Kiko s.r.l. of Bergamo, Italy just lost its bid to grab the domain name kiko.com in a UDRP
The domain holders bought the domain for in 2010 for $65,578.50 to use for a social networking site.
Here are the relevant facts and finding by the three member panel
The Complainant’s business is the manufacture of cosmetic products.
The Complainant is the owner of trademark registrations in Classes 3 and 25 for the word trademark KIKO in a number of countries, including in the United States of America (filed in August 1989, and registered in May 1994) and in Italy (filed in November 1997, and registered in March 2000).
The Complainant uses the KIKO trademark to publicly promote its cosmetic products.
The Respondent is an information technology company established in China in 2003 (with administrative headquarters in the United States). It is the owner of a trademark registration in China in Class 42 for an image trademark that includes the word “kiko” (filed July 2010, and announced July 2011).
The disputed domain name was first registered on an unspecified date that appears to have been on or before October 13, 1999.
Between October 1999 and August 2010, the disputed domain name had been used in relation to various websites, the most recent of which was a calendar website run by a party that appears to be unrelated to the Respondent.
The Respondent purchased the disputed domain name in May 2010 for USD 65,578.50.
From August 2010 to an unspecified date (which appears to be earlier than October 12, 2013), the Respondent used the disputed domain name as the URL for a social networking website. T
From the date of cessation of the social networking website until January 1, 2014, the disputed domain name resolved to a parking page which contained automatically generated links.
Since January 1, 2014, the disputed domain name has resolved to a “visual navigation website” operated by the Respondent.
The Respondent purchased the disputed domain name from the operators of an established, although ultimately commercially unsuccessful, calendar website for a substantial sum (in excess of USD 65,000) in May 2010.
Soon thereafter, it filed an application in China to register an image trademark incorporating the word “kiko”, and commenced using the disputed domain name for a website operating under the name “kiko”, in a field of business (social networking) that is unrelated to the field of business in which the Complainant uses it registered trademark KIKO (namely, cosmetics). The evidence in the case record filed by the Respondent is sufficient to satisfy the Panel, on the balance of probabilities, that the Respondent purchased the disputed domain name in good faith, initially used the disputed domain name in connection with a bona fide offering of one type of service (social networking), and now uses the disputed domain name in connection with what appears to be a bona fide offering of another type of service (visual navigation).
Accordingly, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
On May 19, 2010, soon after the Respondent had reached agreement with the then-owners to purchase the disputed domain name and just prior to completion of the transfer to it of the disputed domain name, the Respondent offered to sell the disputed domain name for the sum of $300,000, which is substantially in excess of its out-of-pocket expenses in acquiring the disputed domain name.
The offer was made in response to an unsolicited approach to the Respondent by an entity claiming to be “an Italian software house” that had “created a new software for a client, a coffee roasting company”, and stating that it “could be interested in” the disputed domain name “to present a draft of new website on that domain name”, and informing that it “would like to know if you are willing to transfer it to us”.
The Respondent’s terse response consisted solely of the text “3000,000 USD”.
The evidence in the case record filed by the Respondent is sufficient to satisfy the Panel, on the balance of probabilities, that the Respondent did not purchase the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant, or to prevent the Complainant from reflecting its registered trademark in a corresponding domain name, but rather purchased the disputed domain name for the purpose of using it in connection with a bona fide offering of services.
Furthermore, the Panel is satisfied, on the balance of probabilities, that the Respondent has not used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating confusion with the Complainant’s trademark, but rather has used the disputed domain name in connection with a bona fide offering of services that does not seek to take advantage of the Complainant’s reputation in its registered trademark.
The Panel considers that the Respondent’s temporary use of the disputed domain name to resolve to a parking page containing automatically-generated links to other websites does not constitute a bad faith use of the disputed domain name because, according to the evidence of that use provided by the Complainant, none of the links appeared to be to websites related to the Complainant’s field of business.
Accordingly, the Panel finds that the disputed domain name was neither registered nor is being used in bad faith.””