WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Editorial Armonia, S.A, de C.V. v. Cagri Sadik Bayram
Case No. D2010-1963
1. The Parties
Complainant is Editorial Armonia, S.A, de C.V. of Mexico City, Mexico, represented by Langlet, Carpio y Asociados, S.C., Mexico.
Respondent is Cagri Sadik Bayram of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <kena.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 18, 2010, GoDaddy.com, Inc. 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 Respondent of the Complaint, and the proceedings commenced on November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Response was filed with the Center on December 13, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 22, 2010. 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 initially projected due date for decision in this administrative proceeding was January 5, 2011. By e-mail of January 4, 2011, Complainant transmitted a self-styled supplementary writ to the Panel and the Center, indicating that because the Panel had not yet allocated a period of time for Complainant to respond to the Response, it was submitting the supplementary writ on its own initiative, refuting Respondent’s arguments. The Center advised Complainant that it was not permitted to unilaterally communicate with the Panel, and also acknowledging receipt of the supplemental writ. By e-mail of January 6, 2011, Respondent transmitted to the Center a supplemental writing reacting to the supplemental writ transmitted by Complainant. By e-mail of January 7, 2011, the Center transmitted to the parties Panel Administrative Procedural Order No. 1, providing, inter alia:
As previously indicated by the Center, the Policy and Rules do not provide for a second round of submissions by the parties, although a panel may authorize such submissions based on various circumstances, including the development of factual evidence that may not have been reasonably anticipated.
The writ offered by Complainant was submitted close to the due date for decision and, more important, repeated legal arguments previously made. For this reason the Panel rejects the supplemental submission by Complainant. Respondent filed a supplemental submission in reaction to the supplemental filing by Complainant. Respondent’s supplemental submission notes that Complainant repeated arguments previously made. Because the Panel has rejected Complainant’s supplemental submission, the basis for Respondent’s reaction has been removed. For this reason, the Panel does not find it necessary to accept Respondent’s supplemental submission.
The due date for decision was extended to January 12, 2011.
4. Factual Background
Complainant has registered several KENA-formative trademarks on the register of the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) (hereinafter “IMPI”). These are a word and design mark KENA LATINA (and design), registration number 928951, in International Class (hereinafter “IC”) 16, dated April 17, 2006; KENA LA NAVIDAD (and design), registration number 750227, dated May 31, 2002, in IC 16; KENA LABORES (and design), registration number 740115, dated March 26, 2002, in IC 16, and; KENA COCINA (and design), registration number 741345, dated March 27, 2002, in IC 16. The above registrations cover printed materials, including periodicals. Complainant has provided evidence of several other trademark registrations in Mexico, none of which incorporate the term KENA and which are not relevant to this proceeding.
Complainant has registered the word trademark KENA on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3811425, dated June 29, 2010, in IC 16, covering "general feature magazines" and magazines and magazine supplements in the field of women's interests and lifestyles. The application for this trademark was filed as an "intent to use" (ITU) application on April 29, 2008, and Complainant notified first use and first use in commerce as of May 5, 2010.1
Complainant publishes a magazine in the Spanish language under the name KENA, as well as magazines under the names KENA NOVIAS, KENA COCINA NAVIDEÑA, SALUD Y BALLEZA KENA and related titles. These magazines are principally distributed in Mexico, but also in other Spanish-speaking Latin American countries (including, but not limited to, Argentina, Colombia and Chile). Complainant publishes magazines under a number of other titles, and indicates it is one of the three top magazine publishers in Mexico. It does break out readership figures for the magazines specifically incorporating the term KENA in the title, but it provides evidence in the form of print-run records that substantial quantities of the various KENA magazines are produced). Complainant operates a highly developed commercial Internet website at ”www.mujerenarmonia.com.mx”, to which Complainant's domain name <kena.com.mx> (among others) is redirected. This website includes a banner identifying it as “KENA.com.mx. mujer en armonía”) (translated by the Panel as "women in harmony"), and includes content expressly directed to women's interests, incorporating a substantial level of third-party commercial advertisement.2
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. While the record of registration of the disputed domain name was initially created on December 10, 1996, it was transferred to the present registrar in the name of Respondent on June 2, 2008. Respondent has provided evidence that it purchased the disputed domain name on May 30, 2008 by payment to Sedo GmbH in the amount of US$5,150.
