Administrative panel decision kiss Nail Products, Inc V. Telecom Tech Corp




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WIPO Arbitration and Mediation Center


ADMINISTRATIVE PANEL DECISION




Kiss Nail Products, Inc. v. Telecom Tech Corp.




Case No. D2009-1308



1. The Parties

The Complainant is Kiss Nail Products, Inc. of Port Washington, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.


The Respondent is Telecom Tech Corp. of Panama City, Panama.


2. The Domain Name and Registrar

The disputed domain name is registered with Name.net LLC.




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2009. On October 5, 2009, the Center transmitted by email to Name.net LLC a request for registrar verification in connection with the disputed domain name. On October 5, 2009, Name.net LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 6, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 amendment to the Complaint, and the proceedings commenced on October 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2009.
The Center appointed Joan Clark as the sole panelist in this matter on November 3, 2009. 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 Complainant is the owner of the trademark KISS registered in the United States and in numerous other countries. The claimed date of first use of many of these registrations is 1989 and the earliest date of registration in the United States is 1993, with subsequent registrations in 1999 and 2002. The marks registered in the United States and elsewhere are for various nail care products, among others.


The Complainant is the owner of the trademark KISS NAIL PRODUCTS registered in Peoples’ Republic of China on October 21, 2001 for manicure sets, and the mark KISS PRODUCTS, INC. registered in Panama on October 21, 1996 for various nail care products.
The disputed domain name, , was registered on April 13, 2008 and is scheduled to expire on April 13, 2010.


5. Parties’ Contentions




A. Complainant

The Complainant relies upon its trademark KISS which it claims to have used since 1989, and upon numerous registrations thereof. Three of these registrations are in the United States, two of which are claimed to be incontestable. They were registered in 1993, 1999 and 2002, all based on first use in 1989. The Complainant also relies on its trademarks KISS NAIL PRODUCTS registered in Peoples’ Republic of China in 2001 and KISS NAIL PRODUCTS, INC. registered in Panama in 2010.


The Complainant also relies on its trade name KISS NAIL PRODUCTS, INC.
The Complainant asserts it is the world’s largest manufacturer and distributor of professional quality nail products including, but not limited to, nail enhancements, nail art, nail files and pedicure and manicure products.
The Complainant asserts that it has been selling its nail and beauty products in the United States under the KISS mark and KISS NAIL PRODUCTS trade name, since at least as early as 1989, and began selling its products outside the United States in 1995.
The Complainant claims that its products sold under the KISS mark and KISS NAIL PRODUCTS trade name are now available in 90 countries throughout the world.

The Complainant asserts that its products bearing the KISS mark and one of its trade names are sold in more than 30,000 retail locations throughout the United States and thousands more locations outside of the United States, and further that it has shipped nearly USD 350,000,000 in products in the United States and nearly USD 100,000,000 in products internationally.


The Complainant also relies upon editorial coverage from national United States publications of its products, which it claims is seen by millions of consumers. Furthermore, the Complainant states that it advertises its products and services under the KISS mark in numerous well-known publications, whose combined circulation exceeds 6,000,000 with readership of over 16,000,000.
In addition to the strong rights it asserts it has in the KISS mark as a result of its 20 years of use and the extensive use and display of the KISS mark on goods, in stores and in advertising, the Complainant declares it also has rights based upon its registrations for the KISS mark throughout the world. Three of the Complainant’s registrations for the KISS mark are in the United States and two of them are claimed to be incontestable under United States law.
The Complainant also relies upon its registration for KISS PRODUCTS, INC. in Panama in 1996 and its registration for KISS NAIL PRODUCTS in China in 2001.
The Complainant emphasizes it has strong rights in the KISS mark and the KISS NAIL PRODUCTS trade name, which are entitled to protection.
The Complainant states that it had been operating under its KISS NAIL PRODUCTS, INC. trade name for many years and had been using its KISS trademark for more than a dozen years when the disputed domain name was registered on April 13, 2008.
The Complainant avers there has never been any relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization for the Respondent to use or register the domain name.
In addition, the Complainant asserts that the domain name is currently being used in connection with a landing page filled with various commercial links primarily to beauty-related products and services, including nail products, and that clicking on any one of the links of the Respondent’s landing page would take users to another landing page filled with sponsored links including links to the Complainant’s competitors.
The Complainant asserts that the Respondent is seeking to attract customers looking for the Complainant’s products and that, through the landing pages and links, the Respondent is generating income based on the recognition and reputation of the Complainant’s mark.
The Complainant avers that, in view of its allegations as indicated above, it has strong rights in the KISS mark and also that it has strong rights in the KISS NAIL PRODUCTS trade name based on long and extensive use.
The Complainant states that the domain name which incorporates in its entirety the Complainant’s registered trademark KISS is identical or confusingly similar to the Complainant’s trademark, and that the addition of the generic term “nail products” to the Complainant’s trademark does not alleviate the confusion and, in fact, exacerbates the likelihood of confusion.
The Complainant maintains that the Respondent has no rights or legitimate interests in the domain name since the Complainant’s adoption and extensive use of the KISS mark predates the registration of the domain name and the burden is on the Respondent to establish its rights or legitimate interests in the domain name, which it cannot do.
The Complainant notes that the registration of the disputed domain name occurred after the Complainant had been using the KISS mark for over a dozen years and after the Complainant had obtained registrations for the KISS mark, both in the United States and in multiple foreign jurisdictions, including in Panama (where the Panel notes the Respondent is located). Also, given that the website associated with the disputed domain name is dedicated to the same or related products to those which the Complainant sells, it is asserted that the Respondent clearly was aware of the Complainant’s products and of the Complainant’s rights in and to the KISS mark and the KISS NAIL PRODUCTS trade name.
The Complainant emphasizes that there is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization by which the Respondent could own or use the disputed domain name.
The Complainant maintains that the use of the domain name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services or a non commercial or fair use.
The Complainant states that, by placing sponsored links on its website, the Respondent generates click-through revenue for its own behalf.
Furthermore, the Complainant asserts that the Respondent’s use of its domain name to connect to a website that provides listings and links to competitors of the Complainant falls squarely within the prohibitions of the Policy and constitutes bad faith registration and use of a domain name.
Finally, the Complainant states that the KISS mark enjoys wide-spread recognition and that it is inconceivable that the Respondent was unaware of the mark when it registered the disputed domain name. Further, the Complainant states the fact that the Respondent is making reference to the Complainant’s very goods on its website shows both the Respondent’s familiarity with the Complainant and the Respondent’s bad faith.
The Complainant concludes by requesting that the disputed domain name be transferred to the Complainant.

