WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BasicNet S.p.a. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Benjamin Pearce
Case No. D2021-0944
1. The Parties
The Complainant is BasicNet S.p.a., Italy, represented by Sindico e Associate, Italy.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Benjamin Pearce, Australia.
2. The Domain Name and Registrar
The disputed domain name <k-way-usa.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 March 29, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2021, 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 March 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on March 31, 2021. The Complainant filed an amendment to the Complaint on April 4, 2021. The Center received another email communication from the Respondent on April 4, 2021.
The Center verified that the Complaint, together with the amendment to 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Center received another email communication from the Respondent on April 7, 2021. On April 29, 2021, pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 5, 2021. 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 an Italian company, part of a corporate group, which is engaged in the business of designing, manufacturing, and marketing casualwear, sportswear, and accessories under various brands including the trademark K WAY. The Complainant operates globally, selling its products through on-site and online commerce, being its main e-commerce website “www.k-way.com”.
The Complainant holds trademark registrations that comprise the terms “k way”, “k-way” and “k.way” in various jurisdictions around the world, including the following:
- European Union Trademark Registration No. 857557 K.WAY, word, registered on September 15, 1999, 2019, in classes 3, 9, 12, 14, and 16;
- Hong Kong Trademark Registration No. 301223937 K-WAY, word, registered on October 20, 2008, in class 18; and
- International Trademark Registration No. 1024790 K WAY, word, registered on November 11, 2009, in classes 3 and 16, (collectively the “K WAY mark”).
The Complainant further owns numerous domain names comprising the K WAY mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites, including <k-way.com>, which was registered on January 20, 20001 .
The disputed domain name was registered on October 8, 2018, and it is currently inactive resolving to an “under construction” page. According to the evidence provided by the Complainant, the disputed domain name was linked to a website, in English language, allegedly offering “Big Deals On K-WAY Clothes” (displayed at the top of the website in all capital letters with a clickable button entitled, “Shop Now”, displayed underneath) and displaying numerous photographs of the Complainant’s products including their prices in USD. This website did not include any reference to the identity and contact details of the owner of the site or the disputed domain name, and/or its lack of relationship with the Complainant.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The disputed domain name is confusingly similar to the K WAY trademark, as it fully includes this mark, adding the geographical term “usa”. The K WAY mark is clearly recognizable in the disputed domain name.
The Respondent has no rights nor legitimate interests in respect of the disputed domain name, because the Complainant has never authorized any third party to register any domain names including the K WAY mark.
The disputed domain name was registered and is being used in bad faith. Due to the worldwide use and reputation, as well as the distinctiveness of the K WAY mark, the Respondent knew or should have known about this trademark at the time of the registration of the disputed domain name. A simple search of trademarks registries worldwide would have revealed the Complainant’s trademarks. The Respondent’s primary purpose in registering and maintaining the disputed domain name is abusive, intentionally attempting to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant has cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
However, the Respondent forwarded various email communications to the Center (on March 31, April 4, and April 7, 2021) indicating its intention to transfer the disputed domain name to the Complainant, and requesting information about how to implement this transfer.
In its first communication, the Respondent offered the transfer of the disputed domain name “for a reasonable price” including a link to a platform (Afternic.com) where the disputed domain name had been added for sale. After the Complainant’s refusal to purchasing the disputed domain name, on a second email communication, the Respondent indicated its unilateral consent to transfer it to the Complainant, and requested information about how to implement this transfer on a third email communication.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered trademark K WAY, by virtue of its trademark registrations. The disputed domain name incorporates the K WAY mark adding the geographical term “usa” separated by a hyphen, and the gTLD “.com”, which is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The K WAY mark is recognizable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. See sections 1.7, 1.8, and 1.11, of the WIPO Overview 3.0.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
The Panel notes that there is no indication or evidence in the file showing that the Respondent is commonly known by the disputed domain name or owns any trademark including the terms “k-way” or “k-way-usa”, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name.
As the disputed domain name was connected to a website related to the Complainant’s business sector, it is relevant to mention that resellers, distributors or other third parties using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have rights or legitimate interests in such domain name, only if the cumulative requirements commonly known as the “Oki Data test” (referring to Oki Data Americas., Inc. v. ASD, Inc., WIPO Case No. D2001-0903) are met. See section 2.8, WIPO Overview 3.0.
