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1. The Parties
The Complainant in the administrative proceeding is Kis, having its
head office at 2110 Avenue du Général de Gaulle, 38130 Echirolles,
France, represented by Benjamin Dubuis and Isabelle Meunier-Cœur, Cabinet
Laurent & Charras, with offices located at 20 Rue Louis Chirpaz, B.P.
32, 69131 Ecully Cedex, France, hereinafter the "Complainant".
Respondent is "Anything.com" Ltd., P.O. Box 309, Ugland House, George
Town, Grand Cayman Islands, represented by Ari Goldberger, Esq., 2318 Berwyn
Court, Voorhees, NJ 08043, U.S.A., hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "kis.com", registered on May 8, 2000, hereinafter
referred to as the "Domain Name". The registrar is Network Solutions.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the
Complainant’s complaint on July 19, 2000, (electronic version) and July
11, 2000, (hard copy). The Center verified that the complaint satisfies
the formal requirements of the ICANN Uniform Domain Name Dispute Resolution
Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution
Policy (the Rules), and the Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the Supplemental Rules) on July 21, 2000. Complainant
made the required payment to the Center. The formal date of the commencement
of this administrative proceeding is July 25, 2000.
The Center transmitted via email to Network Solutions a request for
registrar verification in connection with this case and Network Solutions
replied on July 21, 2000, confirming in its verification response that
the registrant is "Anything.com" and that the administrative, technical,
zone and billing contact is Administration, Domain.
The Center transmitted on July 25, 2000, to the Respondent and to Network
Solutions, Notification of Complaint and Commencement of the Administrative
Proceeding, via post/courier and e-mail, in accordance with the following
contact details:
Anything.com
P.O. Box 309, Ugland House
George Town, Grand Cayman
KY
Domain Administration
1101 North Kings Highway, Suite 403
Cherry Hill, NJ 08034
The Center advised that the Response was due by August 13, 2000, and
a response was submitted on this date. Accordingly, the Center issued an
Acknowledgement of Receipt of Response on August 17, 2000.
In view of the Respondent’s request for a three-member panel, the Center
invited Mr. Geert Glas to serve as the Presiding Panelist and Mr. Olivier
Iteanu and Mr. David Sorkin to serve as Panelists.
Having received the Statement of Acceptance and Declaration of Impartiality
and Independence of all the three members of the Panel, the Center transmitted
to the parties a Notification of Appointment of Administrative Panel and
Projected Decision Date, in which Mr. Geert Glas was formally appointed
as the Presiding Panelist and Mr. Olivier Iteanu and Mr. David Sorkin were
formally appointed as Panelists. The Panel finds that the Administrative
Panel was properly constituted and appointed in accordance with the Rules
and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint,
the response, the evidence presented, the Policy, the Rules and the Supplemental
Rules.
4. Factual Background
Complainant’s main business is based on the manufacturing of mini labs
for pictures and film processing.
Complainant is the owner of numerous trademark registrations in various
countries for the term "KIS". Copies of those trademark registrations are
attached to the complaint. These are, among others:
· the French trademark Registration KIS, number 1 247
005 filed in 1983, and renewed in 1991 under number 1 711 690;
· the French trademark application KIS, number 99 796
217 filed on June 3, 1999;
· the International trademark KIS, number 781 720 filed
on November 7, 1983;
· the International trademark KIS, number 724 544 registered
on December 2, 1999;
· the US trademark KIS, number 1 255 193, registered on
October 25, 1985;
· the US trademark KIS, number 1 359 979, registered on
September 17, 1985;
· the US trademark application KIS filed under the French
priority registration, on December 3, 1999, under n° 75/863,790; and
· the British trademark KIS, number 1 558 874, registered
on January 12, 1994.
There is no relation between Respondent and Complainant, and Respondent
is not a licensee of Complainant, nor has Respondent otherwise obtained
an authorization to use Complainant’s trademarks.
The Domain Name resolves to a web page entitled "Korean Information
Site". This portal like page contains various links to other websites,
which contain information about Korea, such as Korean history, Korean news,
Korean products, etc.
5. Parties’ Contentions
a. Complainant
Complainant contends that Respondent has registered the Domain Name
which is identical to Complainant’s "KIS" trademark, that Respondent has
no rights or legitimate interests in respect of the Domain Name and that
by attempting the registration of the Domain Name, Respondent is creating
a likelihood of confusion with the Complainant’s trademarks since Internet
users typing the Domain Name in the address bar of their browser will find
no website relating to Complainant and may become discouraged and may abandon
searching for the Complainant’s websites to its detriment.
