WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kairos Investment Management SPA v. Ralph Wilms & Partner KG

Case No. D2010-1025

1. The Parties

The Complainant is Kairos Investment Management SPA of Milan, Italy, represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ralph Wilms & Partner KG of Carona, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <kairos-funds.com> is registered with EPAG Domainservices GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010 in English. On June 22, 2010, the Center transmitted by email to EPAG Domainservices GmbH a request for registrar verification in connection with the disputed domain name. On June 25, 2010, EPAG Domainservices GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. However, EPAG Domainservices GmbH stated that the language of the registration agreement for the disputed domain name was German. On July 7, 2010, the Center sent an email communication to the Complainant, asking the Complainant to provide either satisfactory evidence of an agreement between the parties to the effect that the language of the proceedings be English, or to submit a translation of the Complaint into German, or to submit a request that English be the language of the administrative proceedings. On July 9, 2010, the Center received an email communication from the Respondent, requesting that the language of the proceeding shall be German on the grounds that the Respondent understands German better than English. On July 12, 2010, the Center received an email communication from the Complainant, requesting that English be the language of the administrative proceedings, on the grounds that the Respondent is fluent in English even on a technical and legal level, whereas the Complainant’s representatives are not able to correspond in German, providing evidence of former communications of the Respondent in English. The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint both in English and German, and the proceedings commenced on July 14, 2010. In accordance with paragraph 5(a) of the Rules, the due date for submission of Response in English or German was August 3, 2010. The Respondent did not submit a formal Response. However, the Center received two email communications from the Respondent on July 14, 2010 in German.

The Center appointed Brigitte Joppich as the sole panelist in this matter on August 9, 2010. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was established in 1999 and is an investment manager with offices in London, Milan, New York, Rome and Turin, currently managing EURO 5 billion in assets and having an annual turnover of more than GBP 364 million between 2005 and 2009. The Complainant has spent more that GBP 3 million in advertising its services since 2005. The Complainant has received broad media coverage and has won numerous awards in the last years.

The Complainant is registered owner of numerous trademarks containing the word “kairos”, including Community registration no. 106448 KAIROS, registered on February 4, 1999, Community registration no. 2988012 KAIROS, registered on December 24, 2002 and US registration no. 3033415 KAIROS, registered on December 24, 2002 (hereinafter referred to as the “KAIROS-Marks”).

The Complainant provides its services on the Internet at “www.kairospartners.com”.

The Respondent registered the disputed domain name on February 17, 2010 and used the domain name in connection with an “under construction” website provided by its Registrar.

On March 18, 2010, the Complainant sent a cease and desist letter to the Respondent concerning the disputed domain name and a second domain name registered by the Respondent, namely <kairos-funds.ch>. On March 21, 2010, the Respondent replied to the Complainant’s letter by email in English, stating that it owns an investment company in Switzerland and that the domain names have been registered in connection with such business, and that the Complainant has no registered rights in KAIROS in Switzerland. The Respondent requested an offer in case that the Complainant wanted to purchase the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is confusingly similar to the KAIROS-Marks, as it is comprised of the Complainant’s KAIROS-Marks and the non distinctive term “funds”, which is perfectly applicable to the Complainant, operating as a fund manager. The Complainant argues that the use of the disputed domain name exploits the significance of the Complainant’s KAIROS-Marks.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use the KAIROS-Marks or to apply for a domain name incorporating any such mark, as the Respondent’s name does not include “kairos” and as it is not commonly known by such name. The Complainant further states that the Respondent made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that, if such preparations were claimed by the Respondent, they would not be bona fide, since the offer of services similar to the Complainant’s would be in competition with the Complainant. The Complainant finally argues that, given that the disputed domain name is comprised of the KAIROS-Marks and a non-distinctive and descriptive suffix, the use of the disputed domain name by the Respondent would not constitute a legitimate or fair use unless it was authorized by the Complainant.

(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have known the Complainant, which was founded 11 years prior to the registration of the disputed domain name and that this assumption is supported by the fact that the Complainant has an office in Lugano, Switzerland, since 2006 and that the Respondent, located also in Switzerland, owns an investment company itself, too. With regard to bad faith use, the Complainant submits that the Respondent registered the disputed domain name in order to benefit unfairly from the Complainant’s rights in the KAIROS-Marks. The Complainant further argues that the Respondent’s passive holding of the disputed domain name can be considered as bad faith under the Policy, as the Complainant’s KAIROS-Marks have a strong reputation and are widely known, as the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, as the KAIROS-Marks have been used in Switzerland since 2006, as the Respondent harmed the Complainant’s trademark rights when registering the disputed domain name, which constitutes a clear breach of its domain name registration agreement, as the Respondent has registered a domain name featuring the KAIROS-Marks in their entirety and, as a result, as it is not possible to conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. The Complainant finally states that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant and that the use of the disputed domain name exploits the trademark signification of the Complainant’s KAIROS-Marks.

