WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Melaleuca, Inc. v. Kim Ok Jin Case No. D2008-1987 1. The Parties
The Complainant is Melaleuca, Inc. of Idaho Falls, Idaho, the United States of America, represented by Hawley, Troxell, Ennis & Hawley, LLP, the United States of America.
The Respondent is Kim Ok Jin of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Cydentity, Inc. dba C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2008. On December 29, 2008, the Center transmitted by email to Cydentity, Inc. dba C a request for registrar verification in connection with the disputed domain name.
On December 30, 2008, Cydentity, Inc. dba C transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. In response to a notification by the Center that the Complaint did not contain the statement that a copy of the Complaint, together with the Complaint Transmittal Coversheet, has been sent or transmitted to the Respondent, the Complainant confirmed by e-mail on December 30, 2008 that the Complaint had been sent to the Respondent.
On December 30, 2008, the Center notified the parties of the Center's procedural rules relevant to the language of the proceeding. On January 5, 2009, the Complainant submitted a request that English be the language of the proceeding, to which the Respondent has not replied. On January 15, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for response was February 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on February 5, 2009.
The Center appointed Junghye June Yeum as the sole panelist in this matter on February 11, 2009. 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.
The Complaint was filed in English. Pursuant to paragraph 11 of the Rules, in the absence of any agreement between the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Panel notes that the default language of the proceeding for this case would be Korean, being the language of the relevant registration agreement in the absence of any express agreement to the contrary by the parties.
Under the Rules, the Panel has the authority to determine the language of the proceeding. The Complainant has submitted a request that English be the language of the proceeding. The Respondent has received notice of the same in both English and Korean, but nevertheless has not submitted any response or objected to the same.
The Panel has considered the particular circumstances of this case carefully as well as the discretion given to her by paragraph 11(a) of the Rules. The Panel hereby determines that English shall be the language of administrative proceeding in this case. 4. Factual Background
As indicated in the WhoIs registration record provided as Annex No. 1 to the Complaint, the Respondent registered the disputed domain name on March 5, 2006.
The Complainant states that it has owned a United States federal trademark registration for the MELALEUCA mark for health and household products since September 12, 1995. The Complainant has provided in Annex No. 3 to the Complaint, a certificate of registration, to demonstrate its registration for its MELALEUCA mark.
The Complainant further states that it owns trademark rights and has United States federal trademark registrations for the mark MELA. The Complainant has provided Annex No. 6A to the Complaint, a certificate of registration, to demonstrate its registration for its MELA mark. In addition, the Complainant cites ownership in the following six different marks that include the MELA mark: MELABRITE, MELACOM, MELA-GEL, MELAMAGIC, MELAPOWER, and MELASOFT. The Complainant has provided Annex No. 6 to the Complaint, an affidavit of Jennifer Hall, a legal assistant of the Complainant, to demonstrate its ownership of the six marks incorporating the MELA mark.
Finally, the Complainant owns the domain names and where it markets health and household products. 5. Parties' Contentions A. Complainant (i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the MELALEUCA mark because the term “mela” serves as a source identifier for the Complainant's products and services. The Complainant asserts that Internet users searching for products by using the abbreviated form “mela” may be directed to the Respondent's website.
The Complainant further contends that the disputed domain name is confusingly similar to its MELA mark in which the Complainant has established common law rights since as early as September 1985. In support of this argument, the Complainant states that it has appropriated and used the MELA mark as a variant of its MELALEUCA mark, and it has become a common practice for the Complainant to append descriptors, such as the words “power,” “briate,” and “com” to the flagship MELA mark to create source association in the minds of consumers between the products and services so labeled and the Complainant. The Complainant has filed and obtained United States federal trademark registration on the MELA mark in 2008.
The Complainant also points out that the addition of the word “shop” in the disputed domain name does not sufficiently distinguish the Respondent's domain name from the Complainant's marks. (ii) Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons. The Complainant has not permitted the Respondent to use the MELA mark. The Respondent is not known by the disputed domain name. Nor does the Respondent use the domain name in connection with a bona fide offering of goods and services because visitors to the Respondent's website would likely believe they were visiting the Complainant's website. The Complainant further argues that the Respondent is not making a legitimate, noncommercial, or fair use of the domain name without intent for commercial gain because the Respondent offers products for sale on its website and misleads consumers into thinking the website at the disputed domain name is the official MELALEUCA website. (iii) Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is now using the disputed domain name in bad faith under paragraph 4(b) of the Policy.
First, the Complainant asserts that the Respondent obtained registration of the disputed domain name after the Complainant acquired rights in the marks MELALEUCA and MELA. Next, citing paragraph 4(b)(iv) of the Policy, the Complainant asserts the disputed domain name is deliberately used to attract Internet users to the Respondent's website based on a likelihood of confusion with the Complainant's marks. The Respondent's website provides information about the Complainant's business and misappropriates the Complainant's leaf/drop device mark in order to profit from the confusion of consumers. B. Respondent
The Respondent did not respond to the Complainant's contentions. 6. Discussion and Findings
If the Respondent intended to participate in this proceeding, and/or had any comments on the Complainant's submission, the Respondent was requested to submit these to the Center by the deadline set in the Notification of Complaint documents.
The Center has throughout the proceeding issued its case-related communications, including the Center's Complaint notification documents, both in Korean and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default. The Panel is satisfied that the Center's approach has been fair and appropriate.
