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Trustway Homes, Inc. v. The PC Help Group, Inc. [2005] GENDND 78 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kiwi European Holdings B.V. v. Future Media Architects, Inc.

Case No. D2004-0848

1. The Parties

The Complainant is Kiwi European Holdings B.V., Utrecht of Netherlands, represented by Sara Lee/DE N.V., Netherlands.

The Respondent is Future Media Architects, Inc, Tortola, British Virgin Islands of United Kingdom of Great Britain and Northern Ireland, represented by Greenberg & Lieberman, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kiwi.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2004. On October 15, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 19, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 October 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response November 9, 2004. The Response was filed with the Center November 10, 2004.

The Center appointed Peter G. Nitter, Sally M. Abel and David E. Sorkin as panelists in this matter on November 26, 2004. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

Complainant is the owner of numerous registrations for the trade mark KIWI and trade marks consisting of or incorporating the words KIWI worldwide. The Complainant has mainly been using the trade mark KIWI in respect of shoe care and household products.

Respondent has acquired and used the contested domain name <kiwi.com>.

5. Parties’ Contentions

A. Complainant

The domain name <kiwi.com> is identical to the trade mark KIWI of Complainant.

The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has no relationship with or permission from the Complainant for the use of the KIWI mark nor has the Complainant consented to the Respondent’s application for registration of, or use of, any domain name incorporating the mark. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.

The Complainant has carried out various trade mark searches of the word KIWI in various data bases all over the world. The results of these searches show no registrations of the trade mark KIWI in the name of Respondent.

The domain name was registered and is being used in bad faith.

The Complainant believes that the Respondent has registered the domain name in bad faith and in violation of the UDRP at paragraph 4(a)(iii) on the ground that at the time of registration of the domain name by the Respondent, the mark KIWI was well known in many countries of the world in connection with shoe care and household products of Complainant. The Complainant has created substantial goodwill in the mark KIWI and has trade mark rights as from 1910.

The domain name <kiwi.com> is linked with “www.fma.com”, the website of Respondent. This is misleading Complainant’s customers who might get the impression that FMA has a relationship with the Sara Lee Group of companies.

B. Respondent

Respondent clearly has a legitimate interest in the disputed domain name.

Respondent bought the domain name for 30.000 US Dollars, and has used it to promote its oxide.com search engine. The use of a domain name for the purpose of redirecting traffic to a website in order to make money from that site is a legitimate use, see Scorpions Musikproductions und Verlagsgesellschaft MBH .v. Alberta Hot Rods WIPO Case No. D2001-0787 and Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706.

It is well established that domain names containing common dictionary words, may be registered in good faith and, per se, establish Respondent’s legitimate interest, see Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105. Respondent’s use of the disputed domain name is moreover in connection with a bone fide offering of goods or services.

Respondent has not registered or used the domain name at issue in bad faith.

Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers. Respondent did not have knowledge of Complainants mark when it registered the disputed domain name.

Complainant has not presented any evidence to support its allegation that respondent intended or intends to attract users from Complainant’s site.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established and documented that they have registered the trademark KIWI or trademarks incorporating KIWI in countries worldwide. Complainant’s mark is identical to the disputed domain name, and the first criteria set out under the Policy, paragraph 4 is thus fulfilled.

B. Rights or Legitimate Interests

The basis for Complainant’s assertion that Respondent lacks rights or legitimate interests in the domain name at issue is merely the fact that Complainant has not granted Respondent any rights to use its mark, and that Respondent does not have any trademark registrations which corresponds with the disputed domain name.

Respondent has on the other side asserted and evidenced that he is using the domain name in connection with a commercial service which is wholly unrelated to anything the Complainant does with its KIWI mark. Respondent has asserted that he chose the disputed domain name because “kiwi” is a well-known generic term with several different meanings.

Complainant’s assertions, and the evidence presented, does not give the Panel any reason to conclude that Respondent lacks rights or legitimate interests in the disputed domain name, and Complainant has thus not met its burden of proving the element set out in the Policy, paragraph 4(c).

C. Registered and Used in Bad Faith

Complainant’s only assertion in relation to the bad faith requirement is that at the time of the registration of the disputed domain name, their KIWI mark was well known in many countries of the world, and that any use of the domain name by the Respondent is likely to misleadingly divert consumers and trade relations to tarnish or otherwise dilute the Complainant’s well known trade mark.

Complainant has not proffered any further evidence indicating that Respondent has registered the domain name under any of the circumstances listed in the Policy, paragraph 4(b). Neither has Complainant in the opinion of the Panel brought forward other evidence showing that Respondent has registered or used the domain name in bad faith.

The domain name consists of a generic term, and it is therefore conceivable to the Panel that Respondent registered the contested domain name without having Complainant in mind, or even without knowledge of Complainant. The web site corresponding to the contested domain name furthermore does not give any specific reason to believe that Respondent has attempted to be confused with Complainant, to tarnish Complainant’s trade mark, or disrupt his business in other way.

In light of the above, the Panel finds that Complainant has not met his burden of proving that the disputed domain name has been registered or used in bad faith.

7. Abuse of the Policy

The Panel finds that the Complaint was brought in bad faith in an instance of reverse domain name hijacking, based upon the complete lack of evidence that the disputed domain name, a generic term, was registered or is being used for reasons related in any way to Complainant or its mark.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: January 4, 2005