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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kelkoo SA v. Lina Musinkiene

Case No. DIE2007-0002

 

1. The Parties

The Complainant is Kelkoo SA, of Paris, France, represented by FR Kelly & Co, Ireland.

The Registrant is Lina Musinkiene, of Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <kelkoo.ie> is registered with IE Domain Registry Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2007. On April 10, 2007, the Center transmitted by email to .IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On April 10, 2007, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 8, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on May 11, 2007. In accordance with the IEDR Rules the due date for Response was May 31, 2007. The registrant did not submit any response. Accordingly, the Center notified the registrant’s default on June 4, 2007.

The Center appointed Adam Taylor as the sole panelist in this matter on June 29, 2007. 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 IEDR Rules.

 

4. Factual Background

The Complainant, founded in 2000, operates an online price comparison service known as “Kelkoo”. The origin of the word is a play on words from the French for “what a bargain” – “quel coup”.

Within two years of launching, the Complainant became one of Europe’s largest e-commerce websites and advertising platforms. In April 2004, the Complainant was acquired by Yahoo! Inc for €450 million and is now a wholly owned subsidiary thereof.

The Complainant now operates in 10 European countries and receives over 8.5 million unique users monthly (over 3 million in the UK) from users across Europe.

The Complainant owns Community Trade Mark No. 3,719,473 logo mark KELKOO COMPARE. Buy. Save.” dated 18 March 2004 in classes 9,35,38,40,41,42,43.

The following Community Trade Marks are registered in the proprietor name “KELKOO.COM”:

1. No. 1,707,124 for the word “KELKOO” dated 26 May 2000 in classes 9,35,38,41,42.

2. No. 1,707,231 logo mark “Kelkoo? www. kelkoo.com” dated 26 May 2000 in classes 9,35,38,41,42.

On 20 October 2005, the “KELKOO.IE” was registered as a business name in the Republic of Ireland by “Lina Musinskiene”.

One cannot be certain when the disputed domain name was registered as the IE Domain Registry WhoIs database does not show domain registration date. The whois printout does say that the domain name is based on a registered business name and that the domain name renewal date is 20 October 2007. The Panel thinks it reasonable to infer from this that the domain name was registered on or around October 20, 2005 – being the date that the business name was registered.

As of February 27, 2007, there was a holding page at the website of the disputed domain name stating: “KELKOO.ie - ONLINE SHOPPING – WILL OPEN SOON – PLEASE COMEBACK LATER”.

 

5. Parties’ Contentions

A. Complainant

Identical or Misleadingly Similar

The Complainant also trades as Kelkoo.com and is proprietor of three Community Trade Marks which have effect in Ireland.

The mark “KELKOO” is also an unregistered trade mark, which is used in the course of trade in Ireland in particular for online shopping services.

This unregistered trade mark is protected in Ireland under the tort of passing off, in that the Complainant has goodwill and reputation in the mark KELKOO.

The disputed domain name is identical to the Complainant’s trade mark KELKOO.

The use of the identical mark KELKOO.IE is a misrepresentation that any goods or services upon which it is used emanate from or are associated with the Complainant. The disputed domain name is an instrument of fraud per the decision of the English Court of Appeal in British Telecommunications plc v. One in a Million Ltd [1999] FSR 1.

Rights or Legitimate Interests

The Registrant has no legitimate connection with the mark KELKOO.

It is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of proof onto the Registrant.

There has been no evidence prior to the notice of this dispute of any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The domain name does not correspond to the personal name or pseudonym of the Registrant.

The website for the disputed domain name consists merely of a holding page referring to a forthcoming “online shopping” website which competes or intends to compete with the Complainant.

Registered or Used in Bad Faith

The Registrant only registered the business name to obtain domain name registration and it is not sufficient to constitute rights or legitimate interests. The Policy states at paragraph 1.2 that the registration of the domain name, the subject of the dispute, does not constitute evidence of rights in law or legitimate interest in respect of the domain name.

On November 17, 2006, a cease-and-desist letter was sent by courier to the Registrant but no response was received.

The registrant is clearly aware of the fame of the KELKOO mark and is or intends to intentionally divert customers of the Complainant through the use of the disputed domain name. It must be assumed that the Registrant is hoping to receive click through fees for diverting internet users to competing websites and profiting from diversionary use constitutes bad faith.

Even if the Registrant can provide some evidence of use of the domain name, such use would be in bad faith because of the well-known status of the Complainant’s trade mark. Use of a domain name that intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services.

B. Registrant

The Registrant did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.

A. Identical or Confusingly Similar

The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

The Complainant has invoked three Community Trade Marks, all of which have effect in the island of Ireland. One of these is registered in the name of the Complainant. The proprietor of the other two is “KELKOO.COM”, with a different Paris address to that shown for the Complainant. The Complainant asserts that it also trades as Kelkoo.com and that it is the proprietor of all of the trade marks.

The Complainant could have done more to verify its connection with those other two trade marks. However, in the absence of any challenge from the Respondent, the Panel is prepared to infer that the two trade marks are either owned by the Complainant or held within the Complainant’s group on behalf of the Complainant. See the following case under the Uniform Dispute Resolution Policy where a similar approach was taken: PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456.

One of the Complainant’s registered trade marks is for the word “KELKOO”.

Accordingly, the Panel concludes that, disregarding the domain suffix “.ie”, the disputed domain name is identical to a protected identifier in which the Complainant has rights.

The Panel makes no finding concerning common law rights as the Complainant has produced no information or evidence concerning its trading activities in the island of Ireland.

B. Rights or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the Domain Name.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Ltd, WIPO Case No. DIE2006-0002.

The Complainant states that it has not licensed or otherwise authorized the Registrant to use its trade mark.

Paragraph 3.1.1 of the .IE Policy does not apply as there is no evidence of demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business. The holding page posted at the website of the disputed domain name falls well short of “demonstrable good faith preparations”.

Paragraph 3.1.2 does not apply as there is no evidence that the domain name corresponds to the personal name or pseudonym of the Registrant.

Paragraph 3.1.3 does not apply as there is no evidence of any use of the domain name by the Registrant and the domain name is not a geographical indication.

Although there is a slight discrepancy in the spelling of the surname, it is clear that the Registrant owns a registered business name corresponding to the disputed domain name. The Panel thinks it reasonable to infer that the business name was registered to enable registration of the disputed domain name in accordance with IEDR’s domain name registration requirements and not for any genuine independent business purpose. This business name registration is not, of itself, sufficient to constitute rights or legitimate interests.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Registrant.

The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.

The name “KELKOO” is highly distinctive. It is virtually inconceivable that the Registrant registered the disputed domain name other than for the purpose of targeting the Complainant’s trade mark. This is supported by the fact that the holding page posted at the website of the disputed domain name referred to “online shopping”, which is the Complainant’s area of operation.

Furthermore, the Registrant has not used the disputed domain name for a substantive website since its registration almost two years ago.

Nor has the Registrant had appeared in these proceedings to contest the Complainant’s allegations.

Taking all of these matters together, the Panel concludes that the disputed domain name was registered in bad faith.

Paragraph 2.1 of the Policy specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith. Insofar as it is necessary to have regard to these, the Panel considers that paragraphs 2.1.2 and 2.1.3 of the Policy apply here:

“2.1.2 where the domain name has been registered or is used primarily in order to prevent the complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name; or

2.1.3 where the Registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the complainant;…”

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name, <kelkoo.ie> be transferred to the Complainant.

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Adam Taylor
Sole Panelist

Dated: July 13, 2007