WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KICKZ AG v. ping chen/Chen Ping

Case No. D2015-2286

1. The Parties

The Complainant is KICKZ AG of Munich, Germany, represented by BPM Legal, Germany.

The Respondent is ping chen/Chen Ping of Chongqing, China.

2. The Domain Name and Registrar

The disputed domain name <k1xpatrickmohrmk5.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 18, 2015, the Center sent an email communication to the Parties in Chinese and English regarding the language of the proceeding. On December 21, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceeding commenced on December 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 25, 2016. 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

The Complainant operates an online shop for premium sneakers and urban fashion that sells brands including K1X and delivers to many countries around the world. The Complainant owns various registrations of the trademark K1X, including International Registration No. 781138, registered from 2001 with respect to multiple classes of goods and services, including shoes, and effective in multiple jurisdictions, including China. The Complainant offers its products online at websites including “www.k1x.com”. Patrick Mohr is an individual who has designed products for the Complainant including the Mk5 series of sneakers that was featured on the Complainant’s website under the product name “K1X Patrick Mohr Mk5”.

The Respondent is an individual located in China. The disputed domain name was registered on May 26, 2015. It resolves to a website that displays images and text identical to those on the Complainant’s website and offers shoes for sale.

5. Parties’ Contentions

A. Complainant

The disputed domain name fully incorporates the Complainant’s highly distinctive and widely-known K1X mark and is confusingly similar to that mark. The additional terms “Patrick Mohr” and “MK5” strengthen the likelihood of confusion because they directly refer to the Complainant’s cooperation with the designer Patrick Mohr.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the K1X mark. Even if the products offered at the Respondent’s website are genuine, the Respondent does not disclose its relationship with the Complainant, it does not sell only the Complainant’s trademarked products and the website incorporates the Complainant’s logo.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. Based on the Complainant’s high profile worldwide, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its right in the K1X mark. Further, the disputed domain name clearly refers to one of the Complainant’s products. The website prominently features the Complainant’s logo, offers counterfeit products and advertises third party products.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the website with which the disputed domain name is used is in English only and that the Complainant does not understand Chinese.

The Panel notes that all email communications sent by the Center to the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding but the Respondent did not in fact object.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English. The website with which the disputed domain name is used is also in English, from which it is reasonable to conclude that the Respondent understands that language. Further, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. The Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

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

Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of K1X.

The disputed domain name incorporates the Complainant’s trademark in its entirety. The Complainant’s trademark is the first element in the disputed domain name.

The disputed domain name contains the additional elements “patrickmohr” and “mk5”. The combination of these elements with the Complainant’s mark in the disputed domain name is identical to one of the Complainant’s product series names, i.e., “K1X Patrick Mohr Mk5”, minus the spaces. Therefore, the Panel finds that these additional elements are not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark; if anything, they increase the confusing similarity.

The disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com” but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080).

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the disputed domain name is confusingly similar to the Complainant’s trademark and is being used with a website that offers for sale what are allegedly the Complainant’s shoes, but the website also displays a banner advertising shoes of another brand. Further, the Complainant states that it has no connection whatsoever with the Respondent but the website does not accurately disclose the Respondent’s lack of any relationship to the Complainant. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is “ping chen” or “Chen Ping”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers shoes for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name is confusingly similar to the Complainant’s trademark and, apart from the gTLD, identical to one of the Complainant’s product series names. The website to which the disputed domain name resolves offers for sale what are alleged to be the Complainant’s products of that same name. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark and use it as a domain name.

The Respondent uses the disputed domain name, which wholly incorporates the Complainant’s trademark, with a website that displays the Complainant’s trademark and offers what are alleged to be the Complainant’s shoes for sale. The Respondent has no connection with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. Further, the website displays images and material from the Complainant’s official website, including the Complainant’s K1X logo. This gives the impression that the website is a site approved by, or affiliated with, the Complainant. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <k1xpatrickmohrmk5.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 27, 2016