KGP Telecommunications, Inc. v. KGP INTERNATIONAL LIMITED
Claim Number: FA1607001685573
Complainant is KGP Telecommunications, Inc. (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, Raleigh, North Carolina, United States. Respondent is KGP INTERNATIONAL LIMITED (“Respondent”), represented by Roman A. Popov of Morton & Associates LLLP, New York, New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kgp.com> (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
Each of 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.
Douglas M Isenberg as Chair. Reinhard Schanda and Honorable Karl V. Fink, (Ret.) as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 27, 2016; the Forum received payment on July 27, 2016.
On July 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kgp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2016 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 email@example.com. Also on July 27, 2016, 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.
A timely Response was received and determined to be complete on August 16, 2016.
On August 19, 2016, Complainant submitted a document titled “Reply to Statements and Allegations Made in the Response,” filed in a timely manner according to the Forum’s Supplemental Rule 7.
On August 24, 2016, Respondent submitted a document titled “Respondent’s Additional Submission in Response to Complainant’s Reply,” filed in a timely manner according to the Forum’s Supplemental Rule 7.
On August 25, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Douglas M. Isenberg as Chair and Reinhard Schanda and Honorable Karl V. Fink, (Ret.) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant states that it “is a leading provider of complete, customized and scalable supply chain and network transformation solutions for the communications industry”; that it “was founded in 1973, and has grown over the last four decades to employ over 2,000 professionals in more than 15 locations nationwide”; and that it “offers over 25,000 voice, data, video, and wireless products from 1,500 manufacturers, and… is extremely well[-]known by telecommunications network operators, integrators, contractors, utilities, cloud services providers, neutral host providers, and related equipment manufacturers.”
Complainant states, and provides evidence to support, that it is the owner of U.S. Reg. No. 3,739,605 for the trademark KGP (first used January 1, 1985; registered January 19, 2010) for use in connection with “[d]istributorship services in the field of telecommunications equipment” (the “KGP Trademark”).
Complainant provides a history of the Disputed Domain Name’s Whois record and states that it “was registered by an individual named Mike Gleissner on January 20, 2010, a day after Complainant’s trademark registration issued” and that the Whois record for the Disputed Domain Name was modified on July 15, 2016 “so that only the registrant name was changed to KGP INTERNATIONAL LIMITED, but all of the other registrant, administrative, and technical contact information remained identical.”
Complainant states that “[i]n June 2016, Complainant contacted Respondent via GoDaddy, the registrar of the disputed domain name, to determine if Respondent is willing to sell the domain name. Respondent informed GoDaddy that it would not ‘engage unless they have a serious offer in the 6 figures’.”
Complainant states, and provides evidence to support, that the Disputed Domain Name resolves (since at least September 13, 2013) to a landing page that states, “A new project in coming to you. Revolutionizing Social Media.” Complainant further states that Respondent “owns well over 500 additional domain names, with the vast majority of them being three-letter domain names… which all have the same landing page as the disputed domain name.”
Complainant contends that the Disputed Domain Name is identical to its KGP Trademark because the domain name “contains the most prominent portion of the trademark, ‘KGP,’ while adding only the generic top-level domain (‘gTLD’) ‘.com.’.”
Complainant contends that Respondent lacks rights and legitimate interests in respect of the Disputed Domain Name because, inter alia, “[i]t appears that Respondent is creating shell entities for each of its domain names in order to evade typo-squatting behavior, rather than to make preparations for an actual underlying business endeavor”; “Complainant has not authorized, licensed or consented to Respondent's registration and use of any domain name incorporating the KGP trademark, or any confusingly similar variation of Complainant's marks”; “to Complainant's knowledge, there are no current trademark applications or registrations in the name of Respondent for any mark incorporating the terms ‘KGP’ anywhere in the world”; “Mr. Gleissner merely changed the WHOIS information on the disputed domain name to list the current Respondent, more than six years after he registered the disputed domain name”; and “Respondent is a shell entity, and it is not commonly known by the domain name.”
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[g]iven Respondent’s history of selling three-letter domain names, and the fact it would only sell the disputed domain name for a six-figure sum, Respondent likely acquired the disputed domain name for the primary purpose of re-selling it”; “Respondent has failed to make a commercial use of the disputed domain name”; “Respondent is not making an active use of the disputed domain name”; “Respondent has engaged in a pattern of bad faith domain name registrations as evidenced by prior UDRP disputes naming, and finding against, the Respondent,” as evidenced by three decisions against respondents for which “Mr. Gleissner is the managing partner/director”; “[p]otential customers seeking Complainant on the Internet are misleadingly directed to Respondent’s website”; “as Respondent appears to be in the business of selling domain names, it likely conducts due diligence of whether or not a domain name contains a registered trademark”; and “[t]he likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is particularly true for three- or four-letter strings.”