The Panel notes that it is well settled under the Policy that a panel may infer that the complainant's reasonable allegations are true when a respondent fails to dispute the allegations of the complainant. See, e.g., America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. A. Identical or Confusingly Similar
To show that it is the owner of the trademark MELA, the Complainant has produced the certificate of registration No. 3,462,229 obtained from the USPTO on July 8, 2008, for all purpose cleansers, laundry detergent, fabric softeners for domestic use, and bleaching preparations for laundry use, in class 3.
Although the mark MELA was registered after the Respondent registered the disputed domain name, that does not bar the Complainant from relying on it to show rights sufficient to satisfy paragraph 4(a)(i) of the Policy. As one panel noted, “Paragraph 4(a)(i) does not expressly require that a complainant demonstrate that it had rights in a trademark or service mark prior to the respondent's registration of the disputed domain name. Instead, the Policy refers to the complainant's ownership of trademark rights in the present tense.” Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin,WIPO Case No. D2005-0038. Thus, it is sufficient that the Complainant has trademark rights at the time the Complaint is filed. Intuit Inc. v. Nett Corp.,WIPO Case No. D2005-1206.
The Panel also finds that the Complainant has common law rights in the MELA mark for purposes of the Policy. At least since 1985, the Complainant has appropriated and used the MELA mark as a variant of its MELALEUCA mark and appended descriptors, such as the words “power,” “briate,” and “com” to the flagship MELA mark to create source association in the minds of consumers between the products and services so labeled and the Complainant, thereby acquiring common law trademark rights in the MELA mark.
The disputed domain name incorporates the entirety of the Complainant's MELA mark. The incorporation of the entirety of a mark, according to the Panel, leads to a likelihood of confusion. See, e.g., eBay, Inc. v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding the domain to be confusingly similar to the complainant's EBAY mark because it had incorporated the complainant's mark in its entirety); General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087 (finding the domain name to be confusingly similar to the mark GE because it incorporated the GE mark in its entirety).
The Respondent's addition of the generic term “shop” to the Complainant's mark does not lessen the likelihood of confusion. Prior UDRP panels have consistently held that appropriating the mark of another by merely adding a non-distinctive term to it results in a likelihood of confusion. See, e.g., The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677 (finding confusingly similar to the COCACOLA mark despite the addition of “drinks”); America Online, Inc., supra (finding confusingly similar to the ICQ mark despite the addition of “roaming”); Mastercard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050 (finding confusingly similar to the MASTERCARD mark despite the addition of the non-distinctive term “offers”).
For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's MELA mark. B. Rights or Legitimate Interests
While the Complainant bears the initial, prima facie burden of proof under 4(a)(ii) of the Policy, the burden shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (“The Panel notes that the Complainant bears the ‘general burden of proof' under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”).
The Complainant satisfies this initial burden where it demonstrates that the Respondent has no rights or legitimate interests to the disputed domain name of which it is aware, and it has not given the Respondent any permission to use the disputed domain name. See Edgar Rice Burroughs, Inc. v. Adtel Communications,WIPO Case No. D2000-0115 (“Uncontested allegations of the Complainant meet, prima facie, the requirements set forth in paragraph 4(a).”).
Accordingly, the Respondent must then demonstrate its rights or legitimate interests under paragraph 4(c).
Because the Respondent has offered no response, the Panel finds that the Respondent has not offered any basis that would provide a legitimate claim to the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent acquired and began unauthorized use of the disputed domain name long after the Complainant's use of its MELALEUCA and MELA marks, suggesting that the Respondent knew or should have known of the Complainant's trademark rights and sought to trade on the Complainant's good will and reputation.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith in violation of paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) provides:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In support, the Complainant notes that the content of the Respondent's website at the disputed domain name mentions the Complainant's specific products, provides historical information about the Complainant's business, and uses the Complainant's registered leaf/drop device mark.
The Panel considers whether the Complainant has met its burden to prove that the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent's site at the disputed domain name by creating a likelihood of confusion with the Complainant's mark. The Complainant has produced as evidence the Respondent's use of the Complainant's leaf/drop device mark and the description of the Complainant's company on the Respondent's website. The leaf/drop device mark used on the Respondent's website is identical to the Complainant's trademarks. While the description cited by the Complainant from the Respondent's website is not, as the Complainant asserts, identical to the description listed on the Complainant's website, the translated text nevertheless clearly describes the Complainant's company. The Respondent has intentionally created the impression that the Complainant's goods are sold on the Respondent's website when they are not or at least has created the impression that the Respondent's goods are sponsored, affiliated, or endorsed by the Complainant when they are not.
The Panel finds that the Respondent has registered and used the disputed domain name to intentionally attempt to attract - for commercial gain - Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks and goods. See Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd.,WIPO Case No. D2004-0554 (finding bad faith evidenced in the respondent's offering to sale on the website at the disputed domain name items that give the impression that they are manufactured and sold by the complainant when they are not); Habib Bank AG Zurich v. Dave West,WIPO Case No. D2004-0041 (finding bad faith where the respondent used not only the complainant's registered trademarks, but also its distinctive “Lion logo,” distinctive colors and the address of the complainant).
Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Junghye June Yeum
Sole Panelist
Dated: March 4, 2009
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