Respondent has used the disputed domain name in connection with a pay-per-click link farm parking page maintained by Sedo, including an indication on the parking page that the disputed domain name may be for sale by its owner. Respondent indicates that it has designated "shopping" and "travel" as the preset keywords for advertising connections under the Sedo parking system. The screen results returned by entering the disputed domain name in a browser address line vary depending on the geographical location of the Internet user. When accessed from Mexico, the results include links to third parties providing wedding-related services, dating services and printing services. Complainant provided an English-language translated version of such results, though presumably the typical Internet user in Mexico would be viewing Spanish language results. When accessed from the United States, the results are similar, including wedding photos and baby clothing in English (although many of the English language results appear in original Spanish), and wedding services, banquet services, wedding clothing and hotel accommodations in Spanish.3 It is not clear what results appear from a search initiated in Turkey.4 It is not entirely clear whether Complainant's specific KENA-marked magazines have appeared within the search results returned by entering the disputed domain name in a browser address line from any geographic location.5
Complainant has provided evidence that entering the term “kena” as the search term in Google, Yahoo and Bing browsers in Mexico yields extensive references to Complainant's KENA-marked products, beginning with the initial results. Respondent has provided evidence that entering the term “kena” in search engines ((including Google, Yahoo, Bing, Ask.com and AOL) from Turkey does not yield results referring to Complainant’s KENA-marked products, at least in the first five pages.
Respondent has provided evidence that the term "kena” is sometimes used as a female first name or a surname, is the name of a village in Lithuania, is a principal Upanishad, is a misspelled version of towns in Egypt and the state of Alaska, is a misspelled version of the country of Kenya, is the name of a type of flute used in Latin America, is a word in Estonian, and is the abbreviation of several organizations. Respondent has also provided evidence that the term “kena” has been registered as a trademark by enterprises other than Complainant in Mexico, as well as in the United States and the European Union.
The registration agreement in effect between Respondent and GoDaddy.com, Inc.subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant alleges that it has rights in the trademark KENA as evidenced by registration in Mexico and the United States, and by extensive use in commerce in Mexico and Latin America.
Complainant argues that the disputed domain name is identical or confusingly similar to its trademark.
Complainant contends that its trademark is well-known by virtue of its extensive use in Mexico and other countries.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated with Complainant and has not been authorized to use its trademark; (2) Respondent has not been commonly known by Complainant's trademark or any variation thereof, and has no trademark rights in the term; (3) Complainant adopted and registered the mark in Mexico prior to Respondent's registration of the disputed domain name, and that because Complainant's mark is well-known Respondent must have known of it when it registered the disputed domain name; (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because Respondent is using it in connection with a pay-per-click link farm parking page website selling products that compete directly or indirectly with those of Complainant.
Complainant argues that Respondent registered and used the disputed domain name in bad faith because: (1) using a third party’s trademark to drive traffic to a pay-per-click parking page based on initial interest confusion constitutes bad faith; (2) Respondent must have known of the strong reputation of Complainant's trademark in Mexico and other countries when it registered the disputed domain name; (3) Respondent has registered and used the domain name to intentionally for commercial gain attract Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation, or endorsement of Respondent's website; (4) Respondent has offered the disputed domain name for sale for the purpose of commercial gain, and because Respondent owns several domain names it must intend to sell them to their rightful owners; (5) because Respondent lacks rights or legitimate interests it is not even necessary to consider the issue of bad faith registration because registration of a third-party trademark without legitimate interest in itself constitutes bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent argues that the term "kena” has many meanings and usages other than as a trademark of Complainant.
Respondent contends that it purchased the disputed domain name to "create a personal website including news, latest sales and success stories of domain names and websites", and that the first two letters of "key names" represent the disputed domain name “kena”. Respondent indicates that it has not had time to work on its personal project, and has parked it with Sedo as a temporary matter. Respondent states "Prior to parking it on Sedo.Com LLC, I only did a cursory search on some international search engines with the keyword “kena” is to see if it has any other meanings until I received this complaint, I did not know the presence of the complainant and its trademark because it is almost impossible to come across with the complainant's trademark on international search engines with the keyword ‘kena’.”
Respondent argues that it did not attempt to contact any third-party to attempt to sell the disputed domain name, and this is evidence of its absence of bad faith.
Respondent contends that Complainant is not using its trademark as the principal identifier of its main website, and thus is promoting its business under other names.
Respondent argues that the disputed domain name has received only about 5,000 visits in total between January and October 2010, indicating that Internet users seeking Complainant's products are not using the disputed domain name.
Respondent contends that because other parties have registered the term “kena” as a trademark it does not belong exclusively to Complainant.
