WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kosmos SAS v. Domain Hostmaster - Customer ID: 48322848242624 / Domain Admin, Ashantiplc Limited

Case No. D2015-2198

1. The Parties

The Complainant is Kosmos SAS of Nantes, France, represented by Cabinet d’Avocats Degez-Kerjean, France.

The Respondent is Domain Hostmaster - Customer ID: 48322848242624 of Queensland, Australia / Domain Admin, Ashantiplc Limited of Hong Kong, China, represented by John Berryhill, Ph.d. esq.

2. The Domain Name and Registrar

The Disputed Domain Name <kosmos.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2015.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 15, 2015. On January 5, 2016, the Respondent requested an extension of the Response due date. In accordance with paragraph 5(b) of the Rules, the Response due date was extended to January 8, 2016. The Response was filed with the Center on January 8, 2016.

The Center appointed Assen Alexiev, Nathalie Dreyfus and Tony Willoughby as panelists in this matter on February 2, 2016. The Panel finds that it was properly constituted. Each member of 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.

On February 16, 2016, at the Panel’s request the Center extended the due date for the decision to February 22, 2016.

4. Factual Background

The Complainant was incorporated as a company on April 3, 1998. Its principal place of business is in the city of Nantes, France, but it carries on its activities mainly through the Internet. Its business includes the development of web solutions for education institutions, encompassing virtual learning environments, digital school environments, development of websites and software, and related assistance and services.

The Complainant is the holder of the following trademark registrations (the “KOSMOS trademark”):

- The combined trademark KOSMOS with registration No.3091227, registered in France on March 19, 2001 for services in International Classes 35, 41 and 42;

- The combined trademark KOSMOS with registration No.3856770, registered in France on September 5, 2011 for goods and services in International Classes 09, 35, 38, 41 and 42; and

- The word trademark KOSMOS with registration No.3856771, registered in France on September 5, 2011 for goods and services in International Classes 09, 35, 38, 41 and 42.

The Complainant is the registrant of the domain name <kosmos.fr>, registered on October 12, 1998.

The Respondent was incorporated as a company on November 18, 2002 in Hong Kong, China.

The Disputed Domain Name was registered on April 4, 1998.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is identical to the KOSMOS trademark, as they consist of the same word element.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant points out that the Respondent was incorporated in 2002 and is not known by the name “Kosmos”, while the KOSMOS trademark was registered prior to 2002.

The Complainant further submits that the Disputed Domain Name is being used for generating revenue from pay-per-click links, and that the Respondent has never actively used the Disputed Domain Name. In 2006, it was used as a parking website showing the Eiffel Tower, thus referring to France, country of the Complainant, allegedly to mislead and confuse consumers.

According to the Complainant, “Kosmos” is not a common dictionary word, and the use of the Disputed Domain Name in connection with pay-per-click links is not related to a generic meaning of the word “kosmos” that may confer rights or legitimate interests in the Disputed Domain Name. Rather, the Respondent unfairly uses the Disputed Domain Name exploiting the value of the KOSMOS trademark, and misleadingly diverts consumers.

In the Complainant’s submission, the Disputed Domain Name was registered and is being used in bad faith. In February and March 1998, the shareholders of the Complainant were preparing to establish a company. They checked whether the name “Kosmos” was available to be used as company name, trademark and domain name for their company project, and looked at various registers to make these searches. The name “Kosmos” appeared to be free from third party rights and available, so the shareholders decided to name their company Kosmos. On April 3, 1998, the Complainant was incorporated. The following day, someone registered the Disputed Domain Name. In the Complainant’s view, this was not a coincidence. Rather, it is more likely that someone took notice of the searches made by the Complainant’s shareholders and registered the Disputed Domain Name in bad faith to itself for profit.

According to the Complainant, the Disputed Domain Name is being used in bad faith, because it is used in connection with pay-per-click links, because the Respondent has concealed its identity, and because the status of the Disputed Domain Name is “ClientTransferProhibited”.

