WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kijiji International Ltd v. Amedeo D'amato

Case No. D2012-2548

1. The Parties

The Complainant is Kijiji International Ltd. of San Jose, Calfornia, United States of America, represented by Pillsbury Winthrop Shaw Pittman LLP, United States of America.

The Respondent is Amedeo D'amato of Torino, Italy.

2. The Domain Name and Registrar

The disputed domain name <kjtjtj.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2012. On January 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2013. Due to an administrative error in the Notification of the Complaint, the Notification was resent to the Respondent on January 31, 2013, and the due date for a Response was extended until February 5, 2013. The Respondent did not submit any response.

The Center appointed Brigitte Joppich, Michael A.R. Bernasconi and Luca Barbero as panelists in this matter on February 21, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

The Complainant provides a number of online marketplaces and Internet websites that enable users to interact and communicate with each other in order to exchange goods or services, discuss topics of interest or find activity partners. It provides its services for nearly 200 cities in seven countries around the world via community-specific classified ad websites at various domain names, including <kijiji.it>, <kijiji.ch>, <kijiji.at>, <kijiji.ca>, <kijiji.be>, <kijiji.com.hk>, and <kijiji.co.jp> (the “KIJIJI Websites”) The Complainant’s Italian website at <kijiji.it> has approximately 3 million active ads and approximately 10 million unique visitors per month. The Complainant spends approximately USD 2,000,000 annually to market its website at <kijiji.it> in Italy.

The Complainant is registered owner of numerous trademarks for KIJIJI worldwide, including in the United States and Europe, where the Respondent and its registrar are located, inter alia United States Trademark Registration No. 3,218,718 for KIJIJI registered on March 13, 2007; United States Trademark Registration No. 3,218,714 for KIJIJI registered on March 13; 2007, United States Trademark Registration No. 3,303,570 for KIJIJI registered on October 2, 2007; United States Trademark Registration No. 3,229,681 for KIJIJI registered on April 17, 2007; United States Trademark Registration No. 3,229,682 for KIJIJI registered on April 17, 2007; United States Trademark Registration No. 3,229,684 for KIJIJI registered on April 17, 2007; and Community Trademark Registration no. 4249454 KIJIJI registered on January 20, 2006 (hereinafter referred to as the KIJIJI Marks). The KIJIJI Marks are registered for a variety of online and computer services and have already been found to be well-known (Kijiji International Ltd. v. Jack Shepard, WIPO Case No. D2012-2110).

In February 2010, the Complainant decided to disallow the posting of all “personal ads” (i.e. advertisements of a personal nature meant to generate friendly romantic and/or sexual encounters or relationships) on its KIJIJI Websites. Since the removal of all personal ads from the KIJIJI Websites, several third parties have launched sexually explicit personal ad websites addressing Italians by using domain names and logos infringing the KIJIJI Marks (see Kijiji International Ltd. V. Jack Shepard, supra.)

The disputed domain name was registered on April 2, 2011, and resolves to a website addressing Italians where users can post and view personal ads with sexually explicit photographs and other content.

On June 28, 2012, the Complainant sent a cease and desist letter to the Respondent by email and regular mail. The hard copy of the letter was returned by the Italian postal service as undeliverable (non-existing address). The Complainant did not receive any reply to its email correspondence.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant argues that the disputed domain name is a deliberate misspelling of the Complainant’s highly distinctive and well-known KIJIJI Marks as the Respondent has strategically altered the Complainant’s KIJIJI Marks by merely transposing the letters “i” and “j” and substituting the letter “i” by the letter “t”, and as the resulting word, “kjtjtj”, represents a slight alphabetical variation of the KIJIJI Marks while retaining the distinctive visual and phonetic elements of a leading letter “k” followed by repeating letters “j” and is thus confusing similar in appearance, spelling and/or sound to the Complainant’s KIJIJI Marks.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known by the name KJTJTJ other than though the disputed domain name itself; as the Respondent is not an authorized dealer, distributor or licensee of the Complainant, and as does not have any permission or authority to use the KIJIJI Marks or any variation thereof; as the intentional misspelling of the Complainant’s KIJIJI Marks does not create a new or different mark, in which the Respondent has legitimate interests or rights; as the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services but provides a website in a format similar to the Complainant’s websites featuring classifies ads; as the Respondent is using a confusingly similar imitation of the Complainant’s KIJIJI logo on its website; and as the Respondent’s website mistakenly and confusingly suggests an association with the Complainant and its KIJIJI Marks, diverts traffic from the Complainant’s KIJIJI websites, and tarnishes the KIJIJI Marks.

