WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jean-Marie Loirat and Kinetik Sport v. Nicky Allard, KinetikSport GmbH
Case No. DEU2021-0008
1. The Parties
The Complainant is Jean-Marie Loirat, France (“First Complainant”) and Kinetik Sport, France (“Second Complainant”), represented by GBA Avocats, France.
The Respondent is Nicky Allard (“First Respondent”), KinetikSport GmbH (“Second Respondent”), Switzerland, represented by Finnian & Columba, Belgium.
2. The Domain Name, Registry, and Registrar
The Registry of the disputed domain name <kinetiksports.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Namecheap, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2021. On March 3, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On March 4, 2021, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was April 16, 2021. The Response was filed with the Center on April 15, 2021.
The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.
The Center appointed Adam Taylor as the sole panelist in this matter on April 19, 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 ADR Rules, Paragraph B(5).
4. Factual Background
The First Complainant, Jean-Marie Loirat, is the Chief Executive Officer of the Second Complainant, a company called “Kinetik Sport”. The Complainants are collectively referred to below as “the Complainant” except insofar as it is necessary to refer to them separately.
From around 2009, the First Complainant was engaged in a business relationship with (a) Mr Rongsong, a founder and co-owner (with the First Respondent Nicky Allard) of the Second Respondent KinetikSport GmbH, and (b) with Mr Rongong’s Chinese company, Hisport Co., Ltd. (“Hisport”). The Panel notes the existence of a business and/or corporate relationship between Mr Rongsong, Hisport, the First Respondent, and the Second Respondent. The Second Respondent benefits from and/or uses the trade marks registered under the name of Mr Rongsong as described below (and the Panel notes that other trade marks are registered under the name of the Second Respondent). In addition, the Panel notes that the Second Respondent KinetikSport GmbH seems to be the entity operating the website at the disputed domain name. In view of the above, the Panel proposes to treat the actions of Mr Rongsong and Hisport as if they were those of the two Respondents (who are referred to collectively as “the Respondent” unless stated otherwise).
On November 13, 2009, the First Complainant emailed the Respondent concerning “kinetic designs”. The email was signed “Jean-Marie Loirat, HISPORT General Manager”.
On September 20, 2010, the Respondent emailed to a third party a price list branded with a logo comprising the stylised words Kinetik Compression Gear.
On October 10, 2010, the Complainant registered the domain name <kinetik-sport.com>.
On December 31, 2010, the Respondent applied (under No. 9014109) for a Chinese trade mark for the stylised word KINETIK in class 25.
On January 14, 2011, the First Complainant emailed the Respondent using a Hisport email signature, asking the Respondent to check the “kinetik web site” which “we have just finished” and saying that in France the orders would be sent to the First Complainant and, in China, to the Respondent, and that payment would arrive in a Hisport bank account.
A “Distribution Book” drafted by the Complainant and sent to the Respondent on September 19, 2011, stated: “Kinetik is a registered trademark of French Sportrader Ltd, a subsidiary of Hisport Ltd, a leading global manufacturer of compression clothing. This brand was formed with a combination of French and Chinese expertise, respectively, Jean-Marie Loirat and Weber Liao, bringing together a knowledge of design and market knowledge with a know-how in terms of production and garment technology.”
On October 14, 2011, the First Complainant, signing as “HISPORT General Manager” emailed the Respondent asking for certain “samples kinetik” to be sent to a certain customer.
As of November 14, 2011, the First Complainant’s email footer included the title “KINETIK General Manager” as well as reference to a website at “www.kinetik-sport.com” and the “Kinetik Compression Gear” logo.
On May 8, 2012, Sportrader Co., Ltd (“Sportrader”), a Chinese company owned jointly by the Complainant and the Respondent, applied (under No. 10881408) for a Chinese trade mark for the “Kinetik Compression Gear” logo in class 25.
On August 29, 2012, Sportrader applied (under No. 85716654) for a United States trade mark for the KINETIK COMPRESSION GEAR logo in class 25.
On February 19, 2015, the First Complainant incorporated the Second Complainant. According to its official company extract, the Second Complainant’s official trade name was “KINETIK ADRENALINK”.
On March 9, 2015, the Respondent registered the domain name <kinetikcompression.com>.
