WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KKCG SE v. MustNeed.com
Case No. D2008-0614
1.
The Parties
The Complainant is KKCG SE, Limassol, Cyprus, represented by Tomáš Zacha, Czech
Republic.
The Respondent is MustNeed.com, Taipei, Taiwan, Province of China.
2.
The Domain Name and Registrar
The disputed Domain Name <atlantik.com> is registered with Moniker Online
Services, LLC.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on April 18, 2008. On April 22, 2008, the Center transmitted by email to the
Registrar a request for registrar verification in connection with the Domain Name. On
April 22, 2008, the Registrar transmitted by email to the Center its verification response
confirming that the Respondent is listed as the registrant and providing the contact
details. 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 May 6, 2008. In
accordance with the Rules, paragraph 5(a), the due date for Response was
May 26, 2008. The Respondent did not submit any response. Accordingly, the Center
notified the Respondent’s default on May 27, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on
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June 3, 2008. 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.
4.
Factual Background
According to the Complaint and the English-language pages of the Complainant’s
principal website at “www.kkcg.cz/en-kkcg.aspx”, KKCG is a multinational investment
group centered in the Czech Republic. The group has some 6,500 employees in more
than 20 companies established in the Czech Republic and eight other countries: The
Netherlands, The United Kingdom of Great Britain and Northern Ireland, Germany,
Russian Federation, Ukraine, Slovakia, Romania, Morocco, Yemen, Pakistan, Canada,
and the United States of America. The group is engaged in oil and gas exploration and
production, machinery and metallurgy, securities trading, financial asset management
and consulting, and business investments and transactions in tourism, real property,
media, and other sectors. The Complainant is the parent company of the group,
established in the Republic of Cyprus as a European Public Limited Liability Company
on May 3, 2007.
The KKCG Finance division of the Complainant’s group includes two Czech
companies that use the name “Atlantik”: Atlantik Finanční Trhy, A.S. (rendered as
“Atlantik Financial Trade” or “Atlantik FT” on English-language website pages) and
Atlantik Asset Management Investiční Společnost, A.S. (“Atlantik Asset Management”
or “Atlantik AM”). According to the Complainant’s website, Atlantik FT was
established in 1993 and is the largest non-banking securities trader in the Czech
Republic; it also acts as a securities trading intermediary in 105 countries. Atlantik
AM, established in 1995, is advertised as the second-largest non-banking asset manager
in the Czech Republic.
The Complainant owns a Czech national trademark for the word ATLANTIK,
registration number 287551, registered February 22, 2007. The Complainant also has
pending applications for the trademarks ATLANTIK FT and ATLANTIK AM before
the Industrial Property Office of the Czech Republic and the Office of Harmonization
for the Internal Market.
The Domain Name was registered on June 28, 2001 in the name of “MustNeed.com” in
Taiwan, Province of China (there is no evidence that this is a legal entity) and has been
renewed through June 28, 2008 with the Registrar, Moniker.com, which is located in
the United States of America according to the list of ICANN-accredited registrars
found at “www.icann.org/registrars/accredited-list.html”. The Registrar’s website at
“www.moniker.com” indicates that the Registrar is a subsidiary of Oversee.net, an
online advertising company headquartered in Los Angeles, California, United States of
America (see “www.oversee.net/about.php”).
The Domain Name resolves to an English-language domain parking landing page with
category links to “sponsored results” that appear to be pay-per-click (PPC) advertising
links. The landing page, which also includes a search box, is headed as follows:
“atlantik.com
This Domain Might Be For Sale!!! Please contact us for more information.”
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This Domain Name Might Be For Sale!!! Please contact us for more information.
The category links on the landing page concern “Radio Stations”, “Christian Radio
Stations”, and radio stations in many individual states or regions of the United States of
America. Selecting one of these categories leads the website visitor to pages with
sponsored links for individual radio stations, Christian ministries, Internet and satellite
media services, music download websites, and general online retail shopping websites
such as “www.shoplocal.com”. Each subsequent page features additional “Related
Searches” category links for “radio stations” in the United States of America,
Indonesia, Spain, England, Cuba, and the Dominican Republic, although those links in
turn produce pages with a wide variety of third-party advertising.
