DECISION

 

Kohlberg Kravis Roberts & Co. L.P. v. Durable Technologies / durable

Claim Number: FA2504002148652

 

PARTIES

Complainant is Kohlberg Kravis Roberts & Co. L.P. ("Complainant"), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Durable Technologies / durable ("Respondent"), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kk-kkr.com> ("Domain Name"), registered with Tucows Domains Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 3, 2025; Forum received payment on April 3, 2025.

 

On April 3, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <kk-kkr.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 April 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2025 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@kk-kkr.com. Also on April 7, 2025, 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 April 29, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Since 1976 Complainant has offered financial and investment services in various jurisdictions under marks consisting of or containing "KKR". Complainant has rights in the KKR mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,653,664 registered July 14, 2009).  Respondent's <kk-kkr.com> domain name is virtually identical and confusingly similar to Complainant's mark because it wholly incorporates the KKR mark in its entirety and merely adds the generic abbreviation "kk-" and the ".com" generic top-level domain ("gTLD").

 

Respondent has no legitimate interests in the <kk-kkr.com> domain name. Respondent is not commonly known by the Domain Name, and Complainant has not authorized or licensed Respondent any rights in the KKR mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Name is used to pass off as Complainant.

 

Respondent registered and uses the <kk-kkr.com> domain name in bad faith. Respondent registered the Domain Name in order to disrupt Complainant's business and divert customers for commercial gain. Finally, Respondent registered the Domain Name, with actual knowledge of Complainant's rights in the KKR mark given the use of the Domain Name to pass off as Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the KKR mark.  The Domain Name is confusingly similar to Complainant's KKR mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the KKR mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,653,664 registered July 14, 2009). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <kk-kkr.com> domain name is confusingly similar to Complainant's KKR mark because it wholly incorporates Complainant's KKR mark while adding the abbreviation "kk-" and the ".com" gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the KKR mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a TLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the KKR mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Durable Technologies / durable" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website ("Respondent's Website") where Respondent purported to offer financial services in direct competition with Complainant under the KKR mark including through making use of the term "KKR Capstone", being Complainant's operational arm, and containing text that is identical (and likely copied directly) from Complainant's official website at www.kkr.com.  The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii).  See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute 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 Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, March 1, 2025, Respondent had actual knowledge of Complainant's KKR mark, which had been in use for almost 50 years at the time and had developed a significant reputation in the field of financial services.  The Respondent's Website copies text from the Complainant's official website, refers to the Complainant's Capstone arm and purports to offer financial and investment services that are in direct competition to the Complainant's services.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent has used the Domain Name to redirect Internet users to Respondent's own website where Respondent purports to offer financial services in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent's competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant's business by diverting Internet users from the complainant's website to the respondent's website where it offered competing printer products).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kk-kkr.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: April 30, 2025