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KETTAL, S.A. v. Tung Li [2005] GENDND 297 (20 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KETTAL, S.A. v. Tung Li

Case No. D2005-0206

1. The Parties

The Complainant is KETTAL, S.A., Barcelona, Spain, represented by Nominalia Internet, S.L., Spain.

The Respondent is Tung Li, china industries, Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <triconfort.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2005. On February 23, 2005, the Center transmitted by email to Network Solutions, LLC (the “Registrar”) a request for registrar verification in connection with the Domain Name at issue. On February 25, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2005. The Respondent sent several messages to the Center.

The Center appointed Assen Alexiev as the Sole Panelist in this matter on April 6, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

In accordance with the Rules, paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

In accordance with the Rules, paragraph 15, the projected decision date is April 20, 2005.

4. Factual Background

Complainant is the owner of the following trademark registrations in Spain:

- The trademark TRICONFORT, with registration No. 2478700, registered on November 5, 2002 for goods of class 18, according to the International classification of goods and services, and

- The trademark TRICONFORT, with registration No. 2479958, registered on October 21, 2002, for goods of class 35, according to the International classification of goods and services.

The Domain Name was first registered in 1998 by SAUVAGNAT S.A., a subsidiary of the Complainant. This registration expired on September 7, 2004.

On September 8, 2004, the Domain Name was registered by Paul Goodman, and later transferred to the Respondent.

5. Parties’ Contentions

A. Complainant

1. General factual allegations

The Complainant Kettal, S.A. was founded in 1964. After consolidating as the first brand in Spain in its sector, it decided to enter foreign markets to become the manufacturer with the widest range of outdoor furniture products within Europe. Thus, Complainant acquired the company SAUVAGNAT S.A. along with its brands, TRICONFORT and EVOLUTIF, strengthened its position in this sector and became the European leader of top-luxury outdoor furniture. The KETTAL Group presently gathers four renowned brands - KETTAL, TRICONFORT, HUGONET and EVOLUTIF, distributed in every continent and in over 60 countries. The KETTAL Group sales reached 52 million euros in 2004. It is over fifty years since TRICONFORT started creating its collections of outdoor furniture. These have acquired an exceptional, world-renowned image and prestige. The TRICONFORT products are globally commercialized in the most prestigious commercial stores, including the Harrod’s department store. The trademark TRICONFORT is frequently published in reputed home magazines, such as the Spanish magazine “HABITANIA”.

On September 8, 1998, SAUVAGNAT, S.A. registered the Domain Name. Since then, the Complainant has been commercializing its TRICONFORT product range using the Domain Name.

At the time of the expiration of the Domain Name on September 7, 2004, the Domain Name was not renewed by accident. Consequently, when the renewal payment did not take place, the Domain Name, without the Complainant’s authorization, was restored by Mr. Paul Goodman, who appeared as the registrant, the administrative and the technical contact of the Domain Name.

The Complainant contacted Mr. Paul Goodman by sending an email on November 8, 2004. The email contained a proposal for amicable agreement and an offer of over 300 euros for the transfer of the Domain Name to the Complainant. Mr. Paul Goodman was also advised that if no agreement was reached, the Complainant would undertake all necessary legal actions for the recovery of the Domain Name.

On November 8, 2004, Mr. Paul Goodman answered by email and indicated that he had already sold the Domain Name to some Chinese [people], who do not speak Spanish, so he is their intermediary. The Chinese wish to use the Domain Name but are prepared to sell it to the Complainant for 20,000 euros. With a further email of November 10, 2004, Mr. Goodman also informed the Complainant that he owns the domain names <kettal.eu> and <triconfort.eu>, and asked whether the Complainant wanted to buy them.

2. The Domain Name is identical to the TRICONFORT trademark in which the Complainant has rights

The Complainant contends that the Domain Name is identical to the trademark “TRICONFORT” because the relevant part of the Domain Name is “triconfort”, without taking into account the suffix “.com”, being a first level gTLD. The Complainant cites in his support the Administrative Decision on Banco Español de Crédito, S.A v. Miguel Duarte Perry Vidal Taveira (WIPO Case No. D2000-0018).

3. The Respondent has no rights or legitimate interests in respect of the Domain Name

The Respondent has neither used nor made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.

The Respondent has redirected the Domain Name to the website “maxpassion.net”, which offers sexual products for adults. Therefore, the use of the Domain Name that is identical to the trademark held by the Complainant in association with such kind of contents is likely to tarnish the trademark “TRICONFORT” and consequently does not demonstrate a legitimate interest in the Domain Name.