Respondent argues that it has rights or legitimate interests in the disputed domain name because the term has various uses other than as a trademark of Complainant, and because use of a generic term to identify a pay-per-click parking page constitutes a legitimate use by Respondent.
Respondent contends that it had no knowledge of Complainant or its trademark when it registered the disputed domain name. Respondent does not reside in Mexico or Latin America, and does not speak Spanish. Respondent resides in Turkey. Even if Complainant's trademark is well-known in Mexico or Latin America, it is not well-known in Turkey. It is not clear that Complainant's trademark is well-known in Mexico.
Respondent states that because the Mexican Trademark Database was not publicly accessible until 2009, Respondent could not reasonably have known of Complainant's registration in Mexico when Respondent registered the disputed domain name. Even now, the trademark database in Mexico is only in Spanish, and Respondent does not speak Spanish. Complainant's trademark was registered in the United States in June 2010, alleging first use in commerce of May 5, 2010. The disputed domain name was purchased by Respondent two years prior to the United States registration. Even though the filing date of the application is one month before Respondent's acquisition of the disputed domain name, it could not have known of this information in Turkey at that time. Complainant does not have any registrations outside Mexico or the United States.
The fact that the term “kena” is registered by persons other than Complainant is evidence that the term is descriptive or generic. Respondent argues that Complainant is attempting to take unfair advantage of other trademark owners by securing the disputed domain name.
Complainant never tried to contact Respondent about the dispute. If it had, Respondent would have taken precautions with respect to the parking page.
Respondent was not aware that the disputed domain name generated links in Mexico that may have conflicted with Complainant's trademark, of which Respondent was in any case unaware. According to Respondent, this cannot constitute evidence of bad faith intention to take unfair advantage of Complainant's trademark since Respondent was neither aware of Complainant's trademark or that the pay-per-click parking page was generating links relating to Complainant's business.
Respondent indicates that if it is allowed to keep the disputed domain name it will remove the parking page and use a maintenance notification without advertisements until it develops its personal project.
Respondent requests the Panel to reject Complainant's request to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the word trademark KENA on the Principal Register of the USPTO in the United States, and has provided evidence to the USPTO of use in commerce in the United States (see Factual Background, supra). Respondent has not challenged the fact of this registration that constitutes prima facie evidence of validity.
Complainant has provided evidence of registration of several KENA-formative word and design marks on the register of IMPI in Mexico, and substantial evidence of use in commerce of the term KENA and KENA-formative terms in Mexico. Complainant has not specified why it did not secure registration for the term ”Kena”, standing alone, in Mexico, nor did it address the legal consequences of registering only KENA-formative word and design marks in Mexico.
There are a number of potential reasons why Complainant has not registered KENA, standing alone, in Mexico. Respondent has not specifically addressed the lack of a KENA-alone trademark registration in Mexico. Complainant has provided substantial evidence, including copies of magazines, showing that it has used KENA standing alone as an identifier of its products in Mexico, as well as using various combinations of terms with KENA in Mexico.
The Panel determines that Complainant has rights in the trademark KENA standing alone in the United States based on the presumption of validity attaching to the USPTO registration. The Panel determines that Complainant has trademark rights in the term KENA as the principal distinctive element of several KENA-formative marks in Mexico based on registration in Mexico.6 The Panel further accepts Complainant's argument that it has such trademark rights in KENA standing alone in Mexico arising, at least, from usage.
Complainant has provided persuasive evidence that the term KENA is well-known in Mexico in association with its magazine products, including by providing evidence of the substantial print runs of KENA-identified magazines and the high level of Internet search engine results returned with respect to Complainant's products by Google, Bing and Yahoo. In addition, Complainant has provided evidence that third-party advertisers actively promote their products in Complainant's KENA-identified publications. The Panel has some difficulty reconciling that Complainant has not explained the legal basis of its rights in the trademark KENA standing alone as a matter of Mexican law with the apparent well-known character of the KENA identifier. This is a consequence of incomplete explanation by Complainant.
The disputed domain name directly incorporates the term KENA, adding only the generic top-level domain identifier “.com”. For purposes of the Policy, the disputed domain name is identical to Complainant's trademark.
The Panel will address the sequence of trademark registration and disputed domain name registration under the heading of bad faith.
