Complainant is Kentech Group Limited, Ireland, represented by Damien Anthony O’Connor, United Arab Emirates.
Respondent is Qtechweb, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The disputed domain name <kentech.com> is registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2019, 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 July 12, 2019 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 July 17, 2019.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019. Respondent sent an email communication to the Center on August 5, 2019, requesting the automatic 4-day extension to file a Response. Respondent submitted a Response on August 7, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 15, 2019. 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.
On August 19, 2019, Complainant submitted a supplemental filing. Respondent sent an email communication to the Center on August 19, 2019.
Complainant, Kentech Group Limited, is part of a privately owned multinational organization which provides engineering, maintenance and construction services to the oil, gas and petrochemical industries. Complainant was incorporated in Ireland on April 6, 1993, and currently has offices in Ireland and in a number of other countries, including the United Kingdom.
Complainant owns several trademark registrations for the name and mark KENTECH in a number of jurisdictions, the earliest of which was registered on May 9, 2013 in the United Arab Emirates (No. 191469). Of particular relevance to this proceeding, Complainant currently owns a registration for the KENTECH mark in the European Union, which issued to registration on January 14, 2016 (No. 014250732). Complainant owned a prior registration in the European Union for a figurative version of the KENTECH mark (No. 004457099). That registration issued on September 1, 2006 and expired on May 20, 2015.
Complainant also owns the domain name <kentech.ie> which it registered in April 2000 and currently uses to provide information about Complainant and its services.
Respondent is an entity with an address in the United Kingdom. Respondent buys, sells and monetizes generic and common domain names. Respondent registered the disputed domain name on November 7, 2003. In early 2019, the Parties had communications regarding the disputed domain name and a possible purchase of such by Complainant. These communications did not lead to a purchase of the disputed domain name. Currently, the disputed domain name redirects to a website at <nameicon.com> that offers domain names for sale.
Complainant contends that it has rights in the KENTECH mark by virtue of its use and registration of the KENTECH mark. In that regard, Complainant contends that it developed unregistered or common law rights in the KENTECH mark in Ireland between the time it was incorporated in Ireland in 1993 and 2006, when it obtained a European Union registration for the KENTECH mark.
Complainant asserts that the disputed domain name is identical to Complaint’s KENTECH mark as it fully consists of the KENTECH mark with a non-distinguishing generic Top-Level Domain extension.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as (i) the disputed domain name is identical to Complainant’s fanciful and coined mark KENTECH that is well known in the oil and gas industry, (ii) the disputed domain name has never served any function but to direct users to a commercial domain name sales site, and (iii) Respondent has not since registering the disputed domain name made, or taken steps to make, any commercial or non-commercial use of the disputed domain name, but has only attempted to sell the disputed domain name. Complainant also argues that Complainant has never licensed or otherwise permitted Respondent to use the KENTECH mark, or to incorporate such in any domain name.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent would have been aware that Complainant had registered the domain name <kentech.ie> some two years before Respondent registered the disputed domain name, and would have known that Complainant’s KENTECH brand was a well-known international brand, particularly as the KENTECH mark, which is not based on a generic or dictionary term, has only acquired value on account of the commercial activities of Complainant. Complainant also argues that Respondent has acted in bad faith as Respondent (i) has made no use of, or taken steps to use, the disputed domain name and has never provided any credible rationale for registering the disputed domain name, (ii) registered the disputed domain name primarily for the purpose of selling it for profit and has done so by attempting to engage Complainant in a “bidding war” for the disputed domain name, and (iii) has taken steps to conceal its identity and in fact misrepresented its true status in negotiations with Complainant regarding the disputed domain name.
Respondent rejects Complainant’s contentions.
Respondent contends that it registered the disputed domain name in November 2003 when it appeared on a drop list, and assumed that the previous owner, a technology company by the name of Kentech, Inc., was no longer interested in the disputed domain name. Respondent maintains that it registered the disputed domain name as part “of a legitimate pattern of registering ‘tech’ – related domain names.” Respondent states that when it registered the disputed domain name it did so for purposes of reselling the disputed domain name to anyone with an interest in it and that it sought to profit from it by using it with advertising links, none of which related to Complainant or its services.
Respondent asserts that it was not aware of Complainant when it registered the disputed domain name and had no reason to be aware of Complainant in 2003. Respondent also asserts that the name “Kentech” was in 2003, and is currently, in common use by many businesses unrelated to Complainant and, as a result, is not unique to Complainant.