On March 25, 2015, the Respondent applied (under No. 16567907) for a Chinese trade mark for the stylised words KINETIK COMPRESSION in class 25. This mark was registered on May 14, 2016.
On November 23, 2015, the Complainant sent an email with the subject “new logo test” to a third party displaying a logo consisting of the stylised letter “K” in the form of an arrow (“the K Arrow Logo”) next to the Complainant’s email footer, stating: “Can you try in this way pls?”
The Respondent secured a copyright registration for the K Arrow Logo in China on September 2, 2016. This certificate refers to a “[c]reation completion time” of October 12, 2015.
From around 2017, the relationship between the parties deteriorated and disputes arose about ownership of the “Kinetik” brand.
On February 2, 2017, the Complainant sent a message to the Respondent offering: “let us sale kinetik. each take his own part.”
The Respondent owns figurative European Trade Marks (“EUTMs”) Nos. 016474041 and 016474066 for, respectively (1) the stylised words KINETIK COMPRESSION GEAR and (2) the K Arrow Logo, both filed March 15, 2017, registered on June 15, and July 4, 2017 (respectively), in class 25. The Panel understands that both marks have been declared invalid by the Cancellation Division of the European Union Intellectual Property Office at the behest of a third party and the Complainant respectively, and that both decisions are under appeal by the Respondent.
On April 14, 2017, the Respondent registered the domain name <kinetiksports.com>.
A 2019 Archive.org screenshot shows use of the domain name <kinetik-sport.com> by the Complainant for a website branded “Kinetik Adrenalink” offering branded clothing for sale that included the word “Kinetik” and the K Arrow Logo.
The Complainant owns figurative French trade marks Nos. 4645080 and 4645128 for, respectively, (1) the K Arrow Logo and (2) that logo plus the stylised words Kinetik Adrenalink, both filed on May 6, 2020, registered on November 20, 2020, in classes 18, 25 and 28.
The disputed domain name was registered on March 22, 2020. The Respondent thereafter used the disputed domain name for a website headed with a logo that comprised the disputed domain name in stylised form together with the K Arrow Logo. The website offered clothing for sale that was branded with the K Arrow Logo.
The Respondent owns Swiss trade mark No. 753496 for KINETIKSPORTS, filed March 25, 2020, registered October 15, 2020 in class 25.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant has operated a business under the names “Kinetik” and “Kinetik Sport” since 2009. The business operates via a website at “www.kinetik-sport.com”. This website initially “presented” Kinetik products but now offers them for sale to European customers.
The disputed domain name is identical or confusingly similar to a name in which the Complainant has rights recognised or established by national law of a Member State and/or Community law, namely the domain name <kinetik-sport.com> and the company name “Kinetik Sport”. The only difference is the addition of the letter “s” to the word “sport”, which does not affect the risk of confusion between the respective names.
Furthermore, the Respondent’s website reproduces the Complainant’s K Arrow Logo, which was “created with its designer” in 2015.
The Respondent cannot demonstrate any prior rights or use that would constitute rights or legitimate interests in the disputed domain name such as a licence to use the Complainant’s mark.
The disputed domain name was registered or is being used in bad faith.
The Respondent is clearly trying to take undue advantage of the Complainant’s investments and its brand image, including by copying the Complainant’s logo. The Respondent used the disputed domain name intentionally to attract Internet users and the Complainant’s clients to its website for commercial gain by creating a likelihood of confusion with the Complainants’ rights.
The following is a summary of the Respondent’s contentions.
The Complainant should have made the Panel aware of the pending trade mark disputes.
In any case, there was an earlier business relationship between the parties. The First Complainant worked as “general manager” and later as sales representative for sale of sporting goods under the Respondent’s KINETIK COMPRESSION GEAR brand.
The Complainant was well aware of the Respondent’s use of the mark KINETIK COMPRESSION GEAR before the Complaint was filed.
The Complainant’s proposal to sell the Kinetik brand and share the profits with the Respondent shows that, at the very least, this was a common project. In fact, the project was started by the Respondent.
The Respondent’s Chinese copyright registration for the K Arrow Logo indicates that the Respondent acted in good faith.
The various trade mark and copyright applications associated with the Respondent show that the Respondent has been using the signs “Kinetik” and KINETIK COMPRESSION GEAR, since well before the filing of the Complaint.