The Panel determines that Complainant holds rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark for purposes of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because Complainant has not authorized Respondent to use its trademark, Respondent was not commonly known by the disputed domain name, and because use in connection with a link farm pay-per-click parking page that returns results of third parties offering goods or services competitive with those of Complainant does not establish rights or legitimate interests. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has argued that it registered the disputed domain name with the good faith intention to establish a website devoted to providing information about success stories with respect to domain names and websites. However, Respondent has provided no tangible evidence of a business plan with respect to such an enterprise, and Respondent registered the disputed domain name more than 2 1/2 years ago. Respondent has not provided evidence of demonstrable preparations for a bona fide offering of goods or services prior to notice of the dispute. (See, e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett,
WIPO Case No. D2000-1000.)
Respondent has used the disputed domain name in connection with a link farm parking page advertising the goods and services of third parties in competition with those of Complainant. It is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,
WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,
WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media,
WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,
WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,
WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,
WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com,
WIPO Case No. D2007-1881. Respondent may not disclaim responsibility for the manner in which the disputed domain name is used because it has delegated parts of that responsibility to a domain name service provider.
Respondent has sought to justify its use of Complainant's trademark in the disputed domain name in connection with a link farm parking page on grounds that it is making fair use of a generic or commonly descriptive term. To establish that fact, Respondent has referred to a village in Lithuania, Latin American flutes, Indian religious philosophy, a term in Estonian, misspellings of cities and countries, and abbreviated names of organizations. Respondent has also referred to use of “Kena” as a personal name.
Respondent has not demonstrated that the term “kena” has a generic or common descriptive character in English or Spanish. While the term may have a meaning in Estonian, Respondent has not provided evidence that it has registered or used the term to appeal to Estonian Internet users. Although there may be potential uses of the term “kena” for relatively unique references to Indian philosophy or Latin American flutes, this is insufficient to establish that the term is "generic" or commonly descriptive in identifying a genus or category of thing that would be identifiable to a general public. Respondent has failed to persuade the Panel that it is making use of the trademark KENA in a generic or commonly descriptive sense such as might establish a legitimate use of that term in connection with a pay–per-click link farm parking page.
Respondent has provided evidence that "Kena” may be used as a first name or a surname. However,
Respondent’s evidence demonstrates that this is an uncommon name in the United States and other places for which it has provided evidence. If there are 1,289 individuals in the United States using "Kena" as a first name, and 58 using it as a surname, that represents a very small proportion of the 300+ million individuals living in the United States. Respondent has not provided evidence sufficient to establish that “Kena” is so widely used as a personal name as to be open for fair common usage with a link farm parking page.
The Panel determines that Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent 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 [the respondent's] documented out-of-pocket costs directly related to the domain name; … or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent has used Complainant's distinctive KENA trademark in the disputed domain name to direct Internet users to a pay-per-click parking page that includes links to direct and indirect competitors of Complainant. This constitutes intentional use of a domain name for commercial gain to attract Internet users to a website by creating consumer confusion with Complainant's mark with respect to Complainant as source, sponsor, affiliate or endorser of Respondent's website. Internet users would be substantially less likely to visit Respondent's website were it not for its use of Complainant's mark to attract those visitors.
In addition, Respondent solicits offers to purchase the disputed domain name on the website identified by the disputed domain name. This suggests that Respondent registered the disputed domain name for the purpose of selling it to Complainant or a third party for a price in excess of its out-of-pocket costs directly related to the disputed domain name.
Respondent has argued that it could not have registered the disputed domain name in bad faith because (a) it was unaware of Complainant's trademark in Mexico at the time it registered the disputed domain name, and (b) registration of Complainant's trademark in the United States postdated registration of the disputed domain name, although it was subsequent to the filing of the application for registration.
Complainant had rights in its KENA trademark in Mexico at the time of registration of the disputed domain name, including by registration of that trademark at IMPI. Respondent has presented plausible grounds for concluding that it would have had difficulty finding specific evidence of Complainant's trademark registration in Mexico from Respondent’s location in Turkey. The evidence and arguments presented by Respondent make apparent, however, that it did not attempt to search for such a registration until this dispute was initiated by Complainant. More important, however, is that Respondent undertook to pay US$5,150 for the disputed domain name with no plausible explanation of the reason for such substantial expenditure unless Respondent knew or had reason to believe there was a value to that domain name beyond the combination of letters. In this Panel’s view, Respondent did not expend US$5,150 on the domain name because it represented the name of the village in Lithuania, a word in Estonian or one of the Indian Upanishads. This signals the Panel that Respondent was likely alerted to the fact that registration and use of the disputed domain name might well result in a claim of bad faith registration and use under the Policy. For these reasons, the Panel does not accept that Respondent should be alleviated from responsibility for registering and using the trademark of Complainant because Respondent was in Turkey. Respondent undertook its purchase of the disputed domain name in circumstances in which it knew or should have known that the name was registered as a trademark by a third-party. It is important to point out that, at the relevant time, Complainant's trademark was well known in Mexico.