Respondent asserts that it has received many inquiries about purchasing the disputed domain name over the years. Respondent argues that Complainant has misrepresented the communications between Complainant and Respondent regarding the disputed domain name. Respondent contends that Complainant initiated the contact with Respondent and made an offer to purchase the disputed domain name for USD 28,001 on February 3, 2019. According to Respondent, the Parties thereafter had communications in which Respondent was told that the offer of USD 28,001 was not an offer that had been approved by Complainant. In these communications, Respondent admits that it advised Complainant that it had received an offer of USD 30,000 from an entity in China in 2017, but states that it did so in light of Complainant’s offer to purchase the disputed domain name for USD 28,001. Respondent also maintains that Complainant subsequently made an offer of USD 4,000 – 6,000 for the disputed domain name and that the parties had further communications regarding the disputed domain name and Complainant’s alleged trademark rights in KENTECH, and when such arose.
Lastly, Respondent argues that Complainant has not established that it had any unregistered or common law rights in KENTECH in 2003 and that mere ownership of the <kentech.ie> domain name does not confer such rights to Complainant. Respondent also argues that the trademark registrations submitted by Complainant are in the name of Kentech Group Holdings Limited and not in the name of Complainant and that Complainant has failed to assert the basis upon which Complainant can rely on such trademark registrations.
Based on the foregoing, Respondent argues that Complainant has not proven that it owns the KENTECH mark for purposes of the first element. Respondent further argues that Respondent has a legitimate interest in the disputed domain name, as it has used the disputed domain name with a page of generic advertising links unrelated to Complainant and because Respondent is in the business of speculating in domain names without any intent of profiting from others. Lastly, Respondent asserts that it has not acted in bad faith given that (i) Respondent was not aware of Complainant in 2003 when it registered the disputed domain name, (ii) the “Kentech” name is not unique to Complainant, (iii) there is no evidence that Respondent targeted Complainant or used the disputed domain name to take advantage of any rights of Complainant in the KENTECH mark, and (iv) the evidence shows that Complainant contacted Respondent first and made an unsolicited offer to Respondent to acquire the disputed domain name.
Respondent contends that the facts warrant a finding of reverse domain name hijacking, particularly in light of Complainant’s reliance on the Parties discussions regarding the disputed domain name in 2019 and witness statements concerning such. Respondent contends that Complainant’s contentions and supporting witness statements fail to provide a full account of the discussions and, specifically, Complainant’s unsolicited initial offer of USD 28,001.
In response to Respondent’s request for a finding of reverse domain name hijacking, Complainant asserts that the initial contact regarding the disputed domain name was through an anonymous email account associated with the disputed domain name and that no response was ever received from Respondent. Complainant maintains that it then made an inquiry though a drop box at <nameicon.com>, the website to which the disputed domain name resolved. Complainant maintains that the drop box required a monetary offer to be made in order for an inquiry to be registered on a domain name offered through the website. Complainant avers that it entered an amount based on what the drop box required to simply make an inquiry and make contact with the registrant of the disputed domain name. Complainant further avers that after it was finally contacted on behalf of Respondent, it attempted to negotiate a purchase and made an offer for the disputed domain name, which Respondent rejected. Complainant also asserts that Respondent took steps to conceal its identity in the initial communications concerning the disputed domain name.
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent’s response, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of this supplemental filing, which for the most part consists of arguments by Complainant is support of contentions already made by Complainant in the Complaint. Nevertheless, the Panel is willing to accept those portions of Complainant’s Supplemental Filing that concern communications between the Parties regarding a possible attempt to purchase the disputed domain name by Complainant in 2019. As for the rest of Complainant’s supplemental filing, the Panel declines to accept the remainder of Complainant’s Supplemental Filing and has disregarded such in reaching its decision.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a number of trademark registrations for the KENTECH mark in connection with its engineering, maintenance and constructions services.1
With Complainant’s rights in the KENTECH mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the disputed domain name is identical to Complainant’s KENTECH mark as it consists fully and solely of the KENTECH mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s KENTECH mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Here, Respondent registered the disputed domain name in November 2003 and claims that it did so for purposes of reselling the disputed domain name to anyone interested in purchasing the disputed domain name. After registering the disputed domain name, Respondent used the disputed domain name with a click through advertising portal full of links for a variety of goods and services. The evidence that is before the Panel regarding the advertising portal shows links of a generic type that relate to items such as life insurance quotes, gambling, homes, casinos, auto insurance and the like. None of the links appear to relate to Complainant or Complainant’s services, and Complainant does not argue otherwise. As to whether Respondent targeted the notoriety of Complainant’s KENTECH mark by using the disputed domain name with a click through advertising mark in 2004, that is questionable based on the evidence before the Panel. The KENTECH mark does not appear to have attained much notoriety in 2004. No evidence has been submitted by Complainant to show that in 2004 the KENTECH mark was known to consumers or the relevant trade. Indeed, Complainant owned no trademark registrations for the KENTECH mark at that time and, as discussed more fully below in the consideration of the third element, had limited common law rights.