B. Respondent

In one of its email communications, the Respondent states that it has attentively studied the Complaint. The Respondent claims that the disputed domain name was registered in the course of planning a new investment company, which then was, however, established under another name. The Respondent states that it will not use the disputed domain name, which was freely available for registration at the time, that it is therefore willing to transfer the disputed domain name to the Complainant, and that there is no need to proceed with the dispute. The Respondent submits that it has never intended to make a profit by selling the domain name to the Complainant. Finally, the Respondent contends that it has been studying the phenomenon of “kairos” for more that 25 years, as a phenomenon “from a different time, when synchronization and coincidence played a major role”; and it states that the true nature of “kairos” is apparently unknown to the Complainant as a hedge fund company, interested only in making money at short notice.

6. Discussion and Findings

The first point to be dealt with is the language of the present proceeding. The registration agreement, under which the disputed domain name was registered, is in German. However, the Complaint was filed in English and the Complainant requested the Panel to accept its submission in English, contending that the Respondent is familiar with the English language. The Respondent requested German as language for the proceeding.

It is consensus view that in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can be the language of the complaint, even if it is different to the language of the registration agreement (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In view of the Complainant’s submissions and the circumstances of the case, the Panel decides that English is acceptable as language of the present administrative proceeding, as the Respondent is able to understand and to communicate in English.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s KAIROS-Marks in which the Complainant has rights.

The additional word “funds” following the term “kairos” in the disputed domain name is merely generic and describes the Complainant’s services. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “funds” or “fund” (cf. The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453 (<vanguardfund.com> et al.); The Vanguard Group Inc. v. Digi Real Estate Foundation, NAF Claim No. 701259 (<vangaurdfunds.com> et al.); Morgan Stanley v. Kenneth Chung c/o Bethesda Properties LLC, NAF Claim No. 1052609 (<morganstanleyfunds.mobi> et al.); Vontobel Holding Ltd. v. Portfolio Brains, LLC, WIPO Case No. D2009-1725 (<vontobelfunds.com>)).

Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use the KAIROS-Marks, as the Respondent’s name does not include “Kairos” and as it is not commonly known by such name, and as the Respondent made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

In its email communication, the Respondent stated that the disputed domain name was registered when it planned a new fund company under the name “Kairos”, and that it has been studying the phenomenon of “Kairos” for more that 25 years. The Respondent did not provide any evidence with regard to the circumstances mentioned in paragraph 4(c) of the Policy or any other circumstances suggesting rights to or legitimate interests in the disputed domain name. The Panel acknowledges that “Kairos” is a name derived from Greek mythology and that the term “kairos” also has a philosophical implication the Respondent seems to refer to. “Kairos” might therefore be considered as generic, although both the name and the term “kairos” are in the view of this Panel not widely known. However, when registering “kairos” in connection with the term “funds” in the disputed domain name, the Respondent went beyond a possible merely generic use of the name or term “kairos” and therefore cannot rely on it to demonstrate rights to or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 trade mark 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 trade mark 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 its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the disputed domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the KAIROS-Marks for the following reasons: The Complainant provided evidence that it is widely known for its investment services and that it has been doing business in Switzerland, where the Respondent is located, since 2006. Given the broad media coverage of the Complainant’s business and the fact that the Respondent registered the disputed domain name in the course of planning a new fund company, it is inconceivable that the Respondent as a direct competitor of the Complainant registered the disputed domain name without knowledge of the Complainant’s rights. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

As the disputed domain name is not actively used by the Respondent but merely points to a website provided by the Respondent’s registrar, the Panel has to decide whether or not the Respondent's (non-) use of the disputed domain name is to be considered as bad faith use under the Policy.

It is consensus view that the lack of active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

In the present case, the Respondent failed to provide evidence of any actual or contemplated good faith use. In fact, the Respondent’s asserted planned use of the disputed domain name in connection with a fund company would have probably constituted an infringement of the Complainant’s rights. Given that the word “funds” is included in the disputed domain name, the only reasonable use of the disputed domain name is in connection with investment services. In turn, the Complainant provided evidence that its trademarks are used internationally, inter alia, in the country where the Respondent is domiciled, are well-established and benefit from broad media coverage. Finally, the disputed domain name fully incorporates the Complainant's KAIROS-Marks by merely adding the generic word “funds” and leads to the false impression that it is associated with the Complainant, an investment company which inter alia, operates as a fund manager.

In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent's non-use of the disputed domain name equals to use in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain <kairos-funds.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Dated: August 23, 2010