Further, the services offered by Respondent are not bona fide. The Respondent merely redirects the Domain Name to a website with which the Respondent has no connection. This conduct does not amount to a legitimate interest in the Domain Name.

The Complainant cites in this regard the Administrative Decision on Caledonia Motor Group Limited v. Amizon (WIPO Case No. D2001-0860), where the Panelist stated: “The Respondent’s use of the domain name to divert initially to a pornographic website, and subsequently to other sites to which the Respondent has no identifiable connection, does not amount to a legitimate interest in the Domain Name. On the contrary, the Respondent’s behavior indicates a complete lack of any right or legitimate interest in the Domain Name.”

The Respondent is not known by the Domain Name or by a name relating to it.

The Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. There is no relationship between Complainant and the Respondent that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating the “TRICONFORT” mark.

KETTAL, S.A. is the only holder of the rights related to the “TRICONFORT” trademark, without any participation by the Respondent or any third party in such rights. Therefore, the Respondent does not have a fair interest in, or right to the “TRICONFORT” trademark and, thus, can establish no legitimate use of such trademark.

4. The Domain Name has been registered and used in bad faith

The only purpose of the registration of the Domain Name by the Respondent was to obtain an economic benefit by selling the Domain Name to the Complainant. Therefore the Respondent’s conduct falls within Policy, paragraph 4(b)(i).

Numerous UDRP decisions have established that the purpose of selling the domain name for valuable consideration in excess of the Respondent out-of-pocket costs, could constitute a bad faith registration. See as an example, the decision on Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus Case (WIPO Case No. D2000-0166).

Furthermore, it is a reasonable presumption that the Respondent and Mr. Paul Goodman, are in fact, the same person. It is evident that Mr. Goodman tried to hide its identity in order to obtain a greater benefit from the sale of the Domain Name, or to make difficult his judicial persecution by the Complainant.

The Complainant is the world-wide leader in the sector of outdoor furniture. This fact illustrates the knowledge by the Respondent about the existence of the trademark TRICONFORT. This shows that the Respondent registered the Domain Name with motives completely opposite to good faith.

The Respondent has provided incomplete contact information, which is also evidence of the bad faith in the registration of the Domain Name. Numerous WIPO decisions have established the existence of a presumption of bad faith in that cases were the registrant has provided incomplete contact information.

The Respondent is intentionally re/directing visitors of the Domain Name to the website “www.maxpassion.net” which offers sexual products for adults. Consequently, the association of the Domain Name, identical to the trademark held by the Complainant, in relation to such contents, is sufficient evidence to show the unscrupulousness of the Respondent in the use of the Domain Name. Numerous WIPO decisions have established a clear interpretation of such behaviour. See for instance the decision on Christian Salvesen plc v. Paul Dunbabin (WIPO Case No. D2001-0858).

Evidently, the redirection of the “triconfort.com” to a website with such kind of contents is part of the Respondent’s strategy to force the Complainant to make an offer for the purchase of the Domain Name, or specifically accept the mentioned offer of 20,000 euros.

Moreover, the Respondent, by linking the contested Domain Name to the referred website, is evidently creating a likelihood of confusion with Complainant’s trademark as to the source of affiliation of the website.

5. Remedy requested

Complainant requests that the Domain Name be transferred to Complainant.

B. Respondent

The Respondent sent a series of email messages to the Center after the notification of Complaint and commencement of the Administrative proceeding. The messages contain the following statements:

- The Respondent acquired the Domain Name from Monsoon (Mr. Paul Goodman);

- The Respondent asked his lawyer if the acquisition of the Domain Name from Mr. Goodman is legal, and the lawyer confirmed that the original owner of the Domain Name has forgotten to renew the Domain Name;

- Mr. Goodman bought the Domain Name after the expiration of the previous registration of the Domain Name by the original owner;

- The Respondent owns the Domain Name with no intention to use it for selling furniture or any product similar to “Triconfort”;

- If “Triconfort” has forgotten to renew the Domain Name, they are really stupid for this, and this is not the Respondent’s problem.

The correspondence regarding the case was also sent to Mr. Paul Goodman. He strongly rejected any relation to the Domain Name, stated that the Domain Name was sold to the Respondent long ago, and protested against contacting him and sending him the materials regarding the case.

6. Discussion and Findings

A. Procedural Matters

In this case, the Center employed all measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a). The Notification of Complaint was sent to the address provided by the Respondent to the Registrar, by courier, and by e-mail, and was delivered to the Respondent. Mr. Paul Goodman was also served the Notification of Complaint and Commencement of the Administrative Procedure.

