WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KGK Holding Aktiebolag v. Nils Bernhard, Mångubben AB
Case No. D2015-0274
1. The Parties
The Complainant is KGK Holding Aktiebolag of Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Nils Bernhard, Mångubben AB of Sweden.
2. The Domain Name and Registrar
The disputed domain name <kamasa.tools> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. No response was received.
The Center appointed Petter Rindforth as the sole panelist in this matter on March 30, 2015. 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.
The case before the Panel was conducted in the English language.
4. As to the Respondent's Petition to consider an Untimely Response
On March 22, 2015, the Respondent submitted a request for extension to file a response. This was denied.
Paragraph 5(d) of the Rules states that "at the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider."
In this case, the Center formally notified the Respondent of the Complaint on March 2, 2015. After 20 days, the Respondent requested for extension to file a response, referring to "a heavy workload", and filed a Response on April 7, 2015.
The Panel does not consider "a heavy workload" to be an exceptional case, especially since the Respondent had not communicated at all with the Center during the 20 days before March 22, 2015, which was the due date for Response. The Panel will therefore not consider the Response filed on April 7, 2015.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.
5. Factual Background
The Complainant is a Swedish based company, offering a variety of different products such as screwdrivers, electric tools, automotive tools and wrenches under the trademark KAMASA-TOOLS since 1977.
The Complainant is the owner of a number of registered trademarks for KAMASA-TOOLS, including:
Swedish national trademark registration No 153 861 KAMASA-TOOLS (word), registered January 9, 1976 for goods in Class 8.
Swedish national trademark registration No 178 224 KAMASA-TOOLS (figurative), registered September 18, 1981 for goods in Class 8.
Swedish national trademark registration No 388 372 KAMASA-TOOLS (word), registered April 13, 2007 for goods in Classes 6, 7, 8.
Swedish national trademark registration No 388 373 KAMASA-TOOLS (figurative), registered April 13, 2007 for goods in Classes 6, 7, 8.
International Registration No 919 717 KAMASA-TOOLS (word), registered February 15, 2007 for goods in Classes 6, 7, 8.
The disputed domain name <kamasa.tools> was registered on June 25, 2014. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant.
6. Parties' Contentions
The Complainant states that the Complainant's goods are known for their quality and reliability. The goods are sold and marketed in Europe, the Islamic Republic of Iran and Singapore, and promoted on the website "www.kamasatools.com", where the trademark KAMASA-TOOLS is clearly displayed.
According to the Complainant, the disputed domain name is confusingly similar to the Complainant's trademark, as "kamasa" is a distinctive word making <kamasa.tools> both visually and aurally confusingly similar to the Complainant's trademark KAMASA-TOOLS. Although the connected generic Top Level Domain ("gTLD") normally is irrelevant for the assessment of confusingly similarity, in this case it makes the combination <kamasa.tools> identical to the Complainant's trademark.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name <kamasa.tools>. The disputed domain name is only used for a website to host a number of sponsored links, some leading to competitors of the Complainant.
The Complainant contacted the Respondent with a cease and desist letter on February 4, 2015, demanding a transfer of <kamasa.tools>. The Respondent replied that the disputed domain name was not used in a commercial manner, and that there were other people interested in purchasing the disputed domain name <kamasa.tools>. In a reply, the Complainant offered to compensate the Respondent's out-of-pocket costs for registration of the disputed domain name <kamasa.tools>, and the Respondent replied asking the Complainant to return with a meaningful offer. The Complainant therefore concludes that the Respondent registered the disputed domain name in order to sell it to the Complainant.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith. When the Respondent registered <kamasa.tools>, the Complainant's trademark KAMASA-TOOLS had been in use for over 40 years. The Respondent has also registered other trademarks, not owned by the Respondent, under the gTLD ".tools". This is a strong indication that the Respondent was aware of the Complainant's business and trademark KAMASA-TOOLS and registered the disputed domain name in bad faith. The disputed domain name has been registered only to be sold to the Complainant.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for KAMASA-TOOLS (e.g., Swedish national trademark registration No 153 861 KAMASA-TOOLS, registered January 9, 1976), at least four of those covering Sweden, the home country of the Respondent.
The relevant part of the disputed domain name is "kamasa", as the added gTLD – being a required element of every domain name – is generally irrelevant when assessing whether or nota mark is identical or confusingly similar. In this case the ".tools" gTLD does nothing to distinguish the disputed domain name from the Complainants trademark – on the contrary, if considered, the gTLD in combination with the "kamasa" part in fact creates identity with the complainant's trademark KAMASA-TOOLS.
The Panel therefore concludes that the disputed domain name <kamasa.tools> is confusingly similar to the Complainant's trademark KAMASA-TOOLS.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
By not submitting a timely formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant's prima facie case under the same paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant's services and has no other permission to apply for any domain name incorporating the trademark KAMASA-TOOLS or variations thereof.
As shown by the Complainant, the Respondent is using the disputed domain name for a website to host a number of sponsored links, some leading to competitors of the Complainant.
Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is "well established" that the use of a domain name to "trade[…] off Complainant's trademark […] is not bona fide" and "cannot confer any rights or legitimate interests" upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd. WIPO Case No. D2010-1680("registration of a domain name 'for the purpose of misleading or diverting consumers' cannotgive rise to rights or legitimate interests").
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Both the Complainant and the Respondent are domiciled in Sweden, which is the Complainant's original and most important market. The Respondent has used the first, distinctive and well-known part of the Complainant's trademark and combined it with a gTLD that in fact forms the second part of the Complainant's trademark.
The Panel therefore concludes that the Respondent was well aware of the existence and business activities of the Complainant, and registered the disputed domain name <kamasa.tools> specifically with the Complainant in mind.
The disputed domain name is used for a website with links to other websites offering for sale competing services.
In the absence of a timely formal Response from the Respondent, this Panel cannot draw any other conclusion than one that the Respondent tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant's website is evidence of bad faith); see also Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 ("Respondent has registered and used the Domain Name with the sole purpose to attract Internet users and divert them to other locations, in particular sites of third parties promoting similar if not competitive services. It is clear that Respondent knows what he is doing and that he is not precisely acting in good faith. Actual and potential customers of Complainant could be mislead [sic] to a different location, driven by confusion, and when in that erroneous location, believe that Respondent has been granted a sponsorship, has become affiliated to Complainant, or his activities have been endorsed by this latter").
Also, the use of the disputed domain name for - what the Panel consider is - primarily the purpose of selling it to the Complainant for a monetary consideration in excess of the Respondent's out-of-pocket expenses directly related to the disputed domain name, is a further evidence of registration and use of the disputed domain name <kamasa.tools> in bad faith.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the 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 <kamasa.tools> be transferred to the Complainant.
Date: April 13, 2015