Freedom Campervans Limited t/a Kiravans v. Reza Khalili
Claim Number: FA1708001742567
Complainant is Freedom Campervans Limited t/a Kiravans (“Complainant”), represented by James Love of James Love Legal LTD, United Kingdom. Respondent is Reza Khalili (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kiravans.com>, registered with 1&1 Internet SE.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2017; the Forum received payment on August 1, 2017.
On August 2, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <kiravans.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kiravans.com. Also on August 3, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 23, 2017.
On August 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
Complainant owns the following UK registered trade mark which is registered for and used on the listed goods and services:
Trade mark: KIRAVANS
UK registered number: 2635078
Date of filing: 17 September 2012
List of goods: Campervan parts, campervan seats, fitted furniture being parts and fittings for campervan conversions. (Class 12)
List of Services: Online retail services connected with the sale of parts and fittings for motor campervan conversion, including seats and adapted furniture. Link to official record: UKIPO record KIRAVANS
Complainant has also built up a considerable reputation and goodwill in the name KIRAVANS since first use in 2008 in respect of the above listed goods and services, giving it the right to protect this goodwill.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] Complainant owns the UK registered trade mark for KIRAVANS. It was registered with the UK Intellectual Property Office.
The domain name is KIRAVANS.COM
The domain name is identical to the registered trade mark right and confusion is inevitable.
UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
[b.] Respondent (domain-name holder) has no rights or legitimate interests in respect of the domain name that is the subject of the complaint.
UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Complainant is a designer, manufacturer and supplier of a parts, fittings and accessories for campervans and campervan conversions. It was set up by two brothers Robert and Mike McCandless who have been sole directors of the company since 2006. Complainant started using the name KIRAVANS in 2008. The name is derived from the first names of Robert’s and Mike’s wives being Kirsty and Rachel, respectively. The first two letters of each of their names, KI and RA, were taken and added to VANS to form KIRAVANS. The name has no meaning, and there would be no reason for anybody else to use the name except to benefit from the goodwill built up in the name by Complainant.
Respondent is and never has been associated with Complainant, does not sell Complainant’s products and has never been given authorization by Complainant to use the name KIRAVANS in any respect. Respondent has never used the domain name in connection with a bona fide offering of goods or services. Respondent’s business has never been known by the name KIRAVANS.
Respondent runs a company called Van-X-Van Ltd – a report from Companies House setting out the details of this company is attached. Respondent is listed as a director. Van-X-Van operates the following website: https://van-x.co.uk. The website describes the business as follows: “We specialize in manufacturing and selling high quality van and truck accessories to the public, conversion companies and commercial vehicle dealers.” In other words, Van-X-Van Ltd is a competitor to Complainant, as both sell van accessories.
As far as Complainant is aware, Respondent does not use the name KIRAVANS on this website. However, another domain owned by Respondent, kiravan.co.uk, points to the Van-X-Van Ltd website.
[c.] The domain name was registered and is being used in bad faith.
UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent is the owner of many domain names. A reverse whois search performed on Respondent on 31 July 2017, using the website www.viewdns.info. This includes kiravan.co.uk which directs to https://van-x.co.uk, and represents another domain illegitimately using Complainant’s registered trade mark.
Many of the names are not recognized by Complainant. However, all of the names relate to competitors of Complainant and/or Respondent and as such Complainant believes that Respondent has no legitimate interest in these names and is using them in bad faith. In each case, the name of the competitor and the competitor’s legitimate website are detailed in the Complaint.
All the domains owned by Respondent direct to the same Van-X branded website (except for tidytransporters.com). In each case, Complainant is not aware of any affiliation between Respondent and these competitors, and Complainant does not believe Van-X sells goods made by these competitors.
I also recognize the domain owned by Respondent www.baimex.co.uk as being the name of a German curtain brand, Baimex, used in camper vans and with a genuine site at: https://baimex.de.
The above indicates a pattern of conduct by Respondent of registering domain names (including kiravans.com) in order to prevent the owners of names in the same field from reflecting their names in the corresponding domain names. Also, Respondent has intentionally attempted to attract internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion.
Complainant has approached Respondent in respect of the kiravans.com name on two previous occasions. The first was in 2013 when Complainant asked if Respondent was interested in selling the domain and offered £100 for the domain. Complainant alerted Respondent to the fact the name is a registered trade mark and the fact Respondent does not have a legitimate claim to the name. The respondent responded cryptically “You're being very generous with the offer of £100 but I'm disappointed. Sadly I'm afraid the domain has been sold”.
More recently, Complainant’s authorized representative, law firm James Love Legal, wrote to Respondent. Respondent responded by telephoning James Love of James Love Legal on 13 July 2017. During that telephone call Respondent stated that the only way he would transfer the domain name would be for a payment of £10,000 (ten thousand pounds). He said this was his lowest offer.