The landing page associated with the Domain Name operates in a manner consistent
with domain parking used for third-party advertising, as described by the Registrar’s
affiliate (see “www.oversee.net/directnav.php”):
“Domain landing pages serve as a medium to draw attention to goods and
services. Publishers work with domain monetization services (like us) to
monetize the type-in (or direct navigation) traffic visiting undeveloped domain
names. When a visitor reaches a given domain, it redirects to a landing page
featuring text advertisements relevant to the visitor, benefiting publisher,
advertiser and consumer.”
It is not evident why the advertising network’s search engine determined that the
Domain Name would be relevant to persons seeking information about radio stations in
various states and countries.
Apart from what may be inferred from this use of the Domain Name, nothing is known
about the Respondent, which has an English name and a Taiwan, Province of China
postal address. As discussed further below, the Respondent has been named in
numerous UDRP complaints.
A representative of the Complainant made an email inquiry on January 30, 2008,
through the website associated with the Domain Name, concerning the possibility of
purchasing the Domain Name. A person named “Lee” responded on February 5, 2008,
asking for a “realistic offer” commensurate with the potential value of the Domain
Name. According to the Complainant, there have been no further communications
between the parties.
5.
Parties’ Contentions
A.
Complainant
The Complainant observes that the Domain Name is identical to its ATLANTIK mark
and argues that there is no evidence that the Respondent legitimately uses that mark.
The Complainant asserts that the Respondent registered and used the Domain Name in
bad faith by (a) attempting to sell it for an excessive price and (b) using it to mislead
Internet users for commercial gain.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions.
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6.
Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a
disputed domain name, the Complainant must demonstrate each of the following:
(i)
the Domain Name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights; and
(ii)
the Respondent has no rights or legitimate interests in respect of the
Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and
documents submitted and in accordance with the Policy, these Rules and
any rules and principles of law that it deems applicable.”
A.
Identical or Confusingly Similar
The Complainant has rights under the Policy in its registered ATLANTIK mark. The
“.com” top-level domain name is not a distinctive part of the Domain Name for
trademark or UDRP purposes. Therefore, the Domain Name is considered identical to
the Complainant’s registered ATLANTIK mark for purposes of the first element of the
Complaint.
B.
Rights or Legitimate Interests
It is undisputed that the Respondent was not authorized to use the Complainant’s mark.
This establishes the Complainant’s prima facie case on this element of the Complaint,
and the burden shifts to the Respondent to produce evidence of its rights or legitimate
interests under paragraph 4(c) of the Policy. See, e.g., Admiral Insurance Services
Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises
Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International
Limited, WIPO Case No. D2004-0753.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a
respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services;
or
(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or
service mark rights; or
(iii) you are making a legitimate noncommercial or 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 Respondent did not submit a Response in this proceeding and has not otherwise
indicated its rights or legitimate interests in the Domain Name. There is no evidence
from a perusal of the website associated with the Domain Name that the Respondent is
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known by that name or has made legitimate noncommercial use of the Domain Name.
Instead, it appears that the Domain Name has been used commercially for a landing
page with automatically generated PPC advertising links to unrelated third parties.
These are not obviously related to any generic use of the term “atlantik”, even as an
alternate spelling of “Atlantic” referring to the ocean or global region. Thus, this does
not appear to be a legitimate “use of a generic domain name to provide information
about the genus” (Admiral Insurance Services, supra).
Because of the Panel’s conclusions, below, concerning the third element of the
Complaint (bad faith), it is unnecessary to consider in the abstract whether the
Respondent could nevertheless have a legitimate interest in parking the Domain Name,
offering it for sale, and using it in the interim for a landing page with third-party
advertising that is apparently unrelated to the sense of the Domain Name.
C.
Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad-faith registration
and use, including the following:
“(i) circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented outof-pocket costs directly related to the domain name; or . . .
(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your website or other on-line location, by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of your website or location
or of a product or service on your website or location.”
The Complainant refers to (a) the announcement on the website associated with the
Domain Name that the Domain Name “might be for sale” and (b) the email exchange
with the Respondent. The Complainant infers that the Respondent “is seeking
consideration exceeding its expenses related to the disputed domain name registration.”
