Complaint for kols.com denied but pinko.com is transferred

In a decision at the National Arbitration Forum the complaint for the domain name kols.com was denied and the domain remained with the domain name owner.

Complainant was Kohl’s Illinois, Inc. and Respondent was Fox Business Systems / KansasNet. Respondent owns Kansas.Net that is a full-service Internet Service Provider (ISP).

Complainant has a trademark for KOHL’S that was registered in 1993 at USPTO for retail grocery store services. The domain in question kols.com was registered in 1995. Complainant’s domain name kohls.com was registered 3 years later in 1998.

Panel found that the Domain Name was confusingly similar to the KOHL’S mark.  It removes the letter “h” and the apostrophe from Complainant’s mark, while adding the generic top-level domain (“gTLD”) “.com.” This is quite alarming and owners of all domain names similar to kohls should be very careful if they use PPC. Complainant filed 3 more complaints in the past few months and won: “kolhs.com”, “kolhls.com”, “kphls.com, kohals.com, kohlsdepartmentstore.com, khols.com”. All 3 Respondents did not submit a Response in these complaints.

But then the complaint failed at the second element of the UDRP: Rights or Legitimate Interests. Respondent’s principal contention in this regard was that prior to notice of any dispute over the Domain Name it made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Respondent engaged a series of web designers to develop a website resolving from the Domain Name. The Panel was persuaded that prior to any notice of the dispute Respondent did in fact engage in demonstrable preparations to use the name in connection with a bona fide offering of goods and services. Panel concluded that the Respondent had demonstrated that it had rights and legitimate interests in respect of the Domain Name and transfer was denied.

In WIPO, the domain name pinko.com was transferred to the Complainant.

Pinko.com complaint had a great defense but Respondent DI S.A. from Luxembourg did not reply to the Complainant’s contentions. The domain was registered in 2002.

Quoting from wikipedia:

Pinko is a term for a person regarded as being sympathetic to communism, though not necessarily a Communist Party member. The term has its origins in the notion that pink is a lighter shade of red, the color associated with communism. Thus pink could be thought of as a “lighter form of communism” promoted by supporters of socialism who were not, themselves, “card-carrying” communists.

Maybe what made the Respondent not reply was because the domain name featured sponsored links that included those of competitors of the Complainant. Respondent changed those links after the complaint was filed but didn’t respond to the complaint and the domain was transfered.

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About Konstantinos Zournas

Konstantinos studied Computer Engineering and Computer Science in London and lives in Athens, Greece. He loves domains and building websites. He is online since 1995, learned about html in 1996 and got into domains in 2002. He started the OnlineDomain.com blog in 2012.

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