As a matter of general principle under the Policy, a respondent cannot act to take unfair advantage of a complainant’s rights in a trademark before those rights arose. See, e.g., Mariposa Ltd. v. Stonecutter, Don Sawtelle,
WIPO Case No. D2010-0200; Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,
WIPO Case No. D2009-1033; Super-Krete International, Inc. v. Concrete Solutions, Inc.,
WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility,
WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074.7
Complainant filed its application to register the KENA trademark at the USPTO on April 29, 2008. According to the USPTO TARR database, Complainant's application was entered in the electronic database (TRAM) on May 2, 2008.8 Respondent purchased the disputed domain name on or about May 30, 2008. Complainant filed its application as an ITU, and notified the USPTO of first use in commerce as of May 5, 2010, with registration issuing on June 29, 2010. Under United States trademark law, the filing of an ITU application constitutes constructive use of the mark dating back to the filing date of the application for purposes of establishing priority, contingent on registration. See, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,
WIPO Case No. D2009-1033. This is designed to prevent third parties from using a mark during the period between filing an application and the grant of registration in a way that would establish conflicting rights.
Respondent has urged the Panel to ignore Complainant's United States trademark registration on grounds that it was issued following registration of the disputed domain name. But, based on its filing of the ITU application, Complainant has a right of priority in the United States preceding registration of the disputed domain name. As to whether Respondent might have been able to find evidence of Complainant's application for registration in the United States, and thus have been aware of Complainant's assertion of contingent rights, this would have been possible, if perhaps not easy. Taking into account Complainant's location in Turkey, the Panel does not consider this possibility alone to provide notice of Complainant's trademark rights in the United States to Respondent, but it does serve to reinforce that Respondent may not rely on the "non-establishment" of trademark rights by Complainant in the United States at the time of registration of the disputed domain name as a complete defense to a finding of bad faith registration and use.
Respondent has indicated that the disputed domain name is registered as a trademark by a number of enterprises in various countries and regions. That information apparently was not so difficult to find. Respondent paid a significant dollar amount for the disputed domain name that cannot be accounted for by "genericness" or a common descriptive character. Respondent took a risk that a trademark owner would assert a claim for bad faith registration and use. That has now occurred.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith by using the trademark of Complainant, well-known in Mexico, to direct Internet users to a pay-per-click parking page. Respondent has offered the disputed domain name for sale to the public on the basis of the value inherent in the trademark of Complainant.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant.
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, <kena.com>, be transferred to Complainant.
Frederick M Abbott
Sole Panelist
Dated: January 12, 2011
1 The Panel reviewed the USPTO TARR database record of this application and registration on January 10 and 11, 2011.
2 Complainant provided evidence of such website content, and the Panel visited the website on January 10, 2011.
3 The Panel visited the website identified by the disputed domain name on January 10, 2011 from the United States and viewed the results in English and Spanish. The Panel is familiar with the Spanish language.
4 Respondent has indicated that it is unable to view English and Spanish results from the website identified by the disputed domain name in Turkey ("Because when I visit the disputed domain name from Turkey and choose the language of Spanish from the dropdown menu to view the Spanish advertisements, there are Turkish links and it is not possible to see previously mentioned words in the “Related Searches” field even though I chose a different language." Response)
5 The Complaint alludes to such results, but the hard copy evidence furnished by Complainant does not appear to include that. The Panel notes that the parties provided a large quantity of evidentiary materials both relevant and irrelevant to subject matter of the proceeding, making it difficult to state with assurance that there is no evidence of the appearance of Complainant's trademark in parking page search results. This is not, in any event, an important element in the outcome of the proceeding.
6 Respondent has not specifically challenged Complainant's rights in the term KENA standing alone in Mexico to identify Complainant's products in Mexico.
7 There are some panel decisions under the Policy in which bad faith registration and use has been found notwithstanding that trademark rights had not been established at the time of domain name registration, as limited exception to the general sequencing principle. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,
WIPO Case No. D2003-0845. Some panels have used the public announcement of a forthcoming product or service launch as the basis for effectively establishing trademark rights in the making.
8 Panel visit of January 11, 2011 to US PTO TARR database record with respect to KENA trademark application.
