Complainant is Decathlon, Villeneuve D’Ascq Cedex, France, represented by Bird & Bird Solicitors, France.
Respondent is Tariq Ghafoor, Nairobi, Kenya.
2. The Domain Name and Registrar
The disputed domain name, <kalenji.com>, is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 24, 2007. On August 28, 2007, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the domain name at issue. On August 28, 2007, GoDaddy transmitted by email to the Center its verification response, which confirmed that Respondent is listed as the registrant, provided contact information for the administrative and technical contacts, and confirmed several details of the registration agreement. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 29, 2007. The Center verified that the Complaint, together with the amendment, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 20, 2007.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 5, 2007. 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
Complainant designs and sells sports apparel and equipment throughout the world. It owns a French trademark registration for the mark KALENJI, filed in April 2004, and has applied for international and African Intellectual Property Organization registrations of the mark.
In 2005, Complainant filed a complaint under the Policy relating to the domain name against a different respondent. The panel denied that complaint, finding that Complainant had not established that the domain name had been registered and was being used in bad faith. The decision references the fact that the respondent had registered the domain name before Complainant had begun commercial use of its mark and there was no evidence that respondent knew of Complainant’s mark at the time of registration. See Decathlon v. Christopher Kyengo,
WIPO Case No. D2005-0825.
Respondent subsequently registered the <kalenji.com> domain name. The domain name directs visitors to a “parking website”, which includes links to products of Complainant as well as to those of its competitors.
5. Parties’ Contentions
A. Complainant
Complainant has used its KALENJI mark since 2004 for a variety of products, including running shoes and equipment. In addition to its trademark registrations, it has registered a number of “kalenji” domain names, including 2004 registrations for <kalenji.us>, <kalenji.it>, and <kalenji.co.uk>.
The disputed domain name is identical to Complainant’s mark because it consists of the KALENJI mark plus the top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant’s rights in the KALENJI mark predate Respondent’s registration.
Complainant has not authorized Respondent’s use.
Respondent is not using the domain name in connection with a bona fide offering of goods or service. The domain name is being used to redirect visitors to a site that provides links to Complainant’s KALENJI products and also to competing products. Further, the website does not accurately disclose its relationship (or disclaim the lack of any relationship) with Complainant.
Respondent has registered and is using the disputed domain name in bad faith because:
(1) Respondent has no prior rights to the KALENJI mark and has not been authorized by Complainant to use the mark.
(2) Respondent is preventing Complainant from reflecting its mark in a corresponding domain name.
(3) Respondent is using the domain name to capitalize on the good will associated with Complainant’s mark and to disrupt Complainant’s business.
(4) Respondent’s contact information is incomplete, resulting in the return of correspondence.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.
(iii) The disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established that the disputed domain name is identical to its mark. Complainant has established its rights in the KALENJI mark by providing evidence of its French trademark registration. Complainant has also provided catalogs that show its use of the KALENJI mark. The disputed domain name is identical to that mark; in considering identity, the “.com” top-level domain is not relevant.
Accordingly, the Panel finds that Respondent’s domain name is identical to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a primafacie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in Paragraph 4(c)(ii) and (iii) of the Policy. Complainant’s evidence suggests that neither Respondent nor Respondent’s business could legitimately be known by the name “Kalenji.” SeePolicy, paragraph 4(c)(ii). Complainant also submitted printouts of Respondent’s website that show use of the domain name for commercial purposes. SeePolicy, paragraph 4(c)(iii).
Whether Complainant has made a prima facie showing as to the example set out in Paragraph 4(c)(i) presents a slightly closer question. Paragraph 4(c)(i) provides that use of a domain name in connection with a bona fide offering of goods or services before notice of the dispute can demonstrate rights or legitimate interests to the domain name. Complainant cites the decisions of other panels for the proposition that use of a domain name for a “parking website” – which typically redirects visitors to other websites generating “click through” revenue for the domain name holder – does not constitute a bona fide offering. As a general matter, the Panel shares that view and therefore finds that Complainant has also made a prima facie showing as to the example in Paragraph 4(c)(i) of the Policy.
The Panel is aware, however, that not all panelists share its view. See, e.g., Viva Group, Inc. v. Peter Best, Jr.WIPO Case No. D2006-1151 (dissenting opinion expressing view that “bona fide offering” may include “any authentic offer to engage in a transaction, regardless of the moral or legal right of the domain holder to extend such an offer.”). Further, the Panel is also aware that domain name holder may not have control over or knowledge of the links placed by the parking service and in some cases, may not be aware that the domain name has been “parked.”
Accordingly, Respondent might have been able to advance arguments that its offerings are bona fide. By virtue of its default, however, Respondent has not advanced any argument. Under the circumstances of this case, the Panel finds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
The Panel disagrees with Complainant’s suggestion that Respondent’s conduct falls within paragraph 4(b)(ii) because there is no evidence that Respondent engaged in a pattern of such conduct. However, the Panel agrees that Respondent’s conduct falls within paragraph 4(b)(iv).
As noted above, Respondent’s domain name is, for purposes of these proceedings, identical to the KALENJI mark. Moreover, it is relevant that Complainant’s rights in the KALENJI mark predate Respondent’s registration and use of the domain name, the KALENJI mark is well-known, and the domain name itself was the subject of a prior proceeding under the Policy. Under these circumstances, it is not unreasonable to impute to Respondent awareness of Complainant’s rights and that the domain name is intended to, and does, attract visitors who are actually seeking Complainant’s site.
Whether Respondent realizes a commercial gain from these activities is not entirely clear but seems likely. In any case, the circumstances set out in Paragraph 4(b) of the Policy are not exhaustive. Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond and having provided incomplete contact information, the Panel finds that Complainant has established that Respondent has registered and used the domain name in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, <kalenji.com> be transferred to Complainant.
Debra J. Stanek Sole Panelist
Dated: October 19, 2007
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