The Complainant also points out that the Respondent does not actively use the Disputed Domain Name and submits that the only goal of the Respondent is to sell the Disputed Domain Name at a high price. When the Complainant decided to develop its activity in North America in 2014, it tried to register the Disputed Domain Name, but it was not available for registration. When the Complainant opened the website at the Disputed Domain Name, it contained a message that the Disputed Domain Name was for sale, and a form for the submission of an offer for its purchase. On October 2, 2014, the Complainant filed this form with the minimum possible price offer of USD 10,000. On the same day, the Complainant received a response from the domain name broker acting for the Respondent. The response stated that only offers in “the high 6 figure price range” will be considered. The Complainant did not submit a higher offer, although the Respondent’s agent sent two follow up messages to check whether the Complainant was still interested in purchasing the Disputed Domain Name. According to the Complainant, the minimum price requested by the Respondent’s agents showed that the Disputed Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring its registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.

B. Respondent

The Respondent disputes that there is no identity or confusing similarity between the Disputed Domain Name and the KOSMOS trademark, and submits that the Complainant has not shown any use of the KOSMOS trademark with registration No.3091227. According to the Respondent, this trademark was abandoned by the Complainant on the basis of non-use. Before the Complainant allegedly abandoned the use of the KOSMOS trademark with registration No.3091227, the Complainant’s rights in this trademark extended to the use of “KOSMOS” in connection with particular multimedia production services in France. These rights did not affect the ability of any other party to use the word “kosmos” for any other purpose. The Respondent states that the Complainant provides no arguments why any Internet user typing the Disputed Domain Name would be looking for the Complainant rather than looking for any of the many other things for which the word “kosmos” is used.

The Respondent points out that the word “kosmos” is a dictionary word meaning “cosmos” in many languages. This word is not exclusively associated with the Complainant in France or elsewhere, apart from in association with the particular services of the Complainant. The Complainant has provided no evidence of the reputation of the Complainant at the time the Disputed Domain Name was registered, and no explanation why the word “kosmos” should be regarded as exclusively or strongly associated with the Complainant in France, given the large number of entities there that use the same word in association with various goods and services, including multimedia goods and services. The Respondent submits that there are other French companies and trademark registrations that include the word “kosmos”, which have an earlier incorporation date or priority date in comparison to the KOSMOS trademark.

The Respondent contends that it has registered and used the Disputed Domain Name for many years for purposes having nothing to do with the Complainant, and not to compete with the Complainant or to suggest a false association with the Complainant. It disputes that the use of the Disputed Domain Name for generating revenue from pay-per-click links on a parking website showing the Eiffel Tower is based on the value of the KOSMOS trademark or could mislead or confuse consumers. The Respondent maintains that it has not used the Disputed Domain Name in relation to multimedia production services, and has not violated the trademark rights of the Complainant by registering the Disputed Domain Name and using it as a general purpose search portal. According to the Respondent, it has legitimate interest in selling the Disputed Domain Name to any party who would like to have and use it for any purpose unrelated to the Complainant.

The Respondent denies that it has registered and used the Disputed Domain Name in bad faith. It submits that the Complainant has provided no evidence of the Complainant’s reputation at the time the Disputed Domain Name was registered, and has provided no reason why the Respondent knew or should have known of the Complainant at that time. The Respondent denies any knowledge of the Complainant prior to the Complainant’s unsolicited contact with the Respondent’s broker in 2014, which took place more than a decade after the Respondent had registered the Disputed Domain Name. The Complainant’s offer to buy the Disputed Domain Name was made with no mention of any legal rights. After its offer was refused, the Complainant was comfortable not to have acquired the Disputed Domain Name, stating on October 9, 2014: “We still maintain the offer and would be really happy if one day it holds your attention”, without mentioning that the Disputed Domain Name was interfering or competing with the Complainant’s business in any way. The statements of the Complainant make clear that its recent interest in the Disputed Domain Name is related to its future marketing plans in Canada, which did not exist 14 years ago, and could not have been known to the Respondent when it acquired the Disputed Domain Name in 2002.

The Respondent denies the allegation that use of a privacy service demonstrates bad faith. It points out that where the privacy service is used to conceal the identity of a respondent or frustrate attempts to contact it with notice of legal claims, this may be part of a bad faith scheme. In the present case however, the Complainant had no difficulty engaging in correspondence with the Respondent’s broker and communicating to it its offer for purchase of the Disputed Domain Name, and the Respondent was promptly identified by the Registrar in this proceeding.

