WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kerakoll S.P.A. v. James Thompson

Case No. D2019-1770

1. The Parties

The Complainant is KERAKOLL S.P.A., Italy, represented by Bugnion S.p.A., Italy.

The Respondent is James Thompson, South Africa.

2. The Domain Name and Registrar

The disputed domain name <kerakoll-uk.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2019, 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 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2019.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on August 23, 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.

4. Factual Background

The Complainant Kerakoll S.P.A. is an Italian joint stock company established in 1968 who produces mortars and adhesives for the construction industry under the trademark KERAKOLL for more than 40 years. Currently, the Complainant employs more than 1,350 people, has 12 international branches and exports in more than 100 countries worldwide. KERAKOLL branded goods were used to build important international building projects.

The Complainant is the owner of the trademark KERAKOLL across various jurisdictions. These registrations include:

- European Union trademark KERAKOLL with registration No. 012022026, registered on December 23, 2013, in International classes 1, 2, and 19;

- European Union trademark KERAKOLL with registration No. 012022091, registered on December 23, 2013, in International classes 1, 2, and 19.

Additionally, the Complainant promotes itself on the website “www.kerakoll.com”.

The disputed domain name <kerakoll-uk.com> was registered on February 4, 2019, well after the Complainant secured rights to the trademarks. The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant alleges its KERAKOLL trademark enjoys a strong reputation and renown through the world. The Complainant argues that by incorporating the Complainant’s trademark KERAKOLL in its entirety and by simply adding a hyphen followed by the geographically descriptive term “UK” to the end of the trademark, the disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant also contends that the generic Top-Level Domain (“gTLD”) “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

Additionally, the Complainant claims that the mere adjunction of the geographically descriptive term “UK” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in KERAKOLL and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has never authorized, licensed or any way permitted the Respondent to register and use the disputed domain name. Additionally, the Respondent is not commonly known by the disputed domain name.

Furthermore, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. The disputed domain name does not resolve to an active website.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant argues that the registration by an unaffiliated entity of a domain name that is identical or confusingly similar to a well-known trademark as KERAKOLL is itself evidence of bad faith registration (see AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440).

Such conclusion of bad faith is according to the Complainant enhanced by the inclusion of the two-letter code of the United Kingdom closely related to its business activity as the UK is an important market to the Complainant. The Complainant suggests opportunistic bad faith for its revenues potential or commercial value.

The Complainant also asserts that at the time of registration of the disputed domain name, the Respondent was aware of the KERAKOLL trademark. Therefore the Complainant is convinced that the Respondent has registered the disputed domain name seeking to deliberately profit from the confusion of Internet users with KERAKOLL trademark and to disrupt the Complainant’s business.

In addition, the Complainant alleges and provides evidence that the Respondent has engaged in a pattern of cybersquatting which indicates registration of the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in KERAKOLL.

Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

Thirdly, the disputed domain name fully incorporates the Complainant’s KERAKOLL trademark in which the Complainant has exclusive rights.

Fourthly, this Panel finds that the addition of a hyphen followed by the geographic descriptive term “UK” does not constitute an element so as to avoid confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s KERAKOLL trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“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); or

(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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

The Complainant submits that is well-settled that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel endorses that view. Given the reputation of the KERAKOLL trademark, registration in bad faith can be inferred.

The Respondent’s bad faith is emphasized by the fact that the disputed domain name incorporates the term “UK”, a term that relates to the business activities of the Complainant.

With regard to Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the KERAKOLL trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the KERAKOLL trademark.

Moreover, the Respondent’s engagement in pattern of bad faith registration and use of domain names indicates also for the Panel that the disputed domain name has been registered in bad faith. There is ample authority in the previously decided cases that a pattern of abusive behavior following registration in bad faith is by itself indicative of bad faith (see Citigroup, Inc v. Party Night Inc. aka Peter Carrington, WIPO Case No. D2003-0480 and Match.com, L.P. v. Amjad Kausar, WIPO Case No. D2003-0510).

Finally, the Complainant also submits that the disputed domain name may have been registered primarily for the purpose of causing disruption. At the time of the Decision the disputed domain name does not resolve to an active website. However, non-use of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. The Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. Relying on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the Panel concludes that the Complainant has proven bad faith under the passive use doctrine.

In light of the foregoing, this Panel finds that the disputed domain name was registered in bad faith and is being used by the Respondent in bad faith under 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 <kerakoll-uk.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: September 5, 2019