B. Respondent

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




6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:


(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the owner of and has rights in the trademark KISS, for which there are three registrations in the United States and numerous registrations in other countries, for nail care and other products. According to the evidence, the trademark KISS has been used by the Complainant since 1989, and the registrations in the United States date from 1992, 1999 and 2002.


The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark KISS. This trademark forms the first and distinguishing part of the domain name, and is followed by a generic description of products, namely, nail products.
The confusion between the trademark KISS and the domain name is exacerbated by the fact that the descriptive words “nail products” are those commonly used by the Complainant as the products for which its trademark is used. Since the Complainant has used and has registered its trademark KISS specifically and primarily in association with nail care products, the domain name is bound to be confused with the Complainant or its products.
In addition, the Complainant is the owner of the trademark KISS NAIL PRODUCTS registered in China in 2001. The Panel finds the disputed domain name is identical to this trademark of the Complainant, it being well-accepted that a suffix such as “.com”, referring to the top level domain, is not to be considered in determining the question as to whether a domain name be identical to a trademark.
The Complainant also relies upon its trade name KISS NAIL PRODUCTS, INC. to which it claims the disputed domain name is identical or confusingly similar. The Policy limits this question, of being identical or confusingly similar, to trademarks and not to trade names. In view of the Panel’s findings above regarding confusion or identity of the disputed domain name with the Complainant’s trade marks, the Panel does not deem it necessary to decide whether the Complainant’s trade name has been used as a trademark to which the disputed domain name could be considered as identical or confusingly similar.
The first element required for the success of the Complaint has been established.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in the domain name, that it was never known by the domain name, that there is no connection and has been no connection between the Complainant and the Respondent permitting the latter the use of the Complainant’s trademark in its domain name, and further stating that the Respondent has not made a bona fide use of the domain name.


The Complainant has stated that the Respondent’s use of the Complainant’s mark is an attempt to misdirect Internet users familiar with the Complainant’s mark for commercial gain, including pay-per-click advertising revenues, and that use of the domain name to refer to other sites to collect referral fees cannot be considered as a bona fide offering of goods or services or a noncommercial or fair use.
The Complainant has established a prima facie basis for concluding that the Respondent has no rights or legitimate interests in the domain name, and the burden for establishing the Respondent’s rights or legitimate interests has been shifted to the latter.
The Respondent has chosen not to file a Response and there is no evidence in the record to rebut the contentions of the Complainant.
As there is no evidence that the Respondent has any rights or legitimate interests in the domain name, the Panel accepts the Complainant’s assertions that the Respondent has no such rights or legitimate interests. The second element for the success of the Complaint has been established.

C. Registered and Used in Bad Faith

According to the evidence, the trademark KISS has been used by the Complainant in association with nail products since 1989, and the registrations for the trademark KISS date well before the Respondent’s adoption of its disputed domain name on April 13, 2008. Moreover there is even a registration in the Respondent’s country, Panama, in 1996 for the trade mark KISS PRODUCTS, INC.


There is no obvious or natural association between the trade mark KISS and the term “nail products”, except for the association that must necessarily have been created in the public consciousness by the Complainant’s extensive use over many years.
The Respondent has elected not to file a Response, and no reason has been put forward as to why the Respondent chose the word “kiss” as the first, primary and significant part of its domain name.
The combination in the disputed domain name of the Complainant’s registered and widely used trademark KISS, together with the very products with which the Complainant’s trademark is prominently associated, cannot in the Panel’s view be a mere coincidence.
The Panel is forced to the conclusion that the Respondent was aware of the Complainant’s trademark KISS used in association with nail care products and adopted the domain name in dispute as an obvious reference to the Complainant’s trade mark and products in order to confuse Internet users, familiar with the Complainant or its products, by attracting them to the Respondent’s site, thinking it to be the site of the Complainant. The Respondent’s web site has an initial landing page listing inter alia nail products with links to another landing page sponsoring other products and sources including competitors of the Complainant. The Complainant maintains and the Panel, in the absence of evidence to the contrary, concludes that in all probability this was a scheme to generate income for the Respondent on a pay-per-click basis.
The Panel finds that the disputed domain name was registered and is being used in bad faith.


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, , be transferred to the Complainant.



___________________________

Joan Clark



Sole Panelist
Dated: November 20, 2009

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