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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kaufland Warenhandel GmbH & Co. KG v. NetgrooveDomainService

Case No. D2008-0020

1. The Parties

1.1 Complainant is Kaufland Warenhandel GmbH & Co. KG, Neckarsulm, Germany, represented by HK2 Rechtsanwдlte, Germany.

1.2 The named Respondent is NetgrooveDomainService, Ibaraki, Japan.

2. The Domain Name and Registrar

The disputed domain name <k-premium.com> is registered with Tucows, Toronto, Canada.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2008. On January 9, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Tucows 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”).

3.2 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 January 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2008.

3.3 On January 11, 2008, Mr. Tokuda of NetgrooveDomainService communicated to the Center by email in Japanese, indicating that the registrant of the disputed domain name is Mr. Masashi Shiosaki and provided his contact details.

The Center replied to the above email on January 17, 2008, both in Japanese and in English indicating that;

“the Center has taken note of his statement that he is not the registrant of the disputed domain name, and that he was in fact acting as a reseller for Tucows, However, given the apparently conflicting information in the Whois, the Center was not in a position to exclude Netgroove as a potential registrant/respondent in the present proceedings and that any ultimate determination as to the identity of the appropriate respondent would be a matter for consideration by the Panel.”

On the same day, Mr. Tokuda communicated to the Center by email that he had no ability to understand the Complaint in English, and that he wished to have it communicated in Japanese.

3.4 On January 18, 2008, Mr. Shiosaki Masahi replied to the Center’s Notification of Complaint by email as follow; “I hope in Japanese”.

On January 21, 2008, the Center acknowledged the above communication and further noted that the Center had been advised by the concerned Registrar Tucows that the language of the registration agreement is English, as such the proceedings are in English.

3.5 On January 29, 2008, Mr. Shiosaki Masashi, the administrative and technical contact of the disputed domain name, sent an email correspondence to Complainant to which the Center was copied, offering to give up the disputed domain name for a sum of US 8,000.

3.6 On February 4, 2008, the Center sent an email to the email address of Mr. Shiosaki Masashi, noting the fact that unless otherwise advised by Respondent, the Center will treat the communication dated January 29, 2008 as the Response to the Complaint.

3.7 On February 4, 2008, the Center wrote to Complainant to confirm whether the proceedings shall be suspended for the parties to reach a settlement or whether the Center shall proceed with the appointment of the panel.

3.8 On February 12, 2008, Complainant notified the Center that it does not request for suspension. It asserted that Respondent did not comply with nearly all of the formal requirements of paragraph 5 of the Rules. Further, it requested allowance for supplementary filing and stated:

“The E-Mail of January 29, 2008, gives new evidence of bad faith and lack of legitimate interest unknown to Complainant at the time of filing of the Complaint….Complainant could not be aware of that information at the time of filing the Complaint, because it was only revealed in the E-Mail of January 29, 2008.”

3.9 The Center appointed Haig Oghigian as the sole panelist in this matter on February 26, 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

The following information is asserted as fact in the Complaint.

4.1 Complainant’s Group is a major retail store chain residing in Germany. Over 700 stores under the names “Kaufland”, “Handelshof” and “KaufMarkt” of the Complainant exist in Germany, Czech Republic, Slovakia, Poland, Croatia, Romania and Bulgaria.

4.2 Complainant is the owner of several trademarks K PREMIUM which predates the registration of the domain name. These include German device mark No. 30251478.3 registered on December 19, 2002, and international device mark No. 798212, registered on January 13, 2003 and designated for Austria, Bosnia-Herzegovina, Bulgaria, Czech Republic, Spain, France, Croatia, Hungary, Italy, Poland, Portugal, Romania, Serbia and Montenegro, Slovenia, Slovakia, Ukraine, Denmark, the European Community and Turkey.

4.3 The disputed domain name was registered on May 24, 2005.

5. Parties’ Contentions

A. Complainant

5.1 Complainant requests that the domain name <k-premium.com> be transferred from the Respondent to Complainant.

5.2 Complainant contends that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.3 In relation to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the domain name in dispute is identical to the characters in Complainant’s trademark, which dominate the overall impression of this trademark, and therefore is confusingly similar to Complainant’s trademark.