B. Respondent
To whom it may concern,
Dear Sir/Madam,
Please see below my defense for the domain dispute.
1 I purchased the domain through 1&1 domain website in 2012. I like to purchase domain as a kind of hobby and I did not know the company when I did and I did not know that it had been trademarked.
2 This is a free world and anyone can purchase any available domain in the market. For example the complainant did not need the kiravans.com domain which is more for the American market, which I assume is why they didn’t purchase it in the first place at the same time as purchasing kiravans.co.uk.
3 it is alleged that I have register and am using the domain in bad faith. This is incorrect.
4 The Complainant has not been able to demonstrate any use of the domain by myself that could be plausibly described as being “bad faith”. This is because the domain has not been used.
5 The Complainant attempts to imply bad faith by referencing a number of other domains I own. These references are irrelevant to the dispute at hand. The dispute does not concern any other domain other than www.kiravans.com and any reference to any other domain should be disregarded.
6 For the Complainant to demonstrate bad faith in relation to the use of www.kiravans.com the Complainant would have to show that the domain is being used and that the use of the domain is being done in a manner suggestive of bad faith. They have not done so.
7 The Complainant cannot show that I am using the domain in question to divert to another website. That is because I am not. The Complainant cannot show that the website is being used to create confusion between the Complainant’s business and mine. That is because it is not.
8 Simply owning a domain name is not evidence of bad faith.
9 It is true that the Complainant has offered to buy the domain from me however we have not been able to agree a price. It is disappointing that the Complainant has resorted to dispute resolution instead of continuing with commercial negotiations.
10 The Complainant has failed to demonstrate bad faith in relation to www.kiravans.com and for this reason its claim must fail.
Kind Regards,
Reza Khalili
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered the KIRAVANS mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,635,078, filed Sept. 17, 2012, registered Jan. 11, 2013), establishing its rights. Registration with the UKIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i).”). Further, the relevant date of rights is the filing date of a registered mark once it is registered. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Complainant has rights in the mark dating back to the mark’s filing date, September 17, 2012.
Complainant claims Respondent’s <kiravans.com> is identical to the KIRAVANS mark because it merely appends the “.com” gTLD to the mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Respondent’s domain name completely incorporates Complainant’s mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent’s <kiravans.com> domain name is identical to Complainant’s KIRAVANS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent does not personally engage in any business activity. Therefore, Respondent could not have acquired any rights to the disputed domain name.
Complainant claims Respondent has no rights or legitimate interests in <kiravans.com>. Respondent is not commonly known by <kiravans.com>. Respondent runs a company called “Van-X-Van Ltd.” Respondent is not associated with Complainant (nor is Respondent’s company associated with Complainant). Respondent does not sell Complainant’s products (nor does Respondent’s company sell Complainant’s products). Respondent has no authorization from Complainant to use the KIRAVANS mark (nor does Respondent’s company have any authorization to use Complainant’s mark). Respondent does not claim to be known by the <kiravans.com> domain name (much less commonly known by the domain name). Respondent’s company is also not commonly known by Complainant’s mark. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Complainant has succeeded under this prong because Respondent produced no evidence rebutting Complainant’s prima facie case.
Complainant claims Respondent’s company sells van accessories—which directly competes with Complainant. Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use under ¶4(c)(i) or Policy ¶4(c)(iii). Using a domain name to compete with the owner of a confusingly similar trademark does not create any rights under the Policy. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Conversely, failing to use a domain name (which Respondent claims to be doing here, although the domain name apparently forwards to Respondent’s web site) is sufficient evidence Respondent has no rights to the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Complainant has met its prima facie case under Policy ¶4(a)(ii) and Respondent has failed to rebut it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used <kiravans.com> in bad faith. Respondent offered the domain name to Complainant for £10,000, demonstrating bad faith under Policy ¶4(b)(i), even though this occurred after Complainant approached Respondent and offered £100. Even where a complainant initiates settlement discussions, where a respondent counters with an exorbitant counteroffer, bad faith may be found. See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant). Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(i).
Complainant did a reverse WHOIS search and discovered Respondent owns a portfolio of domain names that infringe on the intellectual property rights of third parties in Respondent’s field of business. While Respondent claims he has a “hobby” of collecting domain names of trademark owners that just happen to compete with a company Respondent owns, this Panel is not that gullible. Complainant filed its trademark application with the UKIPO on September 17, 2012. A mere five days later, Respondent registered this domain name (which just happens to forward to Respondent’s company’s web site). Coincidence? This Panel thinks not. Respondent monitors applications to the UKIPO and registers domain names which incorporate competitor’s marks….to the tune of approximately 105 domains. This is clearly a business pattern and practice—demonstrating a bad faith pattern of domain name registrations and uses under the penumbra of Policy ¶4(a)(iii). See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶4(b)(ii)).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <kiravans.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, August 28, 2017
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