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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kis v. Anything.com Ltd.
Case No. D2000-0770
1. The Parties
The Complainant in the administrative proceeding is Kis, having its head office at 2110 Avenue du Général de Gaulle, 38130 Echirolles, France, represented by Benjamin Dubuis and Isabelle Meunier-Cœur, Cabinet Laurent & Charras, with offices located at 20 Rue Louis Chirpaz, B.P. 32, 69131 Ecully Cedex, France, hereinafter the "Complainant".
Respondent is "Anything.com" Ltd., P.O. Box 309, Ugland House, George Town, Grand Cayman Islands, represented by Ari Goldberger, Esq., 2318 Berwyn Court, Voorhees, NJ 08043, U.S.A., hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "kis.com", registered on May 8, 2000, hereinafter referred to as the "Domain Name". The registrar is Network Solutions.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on July 19, 2000, (electronic version) and July 11, 2000, (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) on July 21, 2000. Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 25, 2000.
The Center transmitted via email to Network Solutions a request for registrar verification in connection with this case and Network Solutions replied on July 21, 2000, confirming in its verification response that the registrant is "Anything.com" and that the administrative, technical, zone and billing contact is Administration, Domain.
The Center transmitted on July 25, 2000, to the Respondent and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail, in accordance with the following contact details:
Anything.com
P.O. Box 309, Ugland House
George Town, Grand Cayman
KY
Domain Administration
1101 North Kings Highway, Suite 403
Cherry Hill, NJ 08034
The Center advised that the Response was due by August 13, 2000, and a response was submitted on this date. Accordingly, the Center issued an Acknowledgement of Receipt of Response on August 17, 2000.
In view of the Respondent’s request for a three-member panel, the Center invited Mr. Geert Glas to serve as the Presiding Panelist and Mr. Olivier Iteanu and Mr. David Sorkin to serve as Panelists.
Having received the Statement of Acceptance and Declaration of Impartiality and Independence of all the three members of the Panel, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Presiding Panelist and Mr. Olivier Iteanu and Mr. David Sorkin were formally appointed as Panelists. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant’s main business is based on the manufacturing of mini labs for pictures and film processing.
Complainant is the owner of numerous trademark registrations in various countries for the term "KIS". Copies of those trademark registrations are attached to the complaint. These are, among others:
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s trademarks.
The Domain Name resolves to a web page entitled "Korean Information Site". This portal like page contains various links to other websites, which contain information about Korea, such as Korean history, Korean news, Korean products, etc.
5. Parties’ Contentions
a. Complainant
Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s "KIS" trademark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that by attempting the registration of the Domain Name, Respondent is creating a likelihood of confusion with the Complainant’s trademarks since Internet users typing the Domain Name in the address bar of their browser will find no website relating to Complainant and may become discouraged and may abandon searching for the Complainant’s websites to its detriment.
Consequently, Complainant requires the transfer of the Domain Name registration.
b. Respondent
According to Respondent, he has developed and launched its Korean Information Site at the Domain Name, the letters of the URL corresponding to the name of the website. Respondent’s use of the Domain Name is not in connection with the word KIS, but, rather, in connection with the 3-letter combination K, I and S, with each letter pronounced separately as K-I-S, similar to the pronunciation of A-O-L or I-B-M. Moreover, short letter-combination marks are entitled to limited protection only.
Respondent alleges that it has a legitimate interest in the Domain Name, which is used as the address for its Korean Information Site, which contains information on Korean history, tourism, events and products.
Finally, Respondent contends that it did not register and does not use the Domain Name in bad faith.
Consequently, Respondent requires that the complaint be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no right or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
a. Identity
The Domain Name is "kis.com".
"KIS" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark "KIS" of Complainant, since it does not make a difference whether the word "kis" is used as such or as the combination of the letters "k", "i" and "s".
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.
Respondent indicates that he chose the Domain Name because KIS is the abbreviation of Korean Information Site, which perfectly describes the nature and objective of his site.
The Domain Name does indeed resolve to a page entitled "Korean Information Site" featuring hyperlinks to various websites, which contain information about Korea and Asia. The Panel finds this activity to qualify as a bona fide activity.
One panelist would hold that Respondent may have a legitimate interest in the Domain Name even if the Korean Information Site is not regarded as a bona fide commercial offering or a legitimate noncommercial use of the name.
The Domain Name at issue here is a three-letter second-level domain within the popular ".com" top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions' Whois database), including "an.com", "hw.com", "vz.com", "xv.com", "yz.com", "zw.com, "aex.com", "fii.com", "ldn.com", "lna.com", "mhi.com", "nnc.com", "otl.com", "tbj.com", "tca.com", "ukt.com", "vaz.com", "vdj.com", "wla.com", and probably many more. Respondent appears to have selected the Domain Name "kis.com" because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant's trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant's trademark when it selected the domain name.
Under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. Allocation Network GmbH v. Gregory, ICANN Case No. D2000-0016 (WIPO March 24, 2000); see also VZ VermögensZentrum AG v. Anything.com, ICANN Case No. D2000-0527 (WIPO August 22, 2000). Respondent's interest in the Domain Name "kis.com" appears to be unrelated to Complainant's trademark, and Respondent thus may well have a legitimate interest in the Domain Name even apart from its Korean Information Site.
Under these circumstances, the Administrative Panel finds that Respondent has a legitimate interest in the Domain Name.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
1. "KIS" is a trademark from Complainant.
2. It is unclear whether Respondent knew of Complainant’s trademark.
3. "KIS" is also the abbreviation for Korean Information Site.
4. The Domain Name resolves to a web page containing links of interest for any person interested in Korea.
In view of the elements and evidence submitted by the parties, the Administrative Panel finds that there are no indications that Respondent knew of Complainant or its trademark when registering the Domain Name.
In addition, it appears that Respondent uses the Domain Name in connection with a website entitled Korean Information Site (in abbreviation KIS) which provides information about Korea.
In the Panel’s view, this does not constitute a bad faith use of the Domain Name.
In conclusion and in view of the above, it is the Panel’s opinion that Respondent did not register, nor has been using the Domain Name in bad faith.
7. Decision
In light of the foregoing, the Administrative Panel decides that the Domain Name "kis.com" registered by Respondent is identical to the trademark of Complainant, that Respondent seems to have a right or legitimate interest in respect of the Domain Name and that Respondent did not register and has not been using the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative Panel denies the request that the registration of the Domain Name "kis.com" be transferred to Complainant.
Geert Glas
Presiding Panelist
Olivier Iteanu
Panelist
David Sorkin
Panelist
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URL: http://www.worldlii.org/int/other/GENDND/2000/1561.html