The Complainant deliberately omitted information about the parties’ prior business relationship and disputes as well as the Respondent’s prior rights trade marks. Instead, the Complainant gave the false impression that it was unaware of all of these matters.
Any similarity between the disputed domain name and the Complainant’s trade marks is due entirely to the prior business relationship between the parties and the fact that the Complainant filed its trade mark registrations in bad faith.
The Respondent possesses rights and legitimate interests in the disputed domain name including on the basis of EUTM 016474041 which includes the word “Kinetik” and remains valid because the Respondent’s appeal is still pending. The Respondent also relies, amongst other things, on its use of the disputed domain name and of its various “Kinetik” trade marks and domain names, before notice of this proceeding.
The Respondent is commonly known by the disputed domain name including on the basis of 9,000 followers of its “kinetiksports” account on Instagram and 4,000 on Facebook. The Respondent’s website at the disputed domain name, and its social media accounts, appear prominently on Google searches for the term “Kinetik sports”, whereas the Complainant does not feature.
The disputed domain name was neither registered nor used in bad faith. On the contrary, the parties had a prior business relationship, whereby the Complainant used to work for the Respondent and the Complainant is well aware that the Respondent has legitimately used the name “Kinetik” worldwide for many years.
The Complainant asserts that the Respondent is trying to take undue advantage of the Complainant’s investments, whereas it was the Respondent who made the necessary investments to develop the Kinetik brand.
The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding in that the Respondent deliberately omitted any mention of the Respondent’s EUTM, the pending trade mark proceedings between the parties or their prior business relationship. The Complaint was based on the barest of allegations without any supporting evidence.
The Complaint forms part of a pattern of conduct whereby the Complainant is seeking to destabilise the Respondent’s business including by attempting to cancel the Respondent’s social media accounts and making defamatory comments about the Respondent to its clients and partners.
6. Discussion and Findings
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
Article 4(4) of Regulation (EU) No. 2019/517 (“the Regulation”) states that a domain name may be “revoked, and where necessary subsequently transferred to another party, following an appropriate ADR or judicial procedure … where that name is identical or confusingly similar to a name in respect of which a right is established by Union or national law…”.
Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law”.
The Complainant has established rights under Article 4(4) and Paragraph B(11)(d)(1)(i) of the ADR Rules by virtue of its figurative French trade mark No. 4645128 for KINETIK ADRENALINK.
Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
Furthermore, section 1.7 of WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for the purposes of the standing requirement under the first element.
Section 1.8 ofWIPO Overview 3.0 adds that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, a dominant feature of the Complainant’s trade mark, the word “Kinetik” is readily recognisable within the disputed domain name and the addition of the term “sports” is insufficient to avert a finding of confusing similarity.
The Panel therefore finds that the Complainant has established the first element of Article 4(4) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
The Panel notes the following:
1. In section 4 above, the Panel has set out a summary of the facts based on the evidence provided by the parties. While this account of the complicated background to this dispute is by no means complete, and the exact nature of the apparently evolving relationship between the parties remains unclear, the Panel considers that it is reasonable to conclude that, at the very least, from around 2009 the Complainant and the Respondent collaborated in various ways in connection with the supply by the Respondent of sports clothing under the brand “Kinetik Compression”.
2. The Respondent applied for a Chinese trade mark for the stylised word “Kinetik” in 2010 and, in 2012, a company jointly owned by the Complainant and the Respondent applied for Chinese and United States trade marks for the “Kinetik Compression Gear” logo. None of these applications achieved registration and the reasons for this have not been explained. However, their existence suggests that the Respondent at least considered that it possessed a legitimate interest in the mark “Kinetik”.
3. While the Complainant registered the domain name <kinetik-sport.com> in 2010, the Panel cannot tell whether the purpose of the registration was to facilitate sale of Kinetik-branded goods by the Complainant in its own right or in the context of the business relationship between the parties, which is nowhere mentioned in the Complaint. All that the Panel knows is that by 2019, the Complainant was using it for a website branded “Kinetik Adrenalink” which offered branded clothing for sale that included the word “Kinetik” and the K Arrow Logo.
