Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Kaba Holding AG, Hofwisenstr. 24, 8153 Ruemlang, Switzerland, and its contact person is Jean-François Wulpillier.

The Respondent is rimchongil, 61-405 karaksiyoung Karak-dong, 138160 Songpa-gu, Seoul, the Republic of Korea.

The Domain Name at issue is <kaba.biz>. The Registrar is YesNIC Co., Ltd, 143-39 Shinil Bldg 2F, Samsung-dong, 135-090 Kangnam-gu, Seoul, the Republic of Korea.

The STOP Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on December 12, 2001, and a hard copy was received by the Center on December 13, 2001.

On December 24, the Center requested an amendment to the Complaint, which was filed on January 7, 2002, per e-mail (the hard copy was received on January 10, 2002). The Center verified that the Complaint, as amended, satisfies the Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the STOP) and the Rules for Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the WIPO Supplemental STOP Rules), and that payment was properly made. The Panel is satisfied this is the case.

On January 16, 2002, the Center notified the STOP Complaint and the administrative proceeding commenced. Since no Response was received by the Center within the time limit set, on February 7, 2002, the Center sent a Notice of Default to the Respondent.

On February 25, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

No further submissions were received by the Center or the Panel.

The Complainant is an internationally active food company, and it sells, through its subsidiaries, amongst other products a cocoa-based drink under the trademark KABA. Kaba AG, Mühlebühlstr. 23, CH 8620 Wetzikon, a 100 % subsidiary of the Complainant, is the registered owner of the trademark KABA in over 60 countries all over the world, including Switzerland (registration numbers 382719 and 402923) and the Republic of Korea.

According to the submission of the Complainant, which has not been contested by the Respondent, and which the Panelist has no reason to doubt, the Complainant has major operations in South East Asia, including Japan and the Republic of Korea.

There is considerable and valuable goodwill attached to the KABA brand, which is the original product of the Complainant that has existed for over 140 years, and continues to be sold.

On November 19, 2001, the Respondent registered the domain name <kaba.biz>.

The Complainant submits that (1) the domain name <kaba.biz> is identical to a trademark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered or is being used in bad faith.

The Respondent failed to submit a Response.

Paragraph 4(a) of the STOP lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

1) The domain name is identical to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain name; and

3) the domain name has been registered or is being used in bad faith.

The domain name <kaba.biz> is identical to the trademark KABA in which the Complainant has rights.

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Simple storing of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain name.

Furthermore, none of the circumstances listed under 4(c) of the STOP, possibly demonstrating rights or legitimate interests, are given. The Respondent has not submitted to be the owner or beneficiary of a trademark that is identical to the domain name. The Respondent apparently has never used the domain name in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use. The Respondent is not known at all under the name <kaba.biz>.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name <kaba.biz>.

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered or is being used in bad faith.

In the present case the Respondent apparently has registered <kaba.biz> without having either used it or having tried to offer it for sale. Since the TELSTRA decision, WIPO Case No. D2000-0003, it has been upheld by many Panelists under the Uniform Domain Name Dispute Resolution Policy (the UDRP) that even without any activity of the Respondent in relation to the domain name, the circumstances of a case may lead to the conclusion that a Respondent has registered and is using a domain name in bad faith. Under the STOP, it is sufficient that the Respondent either registered or is using the domain name in bad faith. In view of the short time the .biz gTLD has been available, the question will mainly be whether, based on the circumstances of the case, a Panelist arrives at the conclusion that the Respondent registered the domain name in bad faith.

In this context the Complainant submits the following arguments:

In view of the reputation of the KABA trademark the Respondent cannot have ignored the Complainant’s rights in that mark. The local management of the Complainant in the Republic of Korea has never heard nor is it aware of the Respondent. The Complainant therefore believes that the Respondent is an individual and does not carry out a business. Furthermore, it is hardly possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, the more as it apparently does not intend to carry out a business under that domain name, as requested for the .biz domain (where an intention of fair non-commercial use does not counter bad faith registration).

In addition, the registration of <kaba.biz> by the Respondent makes it impossible for the Complainant to register in the .biz domain its trademark KABA, which also stands for the Complainant as business identifier, and thus could disrupt the Complainant’s business. Most visitors to the .biz searching for the Complainant, would first try to type a domain name corresponding to that registered by the Respondent. Should the Respondent activate a website under that domain name, visitors would be misled into believing that they are connected to the producers of the KABA food product. This, again, shows that the Respondent cannot reasonably use the domain name for business purposes without infringing the Complainant’s rights in the KABA mark.

Furthermore, the fact that the Respondent chose to register a domain name as a word in Latin script, which may not normally be understood by citizens of his country and which probably would have no meaning for them, had it not become known in the Republic of Korea by virtue of the sales of the KABA food product by the Complainant, is another very strong indication that it registered that domain name in order to profit in some illegitimate manner from the reputation of the Complainant’s trademark.

Since the Respondent chose not to submit any arguments as to its intention for registering the domain name <kaba.biz>, the Panelist accepts the arguments submitted by the Complainant, and is satisfied that the Respondent registered the domain name in bad faith.

The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the STOP.

Pursuant to paragraph 4(l) of the STOP and paragraph 15 of the Rules, the Panel requires that the domain name registration <kaba.biz> be transferred to the Complainant.

Dr. Gerd F. Kunze
Sole Panelist

Date: February 19, 2002