According to the evidence provided by the Complainant, the Panel notes that the disputed domain name has been used in connection with a website allegedly offering “Big Deals On K-WAY Clothes”, displaying numerous photographs and promotional content directly related to the Complainant’s products, without including any reference to its lack of relationship with the Complainant, which cannot be considered a bona fide offering of goods or services. This website impersonated the Complainant or one of its retail partners or subsidiaries, creating confusion as to the source of the website, not meeting the requirements of the “Oki Data” test.
Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding a geographical term (“usa”), which also may point to the Complainant and its trademark, as an indication related to its online store for this jurisdiction, enhancing the affiliation to the Complainant and its trademark. Therefore, the Panel considers that there is a risk of implied affiliation. Furthermore, the fact that the Complainant operates various corporate websites under domain names comprising its trademark K WAY, some of them related to different jurisdictions increases the risk of confusion and affiliation.
It is further remarkable the Respondent has not substantively replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as rights or legitimate interests in the disputed domain name. On the contrary, the Respondent has apparently taken down its website, offering the transfer of the disputed domain name “for a reasonable price” to the Complainant, and, after the Complainant’s refusal to such offer, allegedly accepting its transfer with no compensation.
In the Respondent’s email communication of April 4, 2021, the Respondent remarks that, “the links on the website [at the disputed domain name] lead to K-way official Amazon store”. Additionally, the evidence provided by the Complainant of the website to which the disputed domain name resolved included a statement at the footer of the website, reading:
“Amazon Affiliate Policy [in all capital letters]
k-way-usa.com is a participant in the Amazon Services LLC Associate Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to amazon.com.”
Accordingly, the Respondent was making commercial use of the disputed domain name by redirecting users to Amazon.com. Such a redirection scheme for commercial gain does not support a claim by a respondent to rights or legitimate interests in the disputed domain name. See for instance Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991, and Consumer Reports, Inc. v. Domains By Proxy, LLC / Khorn Youra, WIPO Case No. D2021-0869 (discussing the misuse of domain names by Amazon affiliates).
All the above-mentioned circumstances lead the Panel to conclude that the Respondent lacks of any rights or legitimate interests in the disputed domain name, and the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s K WAY mark in its entirety adding a geographical term (“usa”), which enhances the likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to one of the Complainant’s official websites or its retail partners and subsidiaries’ official websites, suggesting sponsorship or endorsement by the Complainant;
(ii) the Complainant operates internationally including Australia (where the Respondent is located according to the Registrar verification), and the United States (to which the geographical the term “usa”, included in the disputed domain name, refers);
(iii) the Panel has corroborated that the K WAY mark has a strong presence over the Internet, being at least notorious in its sector and probably reputed in some jurisdictions, albeit the evidence provided by the Complainant is not conclusive in this respect;
(iv) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;
(v) the disputed domain name was linked to a website allegedly offering the Complainant’s products at a reduced price, including unauthorized promotional content directly related to the Complainant’s products;
(v) the website that was linked to the disputed domain name has been apparently taken down; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to substantively reply to the Complaint and being its first reaction to offer the transfer of the disputed domain name “at a reasonable price” to the Complainant.
It is to be noted that the non-use of a domain name (including an “under construction” or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant’s K WAY mark with the intention of obtaining a free ride on its established notoriety, seeking to mislead and attract Internet users to a commercial website offering discounted products of the K WAY mark, impersonating the Complainant’s or one of its retail subsidiaries for the United States jurisdiction, which constitutes bad faith. Furthermore, the disputed domain name prevents the Complainant from reflecting its trademark in a domain name including its trademark and a geographical term related to a jurisdiction where the Complainant operates, which may disrupt the Complainant’s business.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of paragraph 4(a) 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 <k-way-usa.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: May 14, 2021
1 The Complainant indicates in the Complaint that it owns the following domain names: <k-way.biz>, <k-way.net>, <k-way.it>, <k-way.dk>, <k-way.nl>, <k-way.sk>, <k-way.uk>, <k-way.fr>, <k-way.jp>, <k-way.eu>, <k-waykr.com>, <k-way.pt>, <k-way.de>, <k-wayroma.it>, <k-way.cl>, <k-way.net.cn>, <k-way.fi>, <k-way.com.au>, <kway.no>, <kway.uk>, <kwaybrasil.com.br>, <kway-korea.com>, <kway-korea.net>, <kway.pt>, <kway.xn--fiqs8s>, <kwaycanada.com>, <kway.sport, kway.fi>, and <kway4shop.com>.