Kutus kutus is the number 88 in Indonesian, and the matching domain name KutusKutus.com was hit with a UDRP at the WIPO.
The Respondent pointed out the generic nature of the domain’s meaning, along with the fact that it was registered in 2013 – long before the Complainant’s trademark:
[…] the Complainant should not have been able to register trademarks for the term KUTUS KUTUS, as this means the number 88 in Indonesian and is regarded as a lucky number. The Respondent further submits that it owned the disputed domain name long before the Complainant was registered or had any license in respect of the KUTUS KUTUS mark.
The sole panelist at the WIPO agreed, and ordered the domain KutusKutus.com to remain with the Respondent. Full details follow.
The domain transfer was denied.
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ADMINISTRATIVE PANEL DECISION
Sladana Reisinger, Visioner Kutus Kutus Ltd v. I. Nyoman Andi Gunawan, Eka Sriti Enterprise
Case No. D2020-22961. The Parties
The Complainant is Sladana Reisinger, Visioner Kutus Kutus Ltd, Cyprus, internally represented.
The Respondent is I. Nyoman Andi Gunawan, Eka Sriti Enterprise, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <kutuskutus.com> is registered with CV. Jogjacamp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. On September 30, 2020, the Center received an email communication from the Respondent requesting for an extension of time to file a response. On the same day, the Center granted the Respondent the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on October 2, 2020.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 9, 2020. 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 a company registered in Cyprus. It is a supplier of a therapeutic oil under the name and mark KUTUS KUTUS.
The Complainant is the proprietor of the following trademark registrations:
– European Union trademark number 017961481 for a figurative mark including the words KUTUS KUTUS, registered on January 22, 2019, in International Classes 3, 5, 21, 35 and 42;
– United States of America trademark number 5992589 for a figurative mark including the words KUTUS KUTUS, registered on February 18, 2020, in International Classes 3 and 5; and
– United Kingdom trademark number 3454984 for a figurative mark including the words KUTUS KUTUS, registered on March 27, 2020, in International Classes 3 and 5.
The disputed domain name was registered on December 18, 2013.
5. Parties’ Contentions
A. Complainant
The Complainant refers to its trademark registrations and to a number of domain names including the term “kutuskutus”. It states that the Respondent has no connection with its KUTUS KUTUS product and is using the disputed domain name to redirect to a website and Facebook page offering a competing product named “Varash Healing Oil”. The Complainant states that the Respondent’s activities are disrupting its business and have caused actual confusion to its customers. The Complainant contends that the Respondent registered the disputed domain name primarily to prevent the Complainant from reflecting its trademark in that domain name and in order to disrupt the Complainant’s business. The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent contends that the Complainant should not have been able to register trademarks for the term KUTUS KUTUS, as this means the number 88 in Indonesian and is regarded as a lucky number. The Respondent further submits that it owned the disputed domain name long before the Complainant was registered or had any license in respect of the KUTUS KUTUS mark.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant is the owner of registrations for figurative trademarks which include the words KUTUS KUTUS. The date of those registrations is not relevant to the exercise of comparison for the purposes of paragraph 4(a)(i) of the Policy, and the Panel therefore finds that the disputed domain name, <kutuskutus.com>, is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the light of the Panel’s findings in respect of the issue of bad faith as set out below, it is unnecessary to consider whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name was first registered in December 2013, and there is no evidence before the Panel, or any assertion on the part of the Complainant, that the Respondent acquired the disputed domain name on any later date. The Complainant’s earliest trademark registration is dated January 22, 2019, and there is no evidence of the Complainant having used the mark KUTUS KUTUS in commerce on any earlier date. Accordingly, the Panel finds that the Respondent registered the disputed domain name over five years before the Complainant’s first use of the trademark relied upon.
In the circumstances, the Complaint cannot succeed. Regardless of the Respondent’s current use of the disputed domain name, the Policy includes the conjunctive requirement that the disputed domain name must both have been registered and been used in bad faith. Save in very limited circumstances (which have no application in this case – at least according to the evidence put before the Panel) a domain name cannot have been registered in bad faith by reference to a complainant who had no corresponding trademark rights at the date of such registration; see e.g. paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore rejects the Complainant’s submissions that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in that domain name and/or primarily for the purpose of disrupting the Complainant’s business: in view of the chronology set out above, the Respondent can have had no such motivation at the date of registration of the disputed domain name. The Policy cannot in these circumstances avail the Complainant, regardless of the Respondent’s current use of the disputed domain name.
The Complainant cannot therefore establish that the disputed domain name has been registered and is being used in bad faith.
7. Decision
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Sole Panelist
Date: October 19, 2020