(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the fact that the present case is a typo squatting case is evidence that the Respondent registered and is using the disputed domain name in bad faith. Furthermore, the Complainant argues that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the KIJIJI Marks. It further contends that the Respondent’s website intentionally trades on the goodwill of the KIJIJI Marks and uses a confusingly similar imitation of the KIJIJI logo, contains sexually explicit content and photographs and therefore tarnishes the KIJIJI Marks. The Complainant finally states that the Respondent’s bad faith is further indicated by its failure to provide a valid mailing address when registering the disputed domain name and the use of a privacy shield.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to obtain the remedy sought:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and

(ii) the Respondent has 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. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s well known KIJIJI Marks.

Although the disputed domain name does not include the Complainant’s KIJIJI Marks, it renders a similar overall impression, starting with the letter “k” followed by a sequence of alternating letters. In fact, it appears that the Respondent strategically altered the Complainant’s KIJIJI Marks by merely transposing the letters “i” and “j” and substituting the letter “i” by the letter “t”. Given that the multiple use of the letter “j” in a word is very uncommon in most western languages (including Italian, the first language in Italy, where the Respondent is located), the Complainant’s KIJIJI Marks must be considered as highly distinctive. Moreover, both the Complainant’s marks and the disputed domain name use the same word concept, i.e. six letters starting with the letter “k” which is followed by two alternating letters, one of which is the letter “j”. As a result, KIJIJI and KJTJTJ must be considered as confusingly similar for purposes of this element of the policy in the view of the Panel.

Furthermore, it is well established that the generic top level of a domain name (e.g. “.com”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

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

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

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The website at the disputed domain name offers dating services and contains “adult material”. Although the Complainant has prohibited the posting of “all personal ads” on its website, the Panel finds that the Respondent’s services are somewhat similar to the services of the Complainant. It is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement (Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123).

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its marks and thus in bad faith under paragraph 4(a)(iii) of the Policy. The Complainant’s KIJIJI Marks are highly distinctive and well-known. Given that the Respondent maintains a website at the disputed domain name which allows Internet users to post classified ads and therefore offers services similar to the Complainant’s services, and that the Respondent uses a logo on its website which must be seen as a copy or at least an imitation of the Complainant’s logo used in Italy, where the Respondent is located, it is almost inconceivable in the Panel’s view that the Respondent registered the disputed domain name without knowledge of the Complainant.

As to bad faith use, the Panel finds that by using the disputed domain name as described above the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out in paragraph 4(b)(iv) of the Policy and thus in bad faith. This finding of bad faith is supported by the fact that the Respondent is using inaccurate contact data to the Register’s WhoIs information, and therefore, in the Panel’s view, trying to conceal his true identity (Blue Bell Creameries, L.P. v. Private Whois / Telecom Tech Corp., WIPO Case No. D2011-0316; dm-drogerie markt GmbH + Co. KG v. Aleksey Maksimyuk, WIPO Case No. D2011-0589; Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413).

Therefore, the Respondent has also been using the disputed domain name in bad faith, and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

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 <kjtjtj.com> be transferred to the Complainant.

Brigitte Joppich
Presiding Panelist

Michael A.R. Bernasconi
Panelist

Luca Barbero
Panelist

Date: March 3, 2013