#Wekit .com : A 2005 #domain name faced the #UDRP process

The domain Wekit.com was registered in 2005. A decade and a half later, it was hit with a UDRP.

The case was filed at the WIPO by Advice Group S.p.A., Italy, that asserted rights to the WEKIT mark, stemming from a 2018 trademark registration.

The Chinese registrant and Respondent in this case, did not respond. However, the sole panelist at the WIPO delivered a finding favoring the Respondent:

The Panel finds no evidence of bad faith registration or use of the Domain Name. On the limited evidence in file, the Domain Name was registered several years before Complainant was formed, and more than a decade before Complainant even applied for a trademark for WEKIT. There is no allegation or evidence of anyone using WEKIT as a trademark at the time the Domain Name was registered back in 2002. The Panel also notes that “wekit” is a fairly short term, and five-letter domain names which are also easy to pronounce, if not catchy, may be popular registrations. In short, the Complaint fails for lack of any evidence that Respondent targeted Complainant and its trademark.

Note: The domain wasn’t registered in 2002 as the panelist said, but in 2005. It should make no difference in this case.

Final decision: Deny transfer of Wekit.com to the Complainant. Full details follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advice Group S.p.A. v. yang jin jie
Case No. D2019-2829

1. The Parties

Complainant is Advice Group S.p.A., Italy, represented by CLIP Legal, Italy.

Respondent is yang jin jie, China.

2. The Domain Name and Registrar

The disputed domain name <wekit.com> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On November 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 29, 2019.

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 Respondent of the Complaint, and the proceedings commenced on December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 9, 2020.

The Center appointed Robert A. Badgley as the sole panelist in this matter on January 15, 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

Complainant describes itself as “a Progress Marketing agency specialized in building behavioural loyalty strategy, strongly integrated with the sell-out performances.” Complainant asserts that its “core business is to create digital loyalty and incentive trade programme based on a strategical behavioural mapping in real time, following the new Customer Relationship Strategy metrics.” Complainant’s website, located at “www.advicegroup.it”, indicates that Complainant launched its business in Turin in 2006.

Complainant holds an Italian trademark registration for the figurative mark WEKIT, applied for on October 2, 2015 and registered on October 1, 2018 under Registration No. 2015000057832. There is nothing in the record to indicate whether Complainant used WEKIT as a trademark prior to applying for the Italian trademark application on October 2, 2015. While it very well may have done so, Complainant does not allege that it used the WEKIT mark prior to applying for a trademark in 2015.

The Domain Name was registered on July 22, 2002, four years before Complainant’s business started, 13 years before Complainant filed its trademark application, and 18 years before the WEKIT mark was registered. The Domain Name does not resolve to an active website.

Little is known about Respondent, since Respondent did not reply to the Complaint in this proceeding. Complainant attaches to the Complaint an Italian-language version of Respondent’s website as of March 9, 2019. According to the evidence provided by Complainant, the Domain Name is advertised for sale on Registrar’s website.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark WEKIT through registration demonstrated in the record. The Panel also finds that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel need not address this issue, given its conclusion below on the issue of bad faith registration and use.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

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

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds no evidence of bad faith registration or use of the Domain Name. On the limited evidence in file, the Domain Name was registered several years before Complainant was formed, and more than a decade before Complainant even applied for a trademark for WEKIT. There is no allegation or evidence of anyone using WEKIT as a trademark at the time the Domain Name was registered back in 2002. The Panel also notes that “wekit” is a fairly short term, and five-letter domain names which are also easy to pronounce, if not catchy, may be popular registrations. In short, the Complaint fails for lack of any evidence that Respondent targeted Complainant and its trademark.

Because there is no evidence that Respondent registered the Domain Name in bad faith, the allegation that the Domain Name is advertised for sale is of no consequence to the Panel’s decision.

7. Decision

For the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist
Date: January 22, 2020

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