Respondent “concedes” that the Disputed Domain Name is identical to the KGP Trademark.
Respondent contends that it has rights and/or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent incorporated KGP International Limited (‘KGP International’) with the Registrar of Companies for England and Wales prior to any notice and/or knowledge of Complainant’s claims in regards to the Domain Name”; “KGP International was incorporated for the purpose of, inter alia, offering services related to entertainment, television program production, film production and distribution via www.kgp.com”; “KGP International is the owner of a trademark application for the mark KGP.COM, filed with the UK Intellectual Property Office, accorded No. UK00003179145, in International Class 41 for various services related to entertainment”; “[t]he Domain Name does not display any advertisements or links to Complainant’s competitors, and Respondent does not intend to divert consumers nor tarnish Complainant’s Mark”; “Respondent has never expressed, nor does it possess, any willingness to sell the Domain Name to Complainant, or any other third party”; and “Complainant is barred from relief by the doctrine of laches” because “[t]he Domain Name was registered on July 29, 1995, and acquired by Respondent on January 19, 2010.”
Respondent contends that the Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, “Respondent did not have notice of the KGP Mark at the time it acquired the Domain Name”; “Respondent was not even aware that KGP Telecommunications, Inc. existed as an entity at any point prior to receiving communications from KGP regarding the Domain Name”; “Respondent engaged in discussions to purchase the Domain Name, in good faith, almost a month prior to Complainant obtaining any rights in the Mark,” as shown by copies of email correspondence and the Escrow.com Buyer Closing Statement; “[i]t is indubitable that KGP is not a famous or well-known mark”; “Respondent has never used the Domain Name to target or disrupt the business of Complainant, or any other trademark owner, Respondent is not a competitor of Complainant, nor has it ever held the Domain Name out for sale”; “Complainant has not provided proof that Respondent has engaged in any sort of a pattern of conduct to prevent Complainant from reflecting its Mark in a corresponding domain name”; and “Respondent does not have an intent to sell the Domain Name.”
C. Additional Submissions
In its additional submission, Complainant states, in relevant part, that “Respondent provides no evidence of demonstrable preparation to use the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services”; Respondent’s trademark application “is self-serving and was made specifically for the purposes of these proceedings”; “Respondent uses an identical landing page on dozens of its three-letter domain names, and the landing pages are simply an attempt by Respondent to mask its attempt to sell these domain names to trademark owners for amounts far in excess of its out-of-pocket costs”; “the clear majority of panelists have held that laches does not apply to UDRP proceedings”; Respondent is “a sophisticated company in the business of buying and selling domain names [and] should have known, and been able to ascertain, that the Complainant owned rights in the mark KGP”; “a search for the term ‘KGP’ on Google results in Complainant prominently being listed as the first result”; “Complainant has generated significant goodwill in the KGP mark as it has become a distinctive identifier of Complainant’s goods and services,” as shown by use of the KGP Trademark since 1985, the expenditure of “large sums of money advertising its goods and services, and promoting its products and trademark”, citation “in various media and industry-related publications” and annual revenue of $1.2 billion; and “Respondent has sold at least well over 14,500 domain names according to publicly available data.”
In its additional submission, Respondent states, in relevant part, that “there is presently an unequivocal discord amongst Panelists as to whether or not laches should apply in UDRP proceedings”; “Respondent respectfully requests that the Panel not consider Complainant’s position that ‘Respondent has sold at least well over 14,500 domain names’ due to the dubious nature of the allegation, and the fact that Complainant cannot produce a scintilla of direct proof, beyond the six domains for which articles are attached, that even a single one of these domain names was sold”; “Complainant has not presented any concrete evidence whatsoever that Respondent has intentionally attempted to attract users to its website or other online location by creating a likelihood of confusion with Complainant’s mark”; and “Respondent made no efforts whatsoever to sell the Domain Name, for a period of over six years, prior to being contacted by Complainant.”
The Panel finds that the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel makes no finding as to whether Respondent has rights or legitimate interests in respect of the Disputed Domain Name. And the Panel finds that Complainant has failed to establish that Respondent registered and is using the Disputed Domain Name in bad faith.
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.
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); see also Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).
Preliminary Issue: Laches
This Panel finds that the Complaint is not barred by laches. See WIPO Overview 2.0, paragraph 4.10: “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.”
Preliminary Issue: Supplemental Filings
The Forum’s Supplemental Rules provide that parties may submit “additional written statements and documents” on a specified timeline and, with respect to such submissions from a complainant, payment of “an additional submission fee.” However, the Forum’s Supplemental Rules do not require a Panel to consider such submissions – and, in fact, some panels have disregarded them. For example, in YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, NAF Claim No.1675141, the panel wrote that it would “disregard the Complainant’s Additional Submission” because it “was nothing more than a standard ‘reply’ to the Response” that “did not address any new legal principles or facts that could not have been anticipated in the Complaint” and “did not include any new facts or arguments that did not exist at the time of the Complaint or could not have been anticipated.”