By contrast, by at least 2017 (and possibly by 2015), Complainant had grown substantially and appears to have developed some notoriety in the oil and gas industry. At that time, Complainant also owned a number of trademark registrations for the KENTECH mark throughout the world, including in the European Union. Respondent appears to have started receiving offers for the disputed domain name in or around that time. Although Respondent maintains that it has received a number of offers for the disputed domain name over the years, the evidence submitted shows some offers for the disputed domain name from early 2016 for USD 1,500 or less and an offer from someone in China in 2017 for USD 30,000. Respondent has also included a sample of inquiries for the disputed domain name from 2017 and 2018. Interestingly, the offer prices in the document submitted by Respondent while partly blurred (but still visible), all appear to be for USD 28,001, the amount that Complainant offered when it purportedly inquired about the disputed domain name in February 2019. There is no evidence in the record of any offers for the disputed domain name prior to January 2016.
What the evidence suggests is that the disputed domain name likely had a significantly lower value when Respondent registered the disputed domain name in November 2003, than when offers where made in 2017 and thereafter. It appears that Respondent priced the disputed domain name at around USD 28,000 in or about 2017, which would explain the multiple offers of USD 28,001 and USD 30,000 at that time. Given that KENTECH is not a common word or generic term, it seems unlikely that its value was simply based on the disputed domain name being an interesting domain name. It appears more likely than not, that because Complainant’s company had grown significantly by 2017 and became known in its relevant trade, the KENTECH name had acquired much more value. Indeed, Respondent itself admits that Complainant is now a “substantial business.”
As to whether and how Complainant made an offer or inquiry for the disputed domain name in early 2019 at USD 28,001 is not really material. From what is before the Panel, it appears that the valuation ascribed by Respondent to the disputed domain name was based in part on its trademark value and its value as the name of a “substantial business.” Given that offers in early 2016 for the disputed domain name were around USD 1,500 or less, and there is no evidence that there were any offers for the disputed domain name prior to that time, it seems more likely than not that the disputed domain name had gained value on account of the activities and notoriety of Complainant and that Respondent sought to profit from such.
As the relevant time for the assessment of whether a respondent has rights and legitimate interests is a disputed domain name is the date of the complaint (WIPO Overview 3.0 at section 2.11), Respondent’s actions in trying to sell the disputed domain name at what appears to be an increased valuation based on the growth of Complainant’s business puts into question the legitimacy of Respondent’s claim of having a legitimate interest in or making a bona fide use of the disputed domain name. For this reason, the Panel finds that Complainant succeeds under the second element.
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the requirement that the respondent registered and used the disputed domain name in bad faith. However, unlike the assessment of a respondent’s legitimate rights or interests in a disputed domain name, which has to be assessed at the time of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.
Although Complainant currently owns a number of trademark registrations for its KENTECH mark, the earliest of these registrations issued in 2013. Complainant previously owned an EUTM registration for a figurative version of the KENTECH mark that was applied for in May 2005 and issued to registration in September 2006. That registration, though, expired in 2015. As the disputed domain name was registered on November 8, 2003, none of these registrations are applicable in assessing Complainant’s rights as of November 8, 2003 in the KENTECH mark. To overcome this deficiency, Complainant has claimed that it owned common law or unregistered rights in the KENTECH mark going back to 1993 when Complainant was incorporated in Ireland.
The issue that is thus before the Panel is whether, and to what extent, Complainant owned common law or unregistered rights in the KENTECH mark as of November 2003. See WIPO Overview 3.0 at section 1.3. In that regard, Complainant must establish that its claimed KENTECH mark had become a distinctive identifier that the relevant consumers associated with Complainant’s goods and/or services. Proof of such rights cannot be based on conclusory allegations or unsubstantiated statements. For this reason, panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Id. and cases cited therein.
