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March 13, 2017 / Robert Lichter

“Suspended” Printing Business Not Pressed to Fork Over Domain to Forklift Manufacturer

Summary of KION Material Handling GmbH v. Kion Printing Inc.

(WIPO Case No. D2017-0025)

Filed: January 9, 2017; Decided: February 24, 2017 (Panelist: Nick J. Gardner)

Disputed domain name: <kion.com>

Summary

A printing business registered the domain name kion.com, and used the domain for ten years. A manufacturer of forklifts and other products registered U.S. trademarks for KION and registered domain names including <kiongroup.com>, <kion.industries>, <kion.group>, <kion.us>, and <kionnorthamerica.us>. After California suspended the printing business’ corporate status, the printing business renewed the domain. The Panel finds that the renewal of the domain name was not done in bad faith. The Panel finds that this is not a case of reverse domain name hijacking.

The Parties

The Respondent is Kion Printing Inc. of City of Industry, California, USA. The Respondent registered the domain <kion.com> on August 5, 1996. The Respondent used the domain between 2000 through part of 2010 to promote its own business. The Panel had no evidence of any use of the domain by the Respondent since 2010. The Respondent’s current legal status under California law is listed as suspended (likely due to failure to comply with state requirements).

The Complainant is KION Material Handling GmbH of Wiesbaden, Germany. The Complainant manufactures machinery and other products related to storage and warehouses. In 2006, the Complainant began using the mark KION as part of its name, the “KION Group” being an umbrella company for three brands of forklifts. The Complainant owns trademarks including the word “kion.” The Complainant owns domain names that include the word “kion,” including <kiongroup.com>, <kion.industries>, <kion.group>, <kion.us>, and <kionnorthamerica.us>.

The Complainant argues that the Respondent has no legitimate interest in the term “kion.” The Complainant also argues that the Respondent registered the domain in bad faith — not at the time of first registration, but at the time of renewal.

The Respondent failed to respond to the complaint. Thus, the Panel “may draw appropriate inferences from the Respondent’s default.”

Identical or Confusingly Similar

The Panelist concludes that the domain is identical to the KION marks.

Rights or Legitimate Interests

The Respondent registered the domain over a decade before the Complainant began using the mark KION, and the Respondent used the mark for a bona fide printing business. The Panelist notes that this is dispositive with respect to rights or legitimate interests.

Nevertheless, the Panelist considers the Complainant’s allegation that the Respondent’s business has terminated. The Panelist notes that, under California law, it may be possible for the Respondent to satisfy corporate filing requirements and to regain its corporate status. The Panelist states that the Complainant has not proven that the Respondent’s printing business has ceased to exist.

Registered and Used in Bad Faith

The Panelist adheres to the general rule that when a domain is registered prior to establishment of trademark rights, the registration is not in bad faith. The Panelist also agrees with the general view that “a mere renewal” of a domain is not a new registration for the purposes of bad faith. The Panelist notes that the change in legal status of the Respondent company under California law does not change the identity of the Respondent as registrant. Thus, there is no evidence of a broken chain of ownership of the domain, nor is the identity of the registrant concealed.

Reverse Domain Name Hijacking

Because of the unusual circumstances, and because the Complainant anticipated its uphill battle, the Panelist does not find reverse domain name hijacking.

Decision

The Panelist denies the complaint, and declines to find reverse domain name hijacking.

Commentary

When selecting a new mark or a new domain, it is best to choose one that is unencumbered by prior uses of identical or similar marks by a third party. The Complainant began using the mark KION in 2006, ten years after the Respondent’s registration of the domain <kion.com>, and four years before the last use of the domain for the Respondent’s printing business. The Complainant uses the mark as an umbrella term for various products. Under such circumstances, the Complainant likely searched for third party uses of the mark prior to adopting the mark. Indeed, given that the Complainant registered <kion.us>, the Complainant probably would have pursued <kion.com> if it had been available. (The Complainant owns <kiongroup.com>.) Here, the Complainant likely assumed the risk that it might never be able to register the <kion.com> domain.

There seems to be a fine line here between a complaint that the Panelist characterizes as relying on a “carefully reasoned” argument and a complaint that would prompt a finding of reverse domain name hijacking. The Complainant relies in part on a prior panel decision that the Panelist characterizes as “distinguishable in several important aspects.” The Panelist concludes, “The Complainant may have known (had it inquired at the time) when it decided to adopt KION as its name in 2006 that a bona fide third party owned and was using the Disputed Domain Name. In those circumstances the Policy is not the appropriate mechanism to use to attempt to obtain the Disputed Domain Name from that third party.” One wonders whether another panelist might have made a finding of reverse domain name hijacking in this case.

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