Here, the panel similarly finds that the additional submissions from Complainant and Respondent are largely repetitive of their previous arguments and, in any event, do not “address any new legal principles or facts.” Accordingly, while the Panel has considered these submissions, the Panel does not find them helpful and therefore gives them little attention.
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the KGP Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the KGP Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “kgp”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Given that the second-level portion of the Disputed Domain Name is identical to the KGP Trademark, it is apparent without further discussion that the Disputed Domain Name is identical or confusingly similar to the KGP Trademark for purposes of the UDRP.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Given that, for the reasons set forth above and below, it is unnecessary for the Panel to make a finding with respect to the second element of the UDRP, paragraph 4(a)(ii), the Panel refrains from doing so.
Although it appears to the Panel that the KGP Trademark has a long history of use and may be well-known among certain consumers, Complainant cited only a single relevant trademark registration, in the United States, and Respondent has stated that it was unaware of either the KGP Trademark or Complainant when it acquired the Disputed Domain Name. Previous panels in similar situations also involving three-character domain names have found that a respondent did not register or use the domain name in bad faith. See, e.g., National Golf Foundation, Inc. v. Mediablue, NAF Claim No. 1453899 (denying transfer of <ngf.com> where “the Panel found no evidence that Respondent was aware of Complainant’s rights to the NGF mark”); see also Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett, NAF Claim No. 1415905 (denying transfer of <ssx.com> “where there is no attempt to ‘target’ Complainant’s interest in Complainant’s mark to capitalize on the good will associated with a three-letter mark”); see also Perpetual Motion Interactive Systems Inc. v. NameBubble LLC, NAF Claim No. 1212590 (denying transfer of <dnn.com> where “the disputed domain name is comprised of a generic acronym, consisting only of three letters, which in theory may stand for several different things, with the addition of a gTLD”); see also Equifax Inc. v. Future Media Architects Inc., NAF Claim No. 1195133 (denying transfer of <efx.com> where respondent said “that he was unaware of Complainant’s EFX mark at the time of registration and Complainant has not adduced any evidence that this is not true”).
As in TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0161, denying transfer of the domain name <tmg.com>, “Complainant seems to infer bad faith by assuming that Respondent had knowledge of Complainant and its trademarks prior to the Domain Name registration, and that the Respondent hoped to benefit in one way or another from the fame of Complainant and its trademarks.” In that case, cited with approval in General Nutrition Investment Company v. John Gates / The Web Group, WIPO Case No. D2014-0982 (denying transfer of <gnc.asia>), the panel wrote:
Complainant is of course not the only entity in the world entitled to use those three letters in connection with an offering of goods or services, on the contrary, it is more than likely that many entities around the world could be entitled to use a three-letter abbreviation…. It is entirely feasible for the Respondent to make a bona fide offering under the disputed domain name.... The Complainant has not given any evidence of to what extent the [three-character] mark is known, and has not presented any evidence to support his assertion that the Respondent knew of the mark when registering the Domain Name.
The Panel here is not in a position to second-guess Respondent’s assertions as to its knowledge and its intentions, because “the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.” Google Inc. v. Blue Arctic LLC, NAF Claim No. 1447355. Accordingly, “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.” Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105.
Further, it is obvious that Respondent is not using the Disputed Domain Name in a manner that creates a likelihood of confusion with Complainant or the KGP Trademark, because Respondent is not using the Disputed Domain Name in connection with an active website. While bad faith can (and often does) exist even in the event of such “passive holding,” the circumstances for such a finding are not present here. Notably, for example, it is unclear whether the KGP Trademark enjoys “a strong reputation” outside of the United States, the only country for which Complainant cited a relevant trademark registration; Respondent has provided evidence of “contemplated good faith use by it of the domain name”; the Respondent has not “taken active steps to conceal its true identity”; the Respondent has not “actively provided, and failed to correct, false contact details”; and it is possible to conceive of “plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, with respect to Complainant’s argument that bad faith exists as a result of Respondent’s offer to sell the Disputed Domain Name, the Panel agrees with the decision cited by Respondent, Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916, in which the panel there wrote: “Respondent has not attempted to sell the Domain Name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant seeking to disrupt its business, and is not using the Domain Name to divert Internet users for commercial gain.” While Respondent may have made known its willingness to sell the Disputed Domain Name for a high price, the purchase and sale of domain names for six or even seven figures is often a legitimate practice that does not in and of itself violate the UDRP.
As a result, the Panel finds that Complainant has failed to prove the third element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kgp.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Chair
Reinhard Schanda, Panelist
Honorable Karl V. Fink, (Ret.), Panelist
Dated: September 7, 2016
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