KERING v. Hka c/o Dynadot Privacy
Claim Number: FA1405001561614
Complainant is KERING (“Complainant”), represented by Cabinet SANTARELLI, Paris, France. Respondent is Hka c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kering.buzz>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2014; the National Arbitration Forum received payment on May 28, 2014.
On May 28, 2014, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <kering.buzz> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kering.buzz. Also on June 2, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kering.buzz> domain name, the domain name at issue, is confusingly similar to Complainant’s KERING mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the KERING mark pursuant to registrations with France’s National Institute of Industrial Property (“NIIP”) (Reg. No. 123,920,561 registered September 7, 2012; filed May 16, 2012), and the European Union’s Community Trade Mark system (“CTM”) (Reg. No. 10,978,741, registered November 27, 2012). Complainant is a world leader in apparel and accessories, with an ensemble of designers in the luxury sector as well as prominent brands in the sports and lifestyle sector. Complainant, formally known as PPR, began using the KERING mark in 2013 in connection with the fashion apparel.
The <kering.buzz> domain name is confusingly similar to Complainant’s KERING mark. Complainant has not authorized Respondent’s use of the disputed domain name. The <kering.buzz> domain name resolves to a parking website containing sponsored links. Respondent has intentionally tried to attract Internet users to the disputed landing page by creating a likelihood of confusion with Complainant and the disputed domain name. Respondent generates revenue from the resulting confusion, which demonstrates bad faith. Respondent was aware of Complainant’s mark at the time the domain name was registered on April 16, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a world leader in apparel and accessories, with an ensemble of designers in the luxury sector as well as prominent brands in the sports and lifestyle sector. Complainant, formally known as PPR, began using the KERING mark in 2013 in connection with the fashion apparel and has rights in the KERING mark pursuant to registrations with France’s NIIP (Reg. No. 123,920,561 registered September 7, 2012; filed May 16, 2012), and the European Union’s CTM (Reg. No. 10,978,741, registered November 27, 2012). Previous panels have concluded that Policy ¶ 4(a)(i) requires that the complainant hold registration with some trademark agency, not necessarily in the jurisdiction where the respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, Complainant’s NIIP and CTM registrations establish rights in the KERING mark, and satisfy the initial requirements of Policy ¶ 4(a)(i).
The <kering.buzz> domain name is confusingly similar to Complainant’s KERING mark. Specifically, the domain name uses the mark in full with the mere addition of a generic top-level domain (“gTLD”) “.buzz,” which Complainant argues does not distinguish the name from the mark. The inclusion of a gTLD is irrelevant for the purposes of the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the term “buzz” is generic in this case as it has no clear association with the KERING mark or products. Accordingly, the <kering.buzz> domain name confusingly similar to the KERING mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has not authorized Respondent’s use of the subject mark in the disputed domain name. The only evidence available pertaining to Respondent’s identity is recorded in the WHOIS information, which identifies “Hka c/o Dynadot Privacy” as the registrant of record. In light of the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The <kering.buzz> domain name resolves to a parking website containing sponsored links. The Panel observes that the disputed landing page promotes links seemingly unrelated to Complainant, such as “Webcam Chat,” “Discount Hotel,” and “Air Jordan Shoes.” Complainant asserts and the Panel finds that Respondent garners revenue from the links. In Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) the panel found that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. In line with such decisions, the Panel finds that Respondent’s website promoting unrelated hyperlinks, likely for commercial gain, does not amount to a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has intentionally tried to attract Internet users to the disputed landing page by creating a likelihood of confusion with Complainant and the disputed domain name. Further, Respondent generates revenue from the resulting confusion, which satisfies the parameters of Policy ¶ 4(b)(iv) and demonstrates bad faith. Previous panels have found evidence of bad faith under similar circumstances. In Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) the panel held that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv). Accordingly, use of the disputed domain name in connection with a click-through website featuring unrelated links demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Further, it appears that Respondent was aware of Complainant’s mark at the time the domain name was registered, and such knowledge is further evidence of Respondent’s bad faith. In so arguing, Complainant contends that its mark has attained fame and substantial notoriety in the fashion industry. While previous panels have generally held that constructive notice does not support a finding of bad faith, the Panel determines, based on the fame of the KERING mark and the timing of the domain name registration, that Respondent registered the disputed domain name with Complainant in mind, and therefore finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kering.buzz> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 27, 2014
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