Therefore, the Respondent was given a fair opportunity to present its case.

The Center received several emails from the Respondent within the term for filing a Response. The Panel reviewed these messages, and finding that this would not prejudice the Complainant, decided to consider them as parts of one Response. Treated as such, the Response did not comply with any of the requirements of the Rules, paragraph 5(b). Importantly, the Response did not respond specifically to the statements and allegations contained in the Complaint, did not include any bases for the Respondent to retain registration and use of the Domain Name. There was also no documentary or other evidence annexed.

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

Given this state of affairs, the Panel considers that although a certain Response was filed, the Respondent’s conduct is practically equivalent to default. In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

B. Substantive Matters

The Policy, paragraph 4(a) provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and is using the Domain Name in bad faith.

1. Identical or Confusingly Similar

The Complainant has established its rights in two Spanish word marks that consist exclusively of the “TRICONFORT” element.

UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a presumption that the mark is inherently distinctive. Respondent has the burden of refuting this presumption (see, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047), but has remained silent on the issue.

The distinctive part of the Domain Name is the element “triconfort”, as it is an established practice under the Policy to disregard the suffixes such as “.net”, “.com” and “.org” for the purposes of the comparison under Policy, paragraph 4(a)(i). This “triconfort” element is identical to the “TRICONFORT” word marks of the Complainant.

Therefore, the Panel finds that the Domain Name is identical to the trademarks in which Complainant has rights.

2. Rights or Legitimate Interests

Complainant contends that none of the circumstances listed in the Policy, paragraph 4(c) exist in relation to the Respondent, and that there is no relationship between Complainant and the Respondent that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating the “TRICONFORT” mark. The Complainant also states that the conduct of the Respondent shows no legitimate interests in the Domain Name.

Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under the Policy, paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

The allegations of the Complainant remained practically uncontested by the Respondent, and he made no statement related to the issues of rights and legitimate interests in the Domain Name.

Studying the contents of the website to which Internet users are redirected when typing the Domain Name, as evidenced by the Complainant, the Panel finds that its content does not provide any evidence of rights or legitimate interests of the Respondent in the Domain Name, or indeed any relation to the Respondent.

The website and the whois information about the Respondent provides no evidence that it has been commonly known by the Domain Name (Policy, paragraph 4(c)(ii)).

Further, the content of the website at “maxpassion.net” is not by itself evidence of any of the circumstances under Policy, paragraph 4(c)(i) or (iii). The Panel sees no justification to regard the use of the Domain Name for redirecting to “maxpassion.net” where sexually-oriented products having no relation to the Domain Name are offered, as evidence of bona fide offering of goods or services. See in this regard the decision cited by the Complainant on Caledonia Motor Group Limited v. Amizon (WIPO Case No. D2001-0860).

The Panel also finds no justification to consider this use of the Domain Name as a legitimate non-commercial use, as the website is obviously of a commercial nature. As to the possibility that the use of the Domain Name be regarded as a “fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, the Panel is convinced that the circumstances strongly suggest the opposite. Automatic redirection of visitors to commercial websites is commonly practiced in the Internet for commercial gain. The Respondent uses a Domain Name that is identical to the Complainant’s trademarks, and redirects them to a sexually-oriented website. Given the popularity of the Complainant’s marks and fact that the Domain Name was included in the catalogues distributed worldwide by the Complainant, there is a high probability that one of the intentions behind the actions of the Respondent was to create a situation where Internet users are diverted to a website whose content may tarnish the Complainant’s trademarks. Such a situation may then be used when negotiating the price for the transfer of the Domain Name.

The conclusion (see the section on bad faith below) that Paul Goodman and the Respondent are most probably one and the same person, or persons acting in close coordination with one another, also supports a finding that the Respondent lacks rights or legitimate interests in the Domain Name. If the Respondent had any rights or legitimate interests, why would he claim that the Domain Name was transferred, and thus try to hide his identity? Here the Panelist agrees with the Complainant, that the Respondent’s conduct was motivated by the purpose to obtain an unjust financial benefit by selling the Domain Name to the Complainant, and to make it harder for the Complainant to protect his rights and legitimate interests, related to the Domain Name.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

3. Registered and Used in Bad Faith

Having reviewed the submissions of the parties and the evidence produced, the Panel concludes that the question of the identity of the Respondent and his alleged relation to Paul Goodman is central to the case, and has to be dealt with in the first place, as it is directly relevant to the issues of bad faith registration and use of the Domain Name.