Complainant’s evidence in support of its claim of unregistered or common law rights consists of (i) a copy of Complainant’s 1993 Certificate of Incorporation, (ii) a Whois record showing ownership of the domain name <kentech.ie> by Complainant and its registration in 2001, (iii) copies of annual statutory accounts for the Kentech Group Limited from 1995 to 2003, and (iv) a witness statement from the Chief Executive Officer of Kentech Group Limited regarding the history of the Kentech Group.
The evidence provided by Complainant clearly shows that Complainant registered and used the trade name Kentech Group Limited in connection with its activities between 1993 and 2003. However, Complainant has provided little, if any, evidence regarding its actual use of the KENTECH mark prior to November 2003 or how such mark was used and where. The annual statutory accounts, for instance, simply show that Kentech Group Limited had assets in respect to its share capital and balance sheets from 1995 through 2003 (albeit in significantly smaller amounts than in 2018). What is missing is anything showing use of the KENTECH mark or the way the KENTECH mark was used by Complainant, the extent and scope of that use, and the degree of actual public recognition of the KENTECH mark. For example, while Complainant claims to have registered the domain name <kentech.ie>, Complainant has not submitted any screenshots showing use of <kentech.ie> domain name in connection with a website.2 In view of these deficiencies, the Panel cannot conclude that Complainant had the strong common law or unregistered rights it claims it developed by November 2003, when the disputed domain name was registered. At best, from what is before the Panel it appears that Complainant had some common law or unregistered rights in Ireland in November 2003, where Complainant is based.
Given the nature of Complainant’s rights in KENTECH as of November 2003, the remaining question is whether Respondent acted in bad faith in registering the disputed domain name. Respondent claims that it was not aware of Complainant when it registered the disputed domain name in 2003 and did so after it saw the disputed domain name on a drop list. Thereafter, Respondent used the disputed domain name with a click through advertising portal that included links based on generic topics unrelated to Complainant or its services. As Complainant has failed to establish the reputation or extent and scope of its use of its claimed common law or unregistered KENTECH mark as of November 2003, and given that there is evidence that there were, and had been, multiple other uses of “kentech” by parties unrelated to Complainant, including a company by the name of Kentech, Inc. that had once owned the disputed domain name, it is difficult for the Panel to conclude that Respondent registered the disputed domain to take advantage of any rights Complainant had in the KENTECH mark in 2003. To be sure, Complainant has submitted no evidence that would support the conclusion that Respondent, who is based in the United Kingdom, registered the disputed domain name in November 2003 with an aim of exploiting Complainant’s claimed trademark rights in KENTECH. Although Complainant today is a substantial company with rights in the KENTECH mark in connection with Complainant’s services, those current rights do not apply retroactively to November 2003. It was incumbent on Complainant to prove its rights in the KENTECH mark as well as the extent, scope and nature of those rights in November 2003 to make it more likely than not that Respondent registered the disputed domain name to take advantage of those rights. Here, Complainant has failed to do so. Accordingly, the Panel concludes that Complainant’s Complaint fails under the third element.
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As stated previously, the Panel has found that Complainant likely developed some common law or unregistered rights in the KENTECH mark in Ireland prior to November 2003. The Panel has also found that the disputed domain name is identical to Complainant’s claimed KENTECH mark and that Respondent’s current actions do not support a legitimate interest or bona fide use. Accordingly, the Panel finds that Complainant did not initiate this UDRP proceeding in bad faith or primarily to harass Respondent.
The request for a finding of reverse domain name hijacking is denied.
For the foregoing reasons, the Complaint is denied.
Date: August 30, 2019
1 While Complainant’s trademark registrations are in the name of Kentech Group Holdings Limited, the Panel notes that Kentech Group Holdings Limited is within the Kentech Group of Companies and a direct subsidiary of Complainant. Consequently, the Panel is satisfied that Complainant has rights in the trademark registration for the KENTECH mark through its subsidiary for purposes of this proceeding.
2 The Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has reviewed archival website pages for the <kentech.ie> domain name which are available through the Internet Archive at <archive.org>. WIPO Overview 3.0 at paragraph 4.8. The earliest record for <kentech.ie> is from June 2003 and shows a landing page that allows a web user to enter the websites of two different companies (Kentech and Dornan). When the Kentech link is clicked on, it takes the user to a website for Kentech Group Limited.
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