A surefire way of losing a domain name is when you register one which you have zero entitlement to.
It’s one thing when the domain name in question is madeup of words or is an expression of some kind, but when it is a peculiar word it’s very hard to defend that position. Take the example of skype.co.uk.
While most of the WIPO decisions regarding IE domains have involved a particular party (EUBrowser) the most recent decision does not.
Kelkoo.ie was the subject of a WIPO UDRP which was published today.
Anyone working in the internet business in Europe would be familiar with Kelkoo who run a price comparison service.
The person who registered Kelkoo.ie may have expected the trademark holder not to notice or to possibly turn a blind eye, which they didn’t.
The decision from WIPO was very straightforward:
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;…”
So the main page of the site should be updated from:
To read “never opening – sorry!”