Consequently, Complainant requires the transfer of the Domain Name
registration.
b. Respondent
According to Respondent, he has developed and launched its Korean Information
Site at the Domain Name, the letters of the URL corresponding to the name
of the website. Respondent’s use of the Domain Name is not in connection
with the word KIS, but, rather, in connection with the 3-letter combination
K, I and S, with each letter pronounced separately as K-I-S, similar to
the pronunciation of A-O-L or I-B-M. Moreover, short letter-combination
marks are entitled to limited protection only.
Respondent alleges that it has a legitimate interest in the Domain
Name, which is used as the address for its Korean Information Site, which
contains information on Korean history, tourism, events and products.
Finally, Respondent contends that it did not register and does not
use the Domain Name in bad faith.
Consequently, Respondent requires that the complaint be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as
to the principles the Administrative Panel is to use in determining the
dispute: "A Panel shall decide a complaint on the basis of the statements
and documents submitted in accordance with the Policy, these Rules and
any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove
each of the following:
(1) that the Domain Name registered by the Respondent is identical
or confusingly similar to the trademark in which the Complainant has rights;
and,
(2) that the Respondent has no right or legitimate interests in respect
of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad
faith.
a. Identity
The Domain Name is "kis.com".
"KIS" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain
Name is identical to the trademark "KIS" of Complainant, since it does
not make a difference whether the word "kis" is used as such or as the
combination of the letters "k", "i" and "s".
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use
any of its trademarks or to apply for any domain name incorporating any
of those marks.
Respondent indicates that he chose the Domain Name because KIS is the
abbreviation of Korean Information Site, which perfectly describes the
nature and objective of his site.
The Domain Name does indeed resolve to a page entitled "Korean Information
Site" featuring hyperlinks to various websites, which contain information
about Korea and Asia. The Panel finds this activity to qualify as a bona
fide activity.
One panelist would hold that Respondent may have a legitimate interest
in the Domain Name even if the Korean Information Site is not regarded
as a bona fide commercial offering or a legitimate noncommercial use of
the name.
The Domain Name at issue here is a three-letter second-level domain
within the popular ".com" top-level domain. All or nearly all of the three-letter
names have long been taken; respondent itself holds a number of other short
domain names (as reflected in Network Solutions' Whois database), including
"an.com", "hw.com", "vz.com", "xv.com", "yz.com", "zw.com, "aex.com", "fii.com",
"ldn.com", "lna.com", "mhi.com", "nnc.com", "otl.com", "tbj.com", "tca.com",
"ukt.com", "vaz.com", "vdj.com", "wla.com", and probably many more. Respondent
appears to have selected the Domain Name "kis.com" because of its length
(if not because it represents an acronym for the Korean Information Site),
rather than because it corresponds to Complainant's trademark -- indeed,
it seems unlikely that Respondent was even aware of Complainant's trademark
when it selected the domain name.
Under appropriate circumstances the offering for sale of a domain name
can itself constitute a bona fide offering of goods or services for purposes
of paragraph 4(c)(i) of the Policy. Allocation Network GmbH v. Gregory,
ICANN Case No. D2000-0016 (WIPO March 24, 2000); see also VZ VermögensZentrum
AG v. Anything.com, ICANN Case No. D2000-0527 (WIPO August 22, 2000). Respondent's
interest in the Domain Name "kis.com" appears to be unrelated to Complainant's
trademark, and Respondent thus may well have a legitimate interest in the
Domain Name even apart from its Korean Information Site.
Under these circumstances, the Administrative Panel finds that Respondent
has a legitimate interest in the Domain Name.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the
absence/presence of bad faith in this matter:
1. "KIS" is a trademark from Complainant.
2. It is unclear whether Respondent knew of Complainant’s trademark.
3. "KIS" is also the abbreviation for Korean Information Site.
4. The Domain Name resolves to a web page containing links of interest
for any person interested in Korea.
In view of the elements and evidence submitted by the parties, the
Administrative Panel finds that there are no indications that Respondent
knew of Complainant or its trademark when registering the Domain Name.
In addition, it appears that Respondent uses the Domain Name in connection
with a website entitled Korean Information Site (in abbreviation KIS) which
provides information about Korea.
In the Panel’s view, this does not constitute a bad faith use of the
Domain Name.
In conclusion and in view of the above, it is the Panel’s opinion that
Respondent did not register, nor has been using the Domain Name in bad
faith.
7. Decision
In light of the foregoing, the Administrative Panel decides that the
Domain Name "kis.com" registered by Respondent is identical to the trademark
of Complainant, that Respondent seems to have a right or legitimate interest
in respect of the Domain Name and that Respondent did not register and
has not been using the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative
Panel denies the request that the registration of the Domain Name "kis.com"
be transferred to Complainant.
Geert Glas
Presiding Panelist
Olivier Iteanu
Panelist
David Sorkin
Panelist
Date: November 20, 2000
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