WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M&K ApS v. MK Sound

Case No. D2013-0967

1. The Parties

The Complainant is M&K ApS of Solroed Strand, Denmark, represented by Thomas Martin LLP, United States of America (“USA”).

The Respondent is MK Sound of Los Angeles, California, USA, represented by the Law Offices of Jonathan P. Chodos, USA.

2. The Domain Name and Registrar

The disputed domain name <mksound.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 31, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. Respondent filed a Response with the Center on July 1, 2013. On June 11, 2013, Mr. K. Kreisel, who was also named as a respondent by Complainant in this matter, emailed the Center indicating the correct email address to be used to communicate with him. On June 30, 2013, Mr. K. Kreisel emailed the Center requesting a 30 day extension of the Response due date. The Center acknowledged receipt of Respondent’s response, and indicated that it is in the sole discretion of the Panel to determine whether to order further procedural steps in this matter, if any.

The Center appointed John Swinson as the sole panelist in this matter on July 10, 2013. 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.

On July 11, 2013, Mr. K. Kreisel sent an email communication to the Center.

On July 17, 2013, the Panel issued Administrative Panel Procedural Order No. 1, granting Mr. K. Kreisel an extension until July 22, 2013 to file a Response. The Panel advised that this was not confirmation that the Panel would take this Response into account. On July 23, 2013, Mr. K. Kreisel emailed the Center, requesting a further 30 day extension of time in which to file a Response. Despite being granted an initial extension of time, Mr. K. Kreisel did not file a Response.

On July 24, 2013, the Complainant filed a Supplemental Filing with the Center.

4. Factual Background

The Complainant is M&K ApS, a Danish company that (together with affiliated companies) is in the business of designing, manufacturing and selling high professional quality loudspeakers and subwoofers.

The Complainant holds the following trade mark registrations:

- MK SOUND, US Registration No. 4,220,882 (registered October 9, 2012); and

- M&K SOUND, US Registration No. 4,220,957 (registered October 9, 2012); and

- MK Professional, US Registration No. 4,220,884 (registered October 9, 2012); and

- MK (logo mark), US Registration No. 1,239,216 (registered May 24, 1983).

Mr. K. Kreisel is an individual residing in the USA. The Disputed Domain Name redirects to the website “www.kreiselsound.com”, which is owned by Mr. K. Kreisel.

Respondent is MK Sound of California, USA. Respondent’s Response did not provide any further information about Respondent or its legal capacity or legal status.

The Disputed Domain Name was first registered on July 24, 1995. Respondent became the registrant of the Disputed Domain Name on or around July 23, 2007. The Disputed Domain Name redirects to the website “www.kreiselsound.com”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Background

The Complainant outlined (and provided evidence of) the following timeline:

- October 22, 1974: Mr. K. Kreisel and his business partner, Mr. J. Miller, founded Miller and Kreisel Sound, Inc. (“MK Inc”) (now defunct).

- July 24, 1995: MK Inc registered the Disputed Domain Name (it used the website at the Disputed Domain Name to sell its products from 1995 until 2007).

- 1995: MK Inc granted a security interest over all of its intellectual property and trademarks (including the Disputed Domain Name) to Merrill Lynch in order to obtain finance.

- February 27, 2007: MK Inc filed for bankruptcy.

- July 19, 2007: Merrill Lynch sold the intellectual property of MK Inc to S. Oliver Scandinavia ApS (formerly known as the Danish Audio Group). S. Oliver Scandinavia ApS and affiliated companies revive the MK brand and market and sell products under the MK trademarks.

- On or around July 23, 2007: the Disputed Domain Name is transferred to Respondent (by Mr. K. Kreisel) and renewed.

- December 1, 2011: S. Oliver Scandinavia ApS assigns all of the intellectual property to the Complainant.

i. Identical or Confusingly Similar

The Disputed Domain Name is identical to the MK SOUND trade mark.

ii. Rights or Legitimate Interests

Neither the Respondent, Mr. K. Kreisel nor any of their businesses are known by the Disputed Domain Name.

