WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KGK Holding AB v. Whois privacy services / Andrei Kamsky

Case No. D2013-1834

1. The Parties

Complainant is KGK Holding AB of Sollentuna, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

Respondent is Whois privacy services of Saint-Petersburg, Russian Federation / Andrei Kamsky of Saint-Petersburg, Russian Federation.¹

2. The Domain Name and Registrar

The disputed domain name <kamasa-tools.com> is registered with NICREG LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 7, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 11, 2013.

The Center verified that the Complaint together with the amended 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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2013.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 6, 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.

4. Factual Background

Complainant is a general agent for leading manufacturers of high quality technical equipment with legal domicile in Sollentuna, Sweden.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation KAMASA-TOOLS, including the following:

- Word mark KAMASA-TOOLS, Swedish Patent and Registration Office (PRV), Registration No.: 0153861, Registration Date: January 9, 1976, Status: Active;

- Word mark KAMASA-TOOLS, Swedish Patent and Registration Office (PRV), Registration No.: 0388372, Registration Date: April 13, 2007, Status: Active;

- Word/device mark KAMASA-TOOLS, Swedish Patent and Registration Office (PRV), Registration No.: 0178224, Registration Date: September 18, 1981, Status: Active;

- Word/device mark KAMASA-TOOLS, Swedish Patent and Registration Office (PRV), Registration No.: 0388373, Registration Date: April 13, 2007, Status: Active.

The disputed domain name <kamasa-tools.com> was registered on October 12, 2010 and redirects to a website at “www.kamasa-tools.com” which is a typical pay-per-click (“PPC”) website with numerous hyperlinks to commercially active websites of third parties. Moreover, the website at “www.kamasa-tools.com” offers the disputed domain name for sale.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant asserts that its KAMASA-TOOLS trademarks are well known in the automobile and marine industry. The tools that are offered under the KAMASA-TOOLS trademarks are of the highest quality with a tradition of nearly 50 years, currently being distributed in 18 countries in both Europe and the Middle East.

Complainant suggests that the disputed domain name is identical with Complainant’s KAMASA-TOOLS trademarks because the disputed domain name contains Complainant’s trademarks in their entirety with the generic Top-Level Domain (“gTLD”) “.com” being irrelevant for the identity assessment.

Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not given Respondent any permission to register its KAMASA-TOOLS trademarks as a domain name nor is Respondent a licensee of Complainant, (2) the hyperlinks on the website at “www.kamasa-tools-com” relate to the same kind of services as Complainant’s trademarks comprise which strongly suggests that the disputed domain name was registered with Complainant’s KAMASA-TOOLS trademarks in mind in order to commercially profit from misled consumers searching for information about Complainant’s business, and (3) there is no evidence that Respondent has been commonly known by the disputed domain name nor that Respondent is making a legitimate noncommercial or fair use thereof.

Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since (1) Complainant’s trademarks were registered well before Respondent became the owner of the disputed domain name, (2) it is obvious that Respondent was well aware of Complainant’s KAMASA-TOOLS trademarks and business when registering the disputed domain name and that Respondent registered the latter to commercially profit form the likelihood of confusion between Complainant’s KAMASA-TOOLS trademarks and the disputed domain name, and (3) a cease and desist letter sent to Respondent on October 17, 2013 remained unanswered.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That 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.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <kamasa-tools.com> is identical with the KAMASA-TOOLS trademarks in which Complainant has shown to have rights.

The disputed domain name incorporates the KAMASA-TOOLS trademarks in their entirety. It has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2) that the applicable top-level suffix “.com” in the disputed domain name is to be disregarded under the identity or confusing similarity test as being a mere technical requirement of registration.

Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services nor has Respondent been commonly been known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use without intent for commercial gain.

The disputed domain name redirects to a typical PPC website at “www.kamasa-tools.com”, displaying various sponsored listings or related links not specifically tailored to Complainant, but some of which apparently relate to the same kind of services as Complainant’s trademarks and business comprise. The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged reputation of Complainant’s KAMASA-TOOLS trademarks in the automobile and marine industry – obviously alludes to Complainant’s trademarks and business. Such use of the disputed domain name to seek “pay-per-clicks” by those diverted Internet users who are trying to reach Complainant, but due to the identity of the disputed domain name with Complainant’s KAMASA-TOOLS trademarks end up with Respondent’s Internet presence at “www.kamasa-tools.com”, is neither noncommercial nor fair because it has the predominant purpose of generating advertising revenues, nor is it fair because Internet users by confusion are brought to a general website with information about a variety of matters that are not specifically tailored to Complainant.

Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods and services because (1) Respondent obviously has not been authorized to use Complainant’s KAMASA-TOOLS trademarks as a domain name or on Respondent’s website or in any other way and Respondent’s name apparently does not correspond to Complainant’s KAMASA-TOOLS trademarks nor is any other reasonable explanation apparent why Respondent should rely on the designation “Kamasa Tools” as it is contained in the disputed domain name, except that it was for the mere purpose of selling the disputed domain name as offered on the website at “www.kamasa-tools.com”.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the amended Complaint duly notified to Respondent by the Center on November 11, 2013.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The Panel takes the view that the redirection of the disputed domain name, which is identical with Complainant’s KAMASA-TOOLS trademarks, to a website in order to generate revenues by Respondent (either by “pay-per-click” or by selling the disputed domain name) without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s KAMASA-TOOLS trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

In this context, it also carries weight in the eyes of the Panel that Respondent made use of a privacy service in order to conceal its true identity, which as such is not illegal, however, under the circumstances in the case at hand throws a light on Respondent which at least supports the finding of registration and use of the disputed domain name in bad faith.

Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.

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 <kamasa-tools.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: December 17, 2013

¹ In accordance with Complainant’s amended Complaint of November 11, 2013, the term “Respondent“ as used by the Panel in the case at hand refers exclusively to Andrei Kamsky of Saint-Petersburg, Russian Federation, who was confirmed by the Registrar on November 1, 2013 to be the underlying registrant of the disputed domain name.