5.4 In relation to element (ii) of Paragraph 4(a) of the Policy, Complainant contends that Respondent was not using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Complainant contends that the service offered under the domain name is call girl prostitution and in Japan, soliciting for purposes of prostitution appears to be illegal. Complainant asserts that Respondent is either letting the domain name to the operator of a call girl prostitution service, or is running the website himself and it is consensus view of existing panel decisions that the offer of or linking to pornographic material under a third party’s trademark does not constitute a bona fide offering of goods and services under the Policy. Finally, Complainant asserts that there is no indication that Respondent, which, according to the whois-data is “NetgrooveDomainService”, is commonly known by “K-Premium”. Complainant alleges that it is irrelevant if the operator of a website resolving under a disputed domain name is commonly known by the domain name. Paragraph 4(c)(ii) of the Policy requires Respondent itself to be commonly known by the domain name. In addition, there is no indication that the operator of the website is commonly known by k-premium. According to the website, the enterprise offering its services calls itself “Kagoshima Delivery Health Premium” and Complainant states that it cannot make out any other use of the acronym k-premium by this enterprise other than the website resolving under <k-premium.com>.

5.5 In relation to element (iii) of Paragraph 4(a) of the Policy, Complainant contends that firstly Respondent has engaged in a pattern of conduct to prevent Complainant from reflecting its mark in a corresponding domain name. The nature of Respondent’s business would reasonably speak for registration and use of the respective Japanese cc-TLD k-premium, at least in addition to the use of <k-premium.com>. However, all domain names k-premium under the .jp-cc-TLD were unregistered on December 14, 2007. This, on top of the fact that the Respondent’s name is not k-premium, evidences that Respondent is deliberately exploiting the goodwill of Complainant’s trademark. Secondly, Respondent intentionally attracts, or commercial gain, Internet users to the website hosted under “www.k-premium.com” by creating likelihood of confusion with Complainant’s mark. Thirdly, the use of domain names incorporating the trademark of another company for pornographic or escort service websites is, per se, evidence of bad faith. Finally, should it turn out that “NetgrooveDomainService” is merely a proxy holder for the true Respondent, the use of proxy service can indicate bad faith.

B. Respondent

5.6 A formal Response to Complainant’s contentions was not submitted.

5.7 Mr. Shiosaki Masashi, the administrative and technical contact of the disputed domain name, in the e-mail to Complainant dated January 29, 2008, states that “NetgrooveDomain Service” is a domain reseller which has a contract with a domain registrar “Tucows” (Canada). It has nothing to do with the domain

<k-premium.com> which is actually registered by “Shiosaki Masashi”.

5.8 Mr. Shiosaki Masashi made the following assertions:

- “k-premium.com” is composed of simple words, “k”, “premium” and “-(hyphen)” in order to combine the words “k” and “premium”. “k” is an initial of “Kagoshima” which is a place name. “premium” is a general word. “K PREMIUM”: which is registered by Kaufland in Europe is just a word combination. Such confusingly similar situation easily occurs without any intention.

- The Complainant insists that its trademark is registered in German and other countries of the European Union, but not in Japan and Canada.

- We have no legitimate interests in Japan. However a right for using it is the same condition.

5.9 Mr. Shiosaki Masashi offered to give up the domain name but requested six months transition period and US 8,000 dollars for a transition cost.

6. Discussion and Findings

Procedural Matters

7.1 The Panel notes that there has been some conflicting information concerning the identity of the registrant of the disputed domain name. The registrar Tucows confirmed that the registrant has been correctly identified in the Complaint. In addition, the Whois record indicates the registrant of the disputed domain name as “NetgrooveDomainService”. On the other hand, the named Respondent in the Complaint “NetgrooveDomainService” has stated that it is not the registrant of the disputed domain name as discussed in the above paragraph 3.3, it is in fact acting as a reseller for Tucows, and the registrant of the disputed domain name is in fact “Shiosaki Masashi.” This fact was mentioned by Mr. Shiosaki Masashi’s e-mail dated January 29, 2008.

