The Complainant is Kiloutou, France, represented by Cabinet Beau de Lomenie, Lille, France.
The Respondent is Domain Drop SA, Charlestown, West
Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <kiloutout.net> is
registered with BelgiumDomains, LLC, Miami, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2006. On August 31, 2006, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On September 4, 2006, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2006.
The Center appointed Anders Janson as the Sole Panelist
in this matter on October 6, 2006. 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
From the websites “www.kiloutou.fr” and “www.kiloutou.com” the Panel has gathered information about the Complainant. The Complainant is a joint stock company incorporated and existing under the laws of France. The Complainant is a rental company offering rental of a broad range of objects, products and equipment to both professionals as well as individuals. It was founded in 1980, has 170 depots all over France, 1 750 employees and has established partnerships abroad.
According to the Complainant the trademark KILOUTOU is under protection. As examples of the trademark protection the Complainant has, in the Complaint, put forward a number of registrations:
- French trademark KILOUTOU LOUE PRESQUE TOUT (+ device), of December 9, 1982, registration number 1221258, in classes 6 - 12, 16, 20, 28, 37, 39, 40 and 41.
- French trademark KILOUTOU MULTI-LOCATION (+ device), of July 1, 1994, registration number 94527182, in classes 1 – 9, 11, 12, 16 – 22, 24, 25, 27, 35 – 42 and 45.
- French trademark KILOUTOU No1 MULTI-LOCATION (+ device), of July 1, 1994, registration number 94527183, in classes 1 – 9, 11, 12, 16 – 22, 24, 25, 27, 35 – 42 and 45.
- Community trademark KILOUTOU, of August 21, 2003, registration number 003332814, in classes 2, 3, 7, 8, 9, 11, 12, 16, 21, 35, 37 - 45.
- Community trademark KILOUTOU (+ device), of August 21, 2003, registration number 0033936634, in classes 2, 3, 7, 8, 9, 11, 12, 16, 21, 35, 37 - 45.
Furthermore, the Complainant has registered and uses the domain names
<kiloutou.com > and <kiloutou.fr>.
The Panel notes that the registration dates of all the trademarks predate the registration of the disputed domain name by the Respondent, which was on March 10, 2006.
Little is known about the Respondent. According to the information provided by BelgiumDomains, LLC the Respondent is located in Charlestown, West Indies, Saint Kitts and Nevis. No further information of the identity of the Respondent is provided at the Respondent’s website “www.domaindropsa.com”.
The disputed domain name is not in use for the time being and is locked by BelgiumDomains, LLC.
The Respondent is in default and, accordingly, has
not challenged the conclusions of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name;
- The domain name was registered and is being used in bad faith; and
- The domain name <kiloutout.net> should be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 Panel finds, based on the evidence put forward by the Complainant, established that KILOUTOU is a distinctive registered trademark.
The disputed domain name contains the Complainant’s trademark KILOUTOU in its entirety, with the added letter “t” and the generic and functional top level domain name “.net”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall be disregarded. The question is therefore if the addition of the letter “t” renders the disputed domain name dissimilar from Complainant’s registered trademarks.
The fact that a domain name incorporates a complainant’s registered mark
may be sufficient to establish identical or confusingly similarity for the purpose
of the Policy, despite the addition of other words and letters to such marks.
This is a well-established by previous UDRP Panelists (Oki Data Americas,
Inc v. ASD, Inc,WIPO Case No. D2001-0903
and CSC Holdings, Inc. v. Elbridge Gagne,WIPO
Case No. D2003-0273).
The Panel finds that the term “kiloutou” is the distinctive part of the disputed domain name. Adding the letter “t” adds very little, if anything, to the overall impression of the disputed domain name. There is a substantive and evident risk that Internet users assume that the addition of the letter “t” to the word “kiloutou” signifies a website operated by the Complainant. A circumstance strengthening the evidence for a risk of confusion regarding the disputed domain name is the fact that in French, “kiloutou” and “kiloutout” are pronounced exactly the same. There is no phonetical difference.
With reference to the discussion above, the Panel finds that the addition of the letter “t” does not diminish the similarity between the disputed domain name and the Complainant’s trademark. The disputed domain name must therefore be considered confusingly similar to the trademark KILOUTOU. The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant has asserted that the Complainant has exclusive rights for the trademark KILOUTOU and that the Respondent does not own any trademark rights on KILOUTOUT nor does it use this name as a trade/commercial name.
The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, a prima facie showing by the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists.
The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).
C. Registered and Used in Bad Faith
Finally, the Panel has to consider if the disputed domain name have been registered and is being used in “bad faith”. Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(i) states that circumstances indicating that one has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The Panel notes that the examples of bad faith registration and use set forth in Paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found.
The Complainant has asserted that the Respondent’s registration of the disputed domain name is undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the trademark KILOUTOU. The Complainant has furthermore asserted that the disputed domain name was clearly registered with the sole aim to be sold to a third party.
The Panel finds that the trademark KILOUTOU is known and recognizable within its business sector. Internet users searching for rental services provided and marketed by the Complainant are likely to visit the Respondent’s website. It is highly unlikely that the Respondent by accident registered the disputed domain name, which differs from the Complainant’s trademark only by the addition of the letter “t”. This especially bearing in mind that “kiloutou” is a fantasy word, created by the founders of the Complainant. This, according to this Panel, suggests that the registration of the disputed domain name was made in bad faith.
As evidence of the purpose of the Complainant’s assertion that the disputed domain name was clearly registered with sole aim to be sold to a third party the Complainant has put forward the following text on the Respondent’s website:
“Domain Drop S.A looks at expiring or previously registered domain names using an automatic program. No people choose names at Domain Drop S.A.”
In the Panel’s view, it cannot be concluded with certainty that the Respondent
registered the disputed domain name with the only purpose of selling, renting,
or otherwise transferring the domain name to the Complainant for valuable consideration
in excess of the documented out-of-pocket costs directly related to the domain
name. However, as paragraph 4(b) is not an exhaustive list of circumstances
indicating bad fait, bad faith can be found based on other elements. The Panel
notes that the used method of the Respondent of finding expiring or previously
registered domain names is through automatic program. This fact is, according
to this Panel, an indication that the Respondent is ready to register and use
whatever domain name that comes up through this automatic search. It would be
contrary to the intent of the Policy to protect this type of activities in certain
situations. The Respondent’s mere passive holding of the disputed domain
name in this case and the fact that the Respondent has not presented any reasons,
evidence or arguments of a legitimate interest in using the disputed domain
names indicates that the domain name was registered and is being used in bad
faith. There are no other obvious reasons for the Respondent to have a legitimate
use of the domain name. See, Media General Communications, Inc. v. Rarenames,
WebReg, WIPO Case No. D2006-0964.
Accordingly, the Panel concludes that the Complainant has proven 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 name <kiloutout.net> be transferred to the Complainant.
Anders Janson
Sole Panelist
Dated: October 20, 2006
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