In order to decide this issue, the Panel took into account the following circumstances:

The contact details provided for the Respondent to the Registrar are incomplete as there is no postal code, fax or telephone number. The Respondent has not provided these details in the Response either.

After the alleged transfer of the Domain Name, the registrant name was changed to Tung Li. However, the email address of the Administrative contact (which address remained the same at least until February 22, 2005, as evident from Annex 1 to the Complaint), was used by Paul Goodman for communication with the Complainant, whereby Paul Goodman offered the transfer of the Domain Name for 20,000 euros, and stated that the new registrant of the Domain Name appointed him as intermediary for the sale of the Domain Name to the Complainant. Only recently was the email address of the Respondent changed to a different one.

The Respondent has never contested the identity between Paul Goodman and Tung Li, alleged by the Complainant.

The analysis of these circumstances leads the Panel to the conclusion that the Respondent is not separate and independent from Paul Goodman.

A logical consequence of this finding is that if the criteria of the Policy, paragraph 4(a) are found to be present in relation to Paul Goodman, this will determine the findings of the Panel in relation to the Respondent as well.

The Complainant is based in Spain and has established the popularity of his TRICONFORT products there and in other parts of the world.

As seen from the Registrar’s whois database printout submitted as Annex 11 to the Complaint, the postal address and phone numbers of Paul Goodman are located in Spain, so most probably he is based there as well.

According to the Respondent, at the time of the transfer of the Domain Name from Paul Goodman, the Respondent’s lawyer confirmed that the original owner of the Domain Name has forgotten to renew its registration. Where could he obtain such information from at the time of the transfer, which is alleged to have taken place before the notification of the Complaint?

There is no evidence of any rights or legitimate interests of Paul Goodman or the Respondent in the Domain Name.

All this strongly suggests that Paul Goodman knew about the commercial activities of the Complainant, the goodwill of his TRICONFORT trademarks and his Domain Name registration, waited for the expiration of the Domain Name, and having no rights or legitimate interests in it, took steps to register the Domain Name in his favor the day after its expiration.

The correspondence between the Complainant and Paul Goodman submitted as Annex 12 to the Complaint, the finding that the Respondent is not separate and independent from Paul Goodman, and particularly the offer for the sale of the Domain Name to the Complainant for the price of 20,000 euros, shows clearly the intention lying behind the registration of the Domain Name. There is no doubt that the sum of 20,000 euros is far in excess of the costs directly related to the Domain Name.

The analysis of these facts supports a finding that the Domain Name was registered or acquired primarily for the purpose of selling its registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. Pursuant to the Policy, paragraph 4(b)(i), this amounts to registration and use of the Domain Name in bad faith.

The offer of Paul Goodman to sell the other two newly-registered Domain Names <kettal.eu> and <triconfort.eu> is further evidence of bad faith under Policy, paragraph 4(b)(ii). Paul Goodman waited for the expiration of the Domain Name, then registered it, and so prevented the Complainant from reflecting his trademark in the Domain Name, and also registered the two other domain names which contain the trade name and the trademark of the Complainant. Why would he register them, if he has no relation to such names, while the Complainant will obviously be very interested in acquiring them? The offer for sale of the three domain names shows the intention to prevent the Complainant from reflecting his trademark in a corresponding domain name, and the pattern of this conduct. These circumstances support a finding of bad faith registration and use according to Policy, paragraph 4(b)(ii).

Further, the redirection of the visitors of <triconfort.com> to a sexually-explicit website, interpreted in the light of the above finding, was probably done having in mind the popularity of the Complainant’s TRICONFORT trademarks and in attempt to motivate the Complainant to accept the offer for sale of the Domain Name made by the Complainant, as it is natural to expect the Complainant to be greatly concerned about the redirection of Internet users to such a website, and about the dilution of his trademarks resulting of the redirection. Such a conduct of the Respondent is obviously in bad faith.

The only allegations made by the Respondent in his support, are that he owns the Domain Name with no intention of selling furniture or any product similar to Triconfort, and that the Domain Name was registered after the expiration of its previous registration. So, to put it in other words, the Respondent is not a competitor to the Complainant, and the Domain Name was registered when it was available to the public. Being a competitor to the Complainant is a prerequisite to a finding of bad faith only under the Policy, paragraphs 4(b)(iii), which is not applicable to the present case, and, a Domain Name can only be registered if it is freely available. Therefore, the allegations of the Respondent cannot rebut the above findings of bad faith registration and use under the Policy, paragraphs 4(b)(i) and (ii).

Considering all the above, the Panel concludes that the registration and use of the Domain Name by the Respondent was done in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <triconfort.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist

Dated: April 20, 2005