Kohlberg Kravis Roberts & Co. L.P. v. Su Jin Long Su Jin Long / Su Jin Long
Claim Number: FA2209002011903
Complainant is Kohlberg Kravis Roberts & Co. L.P. (“Complainant”), represented by Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Su Jin Long Su Jin Long / Su Jin Long (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kkrtrx.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on September 13, 2022; Forum received payment on September 13, 2022.
On September 14, 2022, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <kkrtrx.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 September 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2022 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@kkrtrx.com. Also on September 19, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant made the following contentions.
Complainant,
Kohlberg Kravis Roberts & Co. L.P. (KKR) is a global investment firm.
Complainant asserts rights in the KKR mark based upon registration with the
United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no.
3,653,664, registered July 14, 2009). See Compl. Ex. 1. Respondent’s <kkrtrx.com> is confusingly similar to Complainant’s KKR
trademark because it includes the mark in
its entirety and adds the generic term “TRX” and generic top-level domain name
(“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <kkrtrx.com> domain name. Respondent is not licensed or
authorized to use Complainant’s KKR
mark and is not commonly known by the
disputed domain name. Respondent also does not use the disputed domain name for
any bona fide offering of goods or services or legitimate noncommercial
or fair use. Rather, Respondent attempts to pass off as Complainant.
Respondent engages in inactive holding.
Respondent
registered and uses the disputed domain name as an attraction for commercial
gain. Respondent
attempts passing off as Complainant. Respondent had actual knowledge the
Complainant’s KKR mark prior to registration of the disputed domain name. Respondent engages in inactive holding. Respondent
failed to respond to its cease-and-desist demand letter. Respondent used false
or misleading WHOIS contact information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global investment firm.
2. Complainant has established its trademark rights in the KKR mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 3,653,664, registered July 14, 2009).
3. Respondent registered the <kkrtrx.com> domain name on June 17, 2022.
4. Respondent has engaged in inactive holding of the disputed domain name and has attempted to use it to pass itself off as Complainant.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the KKR mark based upon registration of the mark with the USPTO (e.g., Reg. no. 3,653,664, registered July 14, 2009). See Compl. Ex. 1. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Since Complainant has provided evidence of registration of the KKR mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KKR mark. Complainant argues that the <kkrtrx.com> domain name is confusingly similar to Complainant’s KKR trademark because it includes the mark in its entirety and adds the generic term “TRX” and gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). In the present case, the addition of the letters “TRX’ to the trademark establishes that the domain name is confusingly similar to the trademark as the evidence is that “TRX” is the generic name for cryptocurrency tokens launched on the TRON blockchain, which is a generic or descriptive term and does nothing to distinguish the infringing domain name from the trademark. Therefore, the panel finds the disputed domain name is confusingly similar to Complainant’s KKR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KKR mark and to use it in its domain name adding only the letters “TRX” to the mark;
(b) Respondent registered the domain name on June 17, 2022;
(c) Respondent has engaged in inactive holding of the disputed domain name and has attempted to use it to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <kkrtrx.com> domain name because Respondent is not licensed or authorized to use Complainant’s KKR mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Su Jin Long Su Jin Long / Su Jin.” See Compl. Ex. 6. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant. Respondent’s attempt to pass itself of as the complainant was not 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). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of Respondent’s resolving webpage showing use of Complainant’s mark and offerings of similar services. See Compl. Ex. 9 & 10. Thus, the Panel finds Respondent does not provide 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);
(g) Complainant contends Respondent engages in inactive holding of the domain name. Respondent’s non-use of the disputed domain name demonstrates that the respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant contends Respondent has disabled its resolving webpage. See Ex. A, Decl., ¶ 36. As the Panel agrees, it finds Respondent does not provide 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).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the disputed domain name to attract commercial gain. Intent to deceive is strong evidence of a likelihood of confusion under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Here, the Panel recalls Complainant provides screenshots of Respondent’s resolving webpage as part of its detailed evidence showing use of Complainant’s mark and offerings of similar services. See Compl. Ex. 9 & 10. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent attempts to pass itself off as Complainant. Respondent registered and used the disputed domain name in bad faith because it has used the domain name to pass itself off as the complainant and to offer for sale competitive, counterfeit goods under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel again recalls Complainant provides as part of its detailed evidence screenshots of Respondent’s resolving webpage showing use of Complainant’s mark and offerings of similar services. See Compl. Ex. 9 & 10. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits Respondent had actual knowledge the Complainant’s KKR mark prior to registration of the disputed domain name because of Respondent’s use of Complainant’s well-known mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use Respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel again recalls Complainant provides screenshots of Respondent’s resolving webpage as part of its detailed evidence showing use of Complainant’s mark and offerings of similar services to those of Complainant. See Compl. Ex. 9 & 10. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends Respondent engages in inactive holding of the domain name. Failure to use a domain name actively is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). The Panel recalls Complainant contends Respondent disabled its resolving webpage. See Compl. Ex. A, Decl., ¶ 36. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant additionally submits Respondent used false or misleading WHOIS contact information. Respondent’s use of falsified information when it registered the disputed domain name is evidence that the domain name was registered in bad faith per Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kkrtrx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: October 21, 2022
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