Neither Mr. K. Kreisel nor the Respondent are using the Disputed Domain Name in connection with any bona fide offering of goods or services. The redirection of users to Mr. K. Kreisel’s website for commercial gain does not qualify as a right or legitimate interest.

Neither Mr. K. Kreisel nor the Respondent is affiliated with the Complainant (or its affiliates) and the Complainant has not given them permission to use its trademarks.

iii. Registered and Used in Bad Faith

The transfer/renewal of the Disputed Domain Name on or around July 23, 2007 amounts to a new registration. The Respondent had no right or title in the Disputed Domain Name at the time of the foreclosure sale (the Disputed Domain Name should have been transferred to S. Oliver Scandinavia ApS, along with the rest of the intellectual property). Mr. K. Kreisel created a pseudo name “MK Sound” (i.e. Respondent) in order to conceal his identity (as he had no right to the Disputed Domain Name).

B. Respondent

Respondent’s contentions are as follows.

i. Identical or Confusingly Similar

The Complainant, by its own admission, has known about Respondent’s registration of the Disputed Domain Name since 2007, and has not disputed this ownership.

The Disputed Domain Name was not listed as part of the intellectual property purchased in the foreclosure sale agreements.

The Complainant did not obtain a trade mark registration for MK SOUND until last year.

ii. Rights or Legitimate Interests

<mksound.com> has been used by Mr. K. Kreisel and/or the Respondent since 1995. The “K” in MK SOUND refers to Mr. K. Kreisel.

Mr. K. Kreisel and/or the Respondent are using the Disputed Domain Name in connection with a bona fide offering of goods and services (it is used to redirect users to Mr. K. Kreisel’s website). Mr. K. Kreisel’s legacy includes “mksound” and the purpose of the automatic redirection is to help users of Mr. K. Kreisel’s products locate those products. From the time that Respondent acquired the Disputed Domain Name until early 2010, the website featured a disclaimer which provided an email address for Mr. K. Kreisel.

Mr. K. Kreisel and/or the Respondent are not affiliated with the Complainant. Respondent submits that the Complainant has been misleading consumers into believing products sold by them are the same as products sold by Mr. K. Kreisel.

Mr. K. Kreisel and/or the Respondent do not need permission to use the Disputed Domain Name.

iii. Registered and Used in Bad Faith

The Complainant did not have a trade mark registration for MK SOUND at the time the Disputed Domain Name was registered.

At the time of registration, Mr. K. Kreisel and/or the Respondent’s use of the Disputed Domain Name related to Mr. K. Kreisel’s business (through providing Mr. K. Kreisel’s email address). Respondent is informed and believes that Mr. K. Kreisel did not make an intentional choice to transfer/renew the Disputed Domain Name to a registrant with the pseudo name “MK Sound” in order to conceal the transaction and the true holder of the registration. Mr. K. Kreisel did not transfer the Disputed Domain Name. Respondent purchased the Disputed Domain Name when it became available upon expiry.

Mr. K. Kreisel has been in the business of selling loudspeakers for at least 40 years and clearly has a stronger legacy in the industry than the Complainant (who acquired the intellectual property in 2007). As such, any likelihood of confusion is created by the Complainant.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

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

(ii) the Respondents have 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 in bad faith.

A. Procedural Matters

Proper respondent

The Complaint included Mr. K. Kreisel as a respondent because, as further confirmed by Respondent, the Disputed Domain Name redirects to a website which is owned by Mr. K. Kreisel. Typically, the proper respondent is the registrant of the domain name. Mr. K. Kreisel was granted an extension of time in which to file a Response in which he could provide a view as to whether he was a proper party in this dispute. As Mr. K. Kreisel did not file a Response, and in view of the fact that Respondent is the registrant of the Disputed Domain Name, the Panel finds that the proper, and only, Respondent (for purposes of the Policy) is the registrant of the Disputed Domain Name, Respondent (i.e. MK Sound).

