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 dAvocats 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

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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 Panels 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

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uses the Disputed Domain Name exploiting the value of the KOSMOS trademark, and misleadingly diverts
consumers.
In the Complainants 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 Complainants view, this was not a coincidence. Rather, it is
more likely that someone took notice of the searches made by the Complainants 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 Respondents
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 Respondents
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 Respondents 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 Complainants 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.

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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 Complainants 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
Complainants unsolicited contact with the Respondents broker in 2014, which took place more than a
decade after the Respondent had registered the Disputed Domain Name. The Complainants 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 Complainants 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 Respondents 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 Complainants 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.

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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.
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.
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,
1

Annex 14 to the Complaint.

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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 Complainants 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
complainants 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

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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 Respondents broker related to the Complainants 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 Complainants unsolicited contact with the Respondents 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
Complainants 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 Complainants searches has not escaped the Panels 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 Respondents 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 Respondents broker following the submission of the
Complainants 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 Respondents
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

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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