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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kirk Kapital A/S v. Privacy Service Provided by Withheld for Privacy ehf / Kirk Kapital

Case No. D2021-4079

1. The Parties

The Complainant is Kirk Kapital A/S, Denmark, represented by Gorrissen Federspiel, Denmark.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf / Kirk Kapital, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kirkkapitalgroup.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 8, 2021, providing the Respondent 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 December 10, 2021.

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 December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 7, 2022. 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 a large investment company managing family-owned capital and controls a large portfolio of companies. The owners and shareholders of the Complainant are descendants of Ole Kirk Kristiansen, the founder of the globally renowned toy manufacturer, LEGO. The Complainant has adopted the name Kirk Kapital” extensively for its business operations, company name, and business designation since its establishment in 2007.

Thus, the Complainant has obtained an exclusive right to the trademark KIRK KAPITAL through extensive use. The Complainant is also the owner of a number of trade mark registrations for the “KIRK KAPITAL” mark including, inter alia, the EU trademark Registration No. 006368914 (figurative) “KIRK KAPITAL”, registered on July 15, 2008 and UK trademark Registration No. UK00906368914 (figurative) “KIRK KAPITAL”, registered on July 15, 2008, (“The Complainant’s trademark”). The Complainant also holds a registration for <kirkkapital.dk> which resolves to the Complainant’s website, “www.kirkkapital.dk”.

The Disputed Domain Name was registered by the Respondent on July 6, 2021. The Disputed Domain Name previously displayed a webpage offering investment plans, but now currently resolves to an inaccessible webpage.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is confusingly similar and nearly identical to the Complainant’s trademark and business name Kirk Kapital as well as the Complainant’s domain name <kirkkapital.dk>. The Complainant’s trademark is reproduced in its entirety in the Disputed Domain Name. The only element which differentiates the Complainant’s trademark and domain name from the Disputed Domain Name is the addition of the word “group”.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorized or given permission to the Respondent, who is not associated with the Complainant in any way, to use its KIRK KAPITAL trade mark or to register the Disputed Domain Name. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

(c) The Respondent’s registration of a domain name which completely incorporates the well-known KIRK KAPITAL trade mark is in itself an act of bad faith by someone with no legal connection to the Complainant’s business. In fact, the Respondent’s website previously stated that it was operated by “Kirk Kapital” and described itself as an investment firm that commenced its operations on December 19, 2007, i.e. exactly the same date the Complainant was registered with the Danish Business Authority. The address displayed by the Respondent is the Complainant’s address, and the picture of Complainant’s CEO was also used on the Respondent’s website. Lastly, the Respondent’s website incorporated a link to the “Company registration” information of the Complainant, which included the Complainant’s company registration number. By inviting customers to pay for the Respondent’s “investment plans” on their website, while giving customers the impression that the Disputed Domain Name belonged to the Complainant, the Respondent’s actions amounted to opportunistic bad faith, even fraud, and could entail significant damage to the Complainant’s business and goodwill.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the KIRK KAPITAL trade mark, based on its various trade mark registrations and rights to domain names such as, inter alia, the EU trademark Registration No. 006368914 (figurative) “KIRK KAPITAL”, registered on July 15, 2008 and UK trademark Registration No. UK00906368914 (figurative) “KIRK KAPITAL”, registered on July 15, 2008, (“The Complainant’s trademark”). The trademark KIRK KAPITAL is also the domain name of the Complainant’s well-known Country Code Top-level Domain (“ccTLD”) website, “www.kirkkapital.dk”.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension, “.com” in this case, may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s trade mark in its entirety with the addition of the descriptive term “group”. UDRP panels have consistently found that the addition of other terms to a mark (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The Panel therefore finds that the mere addition of the suffix “group” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the Complainat’s KIRK KAPITAL trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the KIRK KAPITAL trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate non-commercial or fair use as the Respondent appears to have registered the Disputed Domain Name solely for the purpose of misleading potential investors by fraudulently appropriating Complainant’s reputation and its KIRK KAPITAL mark.

In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.

After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that the Complainant’s trademark appears to be fairly well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “KIRK KAPITAL” are the Complainant’s websites and third party websites providing information relating to the Complainant’s investment business. Therefore, taking this into consideration together with the fact that the Disputed Domain Name incorporates the Complainant’s trade mark in its entirety with the addition of the descriptive term “group”, and that the website to which the Disputed Domain Name resolves was previously attempting to attract investors through so-called “investment plans”, whilst reproducing images, Company Registration information, and addresses belonging to the Complainant, the Respondent must have been aware of the Complainant and the rights in the Complainant’s trade mark when registering the Disputed Domain Name.

The Panel also agrees with the Complainant that, given the nature of the Complainant’s business and the fact that the Complainant operates a fraudulent group purportedly specialising in investment plans, the addition of the term “group” may increase the possibility of Internet users being led to believe that the Disputed Domain Name is owned by or associated with the Complainant.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name.

(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains the Complainant’s well-known trademark in its entirety (with the addition of a descriptive term “group”). The Respondent used the Disputed Domain Name to offer “investment plans” when no legitimate business is in fact being performed. The Respondent has not demonstrated any attempt to make legitimate use of the Disputed Domain Name and the website to which it resolves, which evidences a lack of rights or legitimate interests in the Disputed Domain Name, as confirmed by past Panels (see Washington Mutual, Inc., v. Ashley Khong, WIPO Case No. DH2005-0740).

(iii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193).

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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, <kirkkapitalgroup.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: January 17, 2022

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