4. The Respondent possesses a 2015 Chinese trade mark (registered in 2016) for the stylised words “Kinetik Compression” and a 2017 EUTM for the stylised words KINETIK COMPRESSION GEAR, albeit that the latter is under appeal against a finding of invalidity procured by a third party.
5. The Respondent owns the 2017 domain name <kinetiksports.com> and a 2020 Swiss trade mark for KINETICSPORTS, filed three days after the Respondent registered the disputed domain name.
6. The parties are in dispute as to who owns the copyright in the K Arrow Logo, for which the Respondent possesses a copyright registration in China and a EUTM, the latter being under appeal against a finding of invalidity in favour of the Complainant.
In the Panel’s view, the matters outlined above, including the Respondent’s own longstanding use of the Kinetic mark, and its various registered trade marks incorporating that term, are sufficient to establish rights or legitimate interests for the limited purposes of the Regulation and the ADR Rules.
Conceivably, the Complainant might have had a basis to argue that it was illegitimate for the Respondent to acquire a domain name that combined the terms “Kinetik” and “sport(s)” if, say, there were compelling evidence to show that the parties had agreed that that particular phrase was reserved for the Complainant to use in its own right, perhaps with reference to the European Union. Certainly, the Respondent’s application for its Swiss trade mark for KINETICSPORTS only three days after it registered the disputed domain name looks somewhat defensive. However, the fact that the Respondent had already acquired <kinetiksports.com> some three years earlier underlines that such an argument might not have been straightforward.
In any event, the Complainant has not put forward such a case. Instead, as mentioned above, the Complaint makes no mention of any of the above matters and, instead, proceeds as if the Respondent was an entirely unrelated competitor that had misappropriated the Complainant’s Kinetik mark and copied its logo. Indeed, the Complainant’s omission of such obviously-relevant information, which it presumably thought damaging, in fact reinforces the Panel’s conclusion that the Respondent possesses rights and/or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has failed to establish the second element of Article 4(4) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.
C. Registered or Used in Bad Faith
For same the reasons outlined above under the second element, the Panel considers that the Complainant has failed to establish that the disputed domain name was registered or is being used in bad faith.
In particular, the Complainant has not demonstrated that the Respondent registered or used the disputed domain name by reference to any rights of the Complainant rather than in the context of the Respondent’s own longstanding association with the “Kinetic” brand including its trade marks and domain names.
The Complainant has also omitted to mention that the parties are in dispute as to ownership of the K Arrow Logo, use of which the Complainant invokes as evidence that the Respondent set out to target the Complainant’s rights. The Panel would add that resolution of that dispute is well outside the ambit of this proceeding.
The Panel finds that the Complainant has failed to establish the third element of Article 4(4) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.
D. Abuse of Proceeding
Paragraph 12(h) of the ADR Rules provides that, if “after considering the submissions the Panel finds that the Complaint was initiated in bad faith, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of administrative proceeding”.
See examples of the reasons articulated by UDRP panels for equivalent findings under the UDRP at section 4.16 of the WIPO Overview 3.0, including at item (v): “the provision of intentionally incomplete material evidence – often clarified by the respondent.”
In this case, the Complaint failed to mention:
1. the Complainant’s prior extensive relationship with the Respondent;
2. the Respondent’s longstanding use of the “Kinetik” mark;
3. the Respondent’s various “Kinetik” registered trade marks;
4. the Respondent’s prior “Kinetic” domain names including <kinetiksports.com>; and
5. the dispute between the parties relating to ownership of the K Arrow Logo including the existence of the Respondent’s Chinese copyright registration and even omitting mention of the Respondent’s K Arrow Logo EUTM which the Complainant had successfully invalidated albeit subject to appeal.
By leaving out these crucial background details, the Complaint gave the misleading impression that the Respondent was an unrelated competitor who had egregiously sought to impersonate the Complainant by misappropriating its “Kinetik” name and logo. If the Respondent had not filed a Response, an injustice might have been done.
For the above reasons, the Panel considers that the Complaint was brought in bad faith.
For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of administrative proceeding.
Date: May 15, 2021
1 Noting the substantive similarities between the principles and procedures set out in the Regulation and the ADR Rules on the one hand and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) on the other, the Panel has referred to WIPO Overview 3.0 where appropriate.