Extension of time

The Panel is of the view that the extension granted on July 17, 2013 was sufficient, and declines to grant Mr. K. Kreisel the further 30 day extension he has requested.

Supplemental filing

The Policy contemplates prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a Panel. Paragraph 10 of the Rules provides that the Panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, UDRP panels will only accept supplementary filings in “exceptional” circumstances.

The supplementary submissions that have been provided by the Complainant offer rebuttal arguments on several issues, but do not address the key elements of the Policy that need to be satisfied. Further, they were filed at a very late stage in proceedings (on the same date that the Panel’s decision was due). Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the MK SOUND trade mark.

The Complainant owns the MK SOUND trade mark.

The Disputed Domain Name is identical to the MK SOUND trade mark.

The Panel notes that the Complainant also has trade mark rights in M&K SOUND. As symbols (such as &) cannot be used in domain names, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the M&K SOUND trade mark.

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that Respondent lacks such rights or legitimate interests.

Paragraph 4(c) provides that the following are evidence of rights or legitimate interests:

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

Around the time that Merrill Lynch sold the intellectual property of MK Inc to S. Oliver Scandinavia ApS, it appears that the registration of the Disputed Domain Name lapsed and the Disputed Domain Name was subsequently re-registered by Respondent (it is unclear if Mr. K. Kreisel was involved in this process). Respondent has not provided any information about what type of entity it is, what type of business it conducts or how it (outside of any affiliation with Mr. K. Kreisel) has any rights in the Disputed Domain Name.

There is no evidence that Respondent is commonly known by the Disputed Domain Name. The fact the registrant of the Disputed Domain Name is listed in WhoIs records as “MK Sound”, is not sufficient to establish that there exists a business or organization which has become commonly known by that name. In fact, the Disputed Domain Name redirects to a website for a business that Mr. K. Kreisel operates under his personal name, which suggests that “MK Sound” is not a business or trading name.

On the facts presented to the Panel, there does not appear to be any legitimate, fair, noncommercial or bona fide offering of goods or services through the Disputed Domain Name. This finding is based upon the following:

- Respondent registered and began using the Disputed Domain Name after Complainant and its predecessors in title had established common law rights in the MK SOUND trade mark and the M&K SOUND trade mark, and likely with knowledge of this prior use;

- there exists no relationship between the Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the Disputed Domain Name; and

- Respondent has not used, and is not using, the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent’s use of the Disputed Domain Name to redirect to Mr. K. Kreisel’s website is clearly intended to divert users looking for the Complainant’s goods by trading off the reputation associated with the MK SOUND trade mark, and is not a bona fide offering of goods or services.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The transfer of a domain name can amount to a new registration (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). It appears that the Disputed Domain Name was registered or acquired by Respondent onor around July 23, 2007.

Paragraph 4(b)(iv) of the Policy states that the following is evidence of registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your web site or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location of a product or service on your web site or location”. Thus, bad faith use as set out in paragraph 4(b)(iv) is sufficient to demonstrate bad faith registration and bad faith use for the purposes of the third element of the Policy.

Given the common law rights existing in relation to both MK SOUND and M&K SOUND prior to 2007 (the Secured Party Bill of Sale dated July 19, 2007 is consistent with the existence of these common law rights) and Respondent’s obvious affiliation with Mr. K. Kreisel, it would be highly unlikely that Respondent was unaware of the Complainant when it acquired the Disputed Domain Name.

As discussed above, the website at the Disputed Domain Name diverts to Mr. K. Kreisel’s website, featuring products that compete with the Complainant’s products. The Panel concludes that the Disputed Domain Name is being used to misleadingly divert users to this website.

In light of the above, the Panel finds that Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is 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 <mksound.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: August 12, 2013