The Respondent also denies the allegation that using a registrar lock status of “ClientTransferProhibited” in order to prevent unauthorized transfer of a domain name was evidence of bad faith. The Respondent points out in this regard that this lock status is a feature of the Extensible Provisioning Protocol used to manage registry operations in all generic Top-Level Domains (“gTLDs”) and to prevent unauthorized transfers resulting from hijacking or fraud.

Finally, the Respondent submits the Complainant’s presentation of the facts in this proceeding demonstrates that the Complainant is using this proceeding to obtain an advantage in an ordinary commercial negotiation, has presented objectively false statements, and presented frivolous arguments for the purpose of harassing the Respondent.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Disputed Domain Name:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Respondent has registered and is using the Disputed Domain Name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided copies of registration certificates for the three registrations of the KOSMOS trademark. The Respondent alleges that the KOSMOS trademark with registration No.3091227 was abandoned due to non-use, but at the same time admits that its registration certificate is still valid. The Panel notes in this regard that it is not within its powers to decide whether a trademark has been abandoned or not, and in view of the unchallenged validity of the trademark certificate presented by the Complainant accepts that the KOSMOS trademark registration No.3091227 is valid. The Respondent has not challenged the validity of the other two trademark registrations of the Complainant.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” part of the Disputed Domain Name. Therefore, the relevant part of the Disputed Domain Name is its “kosmos” section, which is identical to the dominating word element of the KOSMOS trademark.

In view of the above, the Panel finds that the Disputed Domain Name is identical to the KOSMOS trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the Disputed Domain Name, stating that the Respondent is not commonly known by the Disputed Domain Name, is not making a noncommercial or a fair use of it and is not using it in relation to the provision of a bona fide offering of goods or services. In support of its contentions, the Complainant has pointed out that the Disputed Domain Name is being used for generating revenue from pay-per-click links, and that the Respondent has never actively used it. In 2006, the Disputed Domain Name was used for a parking website showing the Eiffel Tower, thus referring to France, country of the Complainant, allegedly to mislead and confuse consumers.

The Respondent disputes the allegations of the Complainant. It points out that the word “kosmos” is a dictionary word meaning “cosmos” in many languages, and it is not exclusively associated with the Complainant. According to the Respondent, the Complainant has not proven that it had reputation at the time the Disputed Domain Name was registered, and has not established that the word “kosmos” should be regarded as exclusively or strongly associated with the Complainant in France. The Respondent contends that it has registered and used the Disputed Domain Name for many years for a general purpose search portal, which use does not compete with the Complainant or suggest a false association with it. According to the Respondent, it has a legitimate interest in selling the Disputed Domain Name to any party who would like to have it and use it for any purpose unrelated to the Complainant.

The Panel has reviewed the case file and has reached the following conclusions.

As contended by the Respondent, the word “kosmos” is obviously a dictionary word used in many languages with the same or similar meaning. Notably, this is also confirmed by the evidence submitted by the Complainant − in an interview from 2003 of one of the founders of the Complainant, he acknowledges that “kosmos” is a Greek word denoting the harmonious universe.¹

As discussed in paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), when assessing whether a respondent may have rights or legitimate interests in a domain name comprising a dictionary word, a panel would take into account the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning. UDRP panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, which may be generic with respect to certain goods or services, may not of itself confer rights or legitimate interests in the domain name. In order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning, and not to trade off third-party rights in such word or phrase.

In the present case, the Complainant has not established the level of popularity of the KOSMOS trademark. The word “kosmos” is a dictionary word that has long been widely used in various contexts and for various legitimate purposes beyond the scope of protection of the KOSMOS trademark. This situation provides a lawful possibility for the Respondent to use the Disputed Domain Name in connection with its dictionary meaning without causing confusion with the KOSMOS trademark. The evidence submitted by the Complainant shows that for a certain period of time the Disputed Domain Name has been used for a general search portal containing pay-per-click links on various topics unrelated to the Complainant or to the KOSMOS trademark, or for a parking website inviting offers for purchase of the Disputed Domain Name. The Panel is not convinced by the Complainant’s allegation that such use of the Disputed Domain Name by the Respondent constitutes an unfair use of the Disputed Domain Name that exploits the popularity of the KOSMOS trademark or misleads consumers. At the same time, this use of the Disputed Domain Name does not seem to be connected to the dictionary meaning of the word “kosmos”.