These facts alone, however, are insufficient to establish bad faith under paragraph
4(b)(i). No price is mentioned on the website, although it may be assumed that the
Respondent hoped to profit from any sale. There is no evidence that the Respondent
ever knowingly sought to sell the Domain Name to the Complainant or a competitor of
the Complainant, much less that this was the “primary” purpose for registering the
Domain Name. The email from the Complainant’s representative did not identify the
Complainant or its trademark rights, and the Respondent did not name a price in
replying to the email. Thus, the record simply does not contain sufficient evidence to
establish the elements of paragraph 4(b)(i).
The Complainant alleges further that the Respondent “is using the domain name to
misleadingly divert consumers to a generic, pay-per-click website with indexed links
for commercial gain”, an apparent reference to the example of bad faith articulated in
the Policy, paragraph 4(b)(iv).
To establish bad faith, however, there must be sufficient evidence from which to infer
that the Respondent was aware of the Complainant’s mark and sought to exploit it, both
at the time of registration and subsequently. See, e.g., Kooks Custom Headers, Inc. v.
Global DNS, LLC, WIPO Case No. D2008-0233 (and citations therein). Such evidence
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is lacking here.
The Domain Name was registered in June 2001 by a party giving a post-box address in
Taiwan, Province of China and using a Registrar and an affiliated domain parking and
online advertising service provider located in the United States of America. The
Complaint and the Complainant’s website indicate that the Complainant’s ATLANTIK
marks may be well known in the Czech Republic today. But they do not establish the
likelihood that a party in Taiwan, Province of China or in the United States of America
would have been aware of the (unregistered) marks ATLANTIK, ATLANTIK FT, or
ATLANTIK AM in 2001. The Complainant obtained trademark registration for the
ATLANTIK mark in the Czech Republic only in February 2007, some five and a half
years after the Domain Name was registered, and the ATLANTIK FT and ATLANTIK
AM marks remain the subject of pending trademark applications.
The Complainant, which is the Cyprus parent company of a corporate group centered in
the Czech Republic, does not advertise on its website or indicate in the Complaint any
establishment or regular operations in Taiwan, Province of China even today.
According to the Complainant’s website, the group currently has a branch and some
undisclosed level of operations in the United States of America, but the Complaint does
not indicate whether these operations existed in June 2001, and whether they used the
ATLANTIK marks.
The names “Atlantik FT” and “Atlantik AM” currently appear on at least one page of
both the Czech and English versions of the Complainant’s website, without any visible
indication of trademark claims. The word “Atlantik” is not featured on the website
without these additional abbreviations. Apart from this equivocal use of the claimed
marks on the Complainant’s current website, there is no evidence before the Panel
concerning the Complainant’s advertising or other use of the recently registered
ATLANTIK mark, or of the unregistered ATLANTIK FT and ATLANTIK AM marks,
either currently or in 2001.
Thus, it is improbable that the Domain Name was registered in contemplation of the
Complainant’s marks, and nothing on the landing page associated with the Domain
Name today (or on earlier versions stored by the Internet Archive at
“www.archive.org”) suggests an awareness of the Complainant or its marks.
The Complainant cites “at least five other UDRP actions” naming a respondent with the
same name as the current Respondent and similarly located in Taipei, Taiwan, Province
of China. In each of these proceedings, no response was submitted and the panel
ordered transfer of the disputed domain names. In Clinquest, Inc. v. MustNeed.com,
WIPO Case No. D2006-1536, for example, the panel concluded as follows:
“There is evidence adduced before the Panel which demonstrates that the
Respondent consistently engages in a pattern of behavior namely, registering
domain names which [are] comprised of others’ trademarks, uses these domain
names to direct Internet users to a pay-per-click website with indexed links.”
It appears likely that the Respondent in this proceeding is the same party and makes a
regular practice of registering, parking, and selling domain names, at least some of
which mimic third party trademarks. In a proper case, such a pattern of trademark
abuse would lend support to an inference of bad faith registration and use, for purposes
of the third element of a UDRP complaint.
In the current proceeding, by contrast, the record does not establish the probability that
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the Respondent contemplated the distant Complainant’s then-unregistered marks when
registering the Domain Name in 2001. The Panel concludes, therefore, that the
Complainant has not established the element of bad faith in this Complaint.
7.
Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: June 17, 2008
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