into his own name and holding it as leverage for a financial dispute. Similarly, for example, an employee of a furniture store who claims that he is owed money by his employer cannot simply (and without authorization) remove valuable items from the store and hold them until he is paid. Such action would arguably amount to unlawful conversion – that is, exerting unauthorized use or control over someone else's property. Moreover, Respondent has placed a “default notice” described above on the website linked to the Domain Name in an effort to disparage Complainant and confuse Complainant’s potential customers. Given the circumstances of this case, such use of the Domain Name does not amount to legitimate noncommercial or fair use.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Moreover, section 3.1 also provides in relevant part that:
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden (italics added).”
Here, the Panel determines that Respondent is taking unfair advantage of, abusing, and otherwise engaging in behavior detrimental to Complainant’s KIKO TECHNOLOGY trademark. Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith.
First, based on the evidence, there is no dispute that Respondent, as a former employee, was aware of Complainant and its KIKO TECHNOLOGY trademark. Second, in this case the evidence indicates that Respondent without authorization transferred the Domain Name into his own name and is holding it as ransom in connection with an alleged financial dispute with Complainant. As explained above, even if Respondent’s contention has merit that he and his company First Page are owed money by Complainant, this circumstance does not justify his actions with respect to the Domain Name, including the transfer of ownership, holding it as ransom, and linking it to a website intended to disparage Complainant and cause confusion among consumers looking for information about Complainant and its services. Such self-help measures in this case provide a basis for the Panel’s ruling that the Domain Name was registered and is being used in bad faith.
Finally, Complainant has alleged in its Complaint that Respondent was banned by the Australian Securities and Investments Commission (ASIC) from acting as a financial advisor on grounds of dishonesty and misleading his clients. The Panel makes no finding regarding this allegation. However, the Panel observes, as a matter of public record, that ASIC proposed to deregister Respondent’s company, First Page, on December 16, 2014, and the company was subsequently deregistered as of February 16, 2015.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kikotechnology.com> be transferred to Complainant.
Christopher S. Gibson
Date: October 30, 2018