In view of the above, the Panel is not satisfied that the circumstances of this case provide sufficient grounds for reaching a definite conclusion on the issue of rights or legitimate interests in the Disputed Domain Name. Moreover, in view of its finding on the issue of bad faith, the Panel need not make a finding on this issue, so it will refrain from doing so.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative circumstances that shall each be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

(i) circumstances indicating that a respondent has registered or has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) that a respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

In the present case, the Complainant has alleged that the Respondent has concealed its identity and has used the Disputed Domain Name in connection with pay-per-click links. The Complainant has described a sequence of events in 1998, which in its view shows that someone took notice of the incorporation of the Complainant and of the domain name searches carried out by the founders of the Complainant, and registered the Disputed Domain Name in an attempt to extract undue benefit from this. The Complainant has also referred to the “ClientTransferProhibited” status of the Disputed Domain Name, and to the correspondence between the Complainant and the Respondent’s broker related to the Complainant’s offer for purchase of the Disputed Domain Name.

The Respondent has pointed out in its defense that the Complainant has not established that it had reputation at the time when the Disputed Domain Name was registered or that the Respondent knew or should have known of the Complainant at that time. The Respondent denies any knowledge of the Complainant prior to the Complainant’s unsolicited contact with the Respondent’s broker in 2014, which took place more than a decade after the Respondent had registered the Disputed Domain Name.

As pointed out by the Respondent, the Complainant easily initiated contact with the Respondent when submitting its offer for the purchase of the Disputed Domain Name, and the identity of the Respondent was properly disclosed by the Registrar in the present proceeding. In view of this, the Panel does not accept that the use of privacy services by the Respondent in the present proceeding would support a finding of bad faith conduct. The same applies to the use of the “ClientTransferProhibited” status of the Disputed Domain Name, which is simply a widely used security measure.

It was indeed unfortunate for the Complainant that someone registered the Disputed Domain Name just a day after the Complainant was incorporated. The Panel understands that this coincidence has caused the Complainant’s suspicion of the motives for the registration of the Disputed Domain Name. The possibility that the Respondent, or a third party, may have opportunistically registered the Disputed Domain Name after noticing the Complainant’s searches has not escaped the Panel’s attention. However, as discussed in relation to the issue of rights or legitimate interests, the Complainant has not established that it had reputation at the time when the Disputed Domain Name was registered in 1998; nor has it established that anybody associated with the Respondent was involved in the registration of the Disputed Domain Name in 1998. No evidence of such reputation is present also for the period when the Respondent was incorporated in 2002. It has not been shown that the content of the website at the Disputed Domain Name has ever had any content related to the Complainant or to the KOSMOS trademark. In view of this and taking into account that “kosmos” is dictionary word, the Panel is prepared to accept the Respondent’s statement that it did not have any knowledge of the Complainant prior to 2014, when the Complainant offered to purchase the Disputed Domain Name. Therefore, the Panel is not satisfied that it is more likely that the Disputed Domain Name was registered in bad faith, rather than the date of its registration being a mere coincidence with the incorporation of the Complainant.

As to the use of the Disputed Domain Name, there is no evidence in the case file that such use has been in bad faith. The content of the website at the Disputed Domain Name has not contained references to the Complainant or to the KOSMOS trademark. The inclusion of a photo of the Eiffel Tower in the website cannot be considered as such a reference, as it is just a symbol of Paris that has not been shown to have any connection to the Complainant. All this combined with the fact that “kosmos” is a dictionary word leads the Panel to the conclusion that Internet users are not likely to be misled by the use of the Disputed Domain Name and the content of the associated website. On this basis, the Panel finds no reasons to accept that the Respondent has made an attempt to extract profit by a reference to the Complainant or to the KOSMOS trademark. The same applied also to the conduct of the Respondent’s broker following the submission of the Complainant’s offer for purchase of the Disputed Domain Name. The negotiations took place as result of this offer, and were not initiated by the Respondent. Given that there is no evidence that the Respondent has targeted the Complainant, the Panel does not find anything illegitimate in the attempt of the Respondent’s broker to achieve a transfer price for the Dispute Domain Name that is as favorable for the Respondent as possible.

Taking the above into account, the Panel finds that the Complainant has not established that the Disputed Domain Name has been registered and used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Nathalie Dreyfus
Panelist

Tony Willoughby
Panelist
Date: February 19, 2016

¹ Annex 14 to the Complaint.