WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kaufland Warenhandel GmbH & Co. KG v. Zhao Kun

Case No. D2015-2281

1. The Parties

The Complainant is Kaufland Warenhandel GmbH & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.

The Respondent is Zhao Kun of Yibin, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <kbio.top> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 details.

On December 17, 2015, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request the English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 and 4, the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceeding commenced on December 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2016.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 19, 2016. 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, Kaujland Warenhandel GmbH & Co., is a private German company founded in 1984 that belongs to the Kaufland group, a major European retailer chain residing in Germany. The Complainant operates – mostly by independent affiliated companies, over 1,000 Kaufland supermarkets in Germany, Czech Republic, Slovakia, Poland, Croatia, Romania and Bulgaria.

The Complainant sells both branded goods of numerous producers and own branded goods under its own trademarks, e.g., K-BIO.

The Complainant owns the following Trademark Registrations: International Trademark Registration No. 1173884 for K-BIO, dated of November 26, 2012; International Trademark Registration No. 1005766 for K BIO & Design, dated of March 3, 2009; German Trademark Registration No. 302012032717 for K-BIO, dated of July 16, 2012, and German Trademark Registration No. 3020080593333 for K BIO & Design, dated of December 10, 2008.

In addition, Complainant operates, among others, the following domain names reflecting its trademarks in order to promote its services: <kbio.de>, <kbio.biz>, <kbio.info> and more.

The disputed domain name <kbio.top> was registered on July 30, 2015 long after the Complainant has registered the trademarks K-BIO worldwide.

On August 14, 2015, before starting the present proceeding, the Complainant sent a cease-and-desist letter to the Respondent via registered email on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to transfer the disputed domain name to the Complainant. The Respondent failed to response to the cease-and-desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant further argues that it is the owner of national and international trademarks of K-BIO figure and word.

The Complainant further argues that affiliated companies of the Complainant exist in mainland China and Hong Kong, China.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant further argues that there is no indication of Respondent’s use of, or demonstrable preparation 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.

The Complainant further argues that the Respondent did not make any use of the disputed domain name within four months after its registration.

The Complainant further argues that the Respondent has registered additional domain names with the generic Top-Level Domain (“gTLD”) “.top” on the same day, some using generic words or wordplays.

The Complainant further argues that the Respondent is not commonly known by the disputed domain name.

The Complainant further argues that the Respondent is not making any use of the disputed domain name. Thus a noncommercial or fair use of the disputed domain name is not cognizable.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith.

The Complainant further argues that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct.

The Complainant further argues that the Respondent either had actual knowledge of the Complainant’s trademark K-BIO or negligently had no knowledge when registering the disputed domain name in a bulk registration. Both leads to a bad faith registration of the disputed domain name.

The Complainant further argues that K-Bio is not a common word neither in the Chinese nor German language.

The Complainant further argues that the Respondent’s passive holding of the disputed domain name, his non-reaction to the cease-and-desist letter and the false or incomplete contact information are all indications of the Respondent’s bad faith registration and use of the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Registrar has confirmed that the language of the Registration Agreement of the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name <kbio.top> consists of Latin-script letters, rather than Chinese characters;

b) The disputed domain name includes the Complainant’s mark;

c) The Respondent did not respond or object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant presented evidence that it owns numerous national and worldwide trademark registrations for the mark K-BIO or a variation thereof. For example: International Trademark Registration No. 1173884 for K-BIO, dated of November 26, 2012; International Trademark Registration No. 1005766 for K BIO & Design, dated of March 3, 2009; German Trademark Registration No. 302012032717 for K-BIO, dated of July 16, 2012, and German Trademark Registration No. 3020080593333 for K BIO & Design, dated of December 10, 2008.

The Complainant also provided evidence showing that it owns and uses domain names consisting of the K-BIO trademark. For example: <kbio.de>, <kbio.biz>, <kbio.info> and more.

The disputed domain name <kbio.top> is identical to the Complainant’s registered K-BIO trademark only missing an hyphen. The lack of an hyphen does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant K-BIO trademark. It is clear that the most prominent element in the disputed domain name is the term “k bio”. Consequently, this panel finds that the disputed domain name is confusingly similar to the Complainant’s K-BIO trademark.

Previous UDRP panels have ruled that “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Also, the addition of the gTLD “.top” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.top” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the K-BIO trademark, or a variation thereof.

The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned numerous trademark registrations for the K-BIO mark or a variation thereof since at least the year 2008. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

In addition, the evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra). The Respondent’s passive use of the disputed domain name also indicates in this case bad faith registration and use of the disputed domain name: “[t]he concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept”. See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754. See also: “[t]he significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, supra).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name relative to the Complainant’s marks, the similarity between the Complainant’s trademark and the disputed domain name, the Respondent’s failure to response to the cease-and-desist letter, the failure of the Respondent to respond to the Complaint and Respondent’s passive use of the disputed domain name, the Panel draws the inference that the disputed domain name has been on balance registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <kbio.top> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: February 1, 2016