7.2 Respondent is defined in the Rules, to be the holder of a domain-name registration against which a complaint is initiated. As the Panel can only make its determination on the available facts, and the confirmation of the registrar and the Whois record both point to “NetgrooveDomainService” as the registrant. Nevertheless, taking into account the statement of Mr. Tokuda of “NetgrooveDomainService” and Mr. Shiosaki Masashi of January 11 and January 29, 2008, respectively, and the fact that Mr. Shiosaki Masashi is listed in the Whois record as the administrative and technical contact of the disputed domain name, the Panel will consider “NetgrooveDomainService” and Mr. Shiosaki Masashi in the proceeding as Respondents (herein after referred to as “Respondent”)

7.3 The Panel further finds that proper notice to Respondent has been achieved as both the named Respondent “NetgrooveDomainService” and Mr. Shiosaki Masashi have been notified of the Complaint in accordance with Paragraph 2 of the Rules and the Respondent was given the opportunities to present its Response.

7.4 The Panel notes that the e-mail correspondence by Mr. Shiosaki Masashi dated January 29, 2008 did not comply with paragraph 5(b) of the Rules. Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any principles of that that it deems applicable. In the case of default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, the Center notified Respondent that it will on January 30, 2008 treat the e-mail correspondence as its Response to the Complaint unless otherwise advised by Respondent and no further advise was given by Respondent. The Panel cannot find that such exceptional circumstances are present as mentioned in Paragraph 14 that would excuse the lack of compliance with the requirements by the Rules. However, as admitting the submissions in Mr. Shiosaki Mashi’s e-mail of January 29, 2008 would not in fact prejudice Complainant or affect the outcome of this case, the Panel has decided to consider Mr. Shiosaki Masashi’s e-mail of January 29, 2008 as Respondent’s submissions.

7.5 The Panel further notes that the Center received a further submission by Complainant on February 12, 2008. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file additional submission without leave of the Panel.

7.6 The question whether Rule 12 shall be constructed as precluding acceptance of additional unsolicited submission has been considered in a number of panel decisions. The Panel in J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 found that unrequested submissions should not be considered.

7.7 The Panel in Viz Communications, Inc. v. Redsun dba www,abuneruca,cin and David Penava, WIPO Case No. D2000-0905 stated that:

“this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel’s general powers conferred by Rule 10, particularly having regard to the panel’s duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case…”

7.8 The Panel follows the reasoning of the Panel in Viz Communications and finds that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions.

7.9 In this case, after considering the imbalance between the Parties in terms of language and legal knowledge, the Panel has decided to decline Complainant’s supplemental submissions.

Substantive Matters

7.10 Pursuant to paragraph 4(a), the Complaint must prove that each of the following three elements are present if the Complaint is to prevail:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Respondent has registered the domain name <k-premium.com>. Apart from the insertion of the hyphen connecting “k” and “premium”, this name is identical to Complainant’s trademark K PREMIUM. The Panel is therefore satisfied that the domain name at issue is confusingly similar to the mark and Complainant has proven paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has established a prime facia case that Respondent lacks rights or legitimate interests in the domain name. Other than his submission dated January 29, 2008, in which Respondent indicated:

“We have no legitimate interests in Japan. However a right for using it is the same condition”, Respondent has not specifically rebutted Complainant’s contentions.

The Panel accepts that Respondent is apparently known as “NetgrooveDomainService” and/or “Kagoshima Delivery Health Premium”. There is no indication in the file or in Mr. Shiosaki Masashi’s statement that Respondent is known under the disputed domain name.

The Panel is therefore of the opinion that Complainant has established on the balance of probabilities that Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

It has been clearly pointed out in National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387 that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”.

In addition, it is commonly understood, under WIPO case law, that whatever the motivation of Respondent, the diversion of the domain name to a pornographic site using a third party’s trademark is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith. See Caledonia Motor Group Limited v. Amizo, WIPO Case No. D2001-0860) and Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568. Respondent’s offer to give up the domain name for US $8,000 does not assist Respondent here.

In accordance with previous panel decisions, the Panel finds that Complainant has established on the balance of probabilities bad faith as required by paragraph 4(a)(iii).

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 <k-premium.com> be transferred to Complainant.

Haig Oghigian
Sole Panelist

Dated: March 11, 2008