The Complainants are Cassandra Bond and Ian Hamilton of Australia, internally represented.
The Respondent is Yoojoo Hwang of Seongnam, Gyeonggi, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with chocolatecovereddomains, LLC (chocolatecovereddomains) owned by MyDomain, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on June 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact for the Disputed Domain Name.
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 proceedings commenced on June 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 17, 2013. 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
The Complainants are the owners of Ion Life Pty Ltd Trading as Alkaway, an Australian-based company established in 2000 in the business of selling water filters. They own one Australian and one European Community trade mark for ALKAWAY registered on December 5, 2008 and March 20, 2013 respectively.
The Respondent resides in the Republic of Korea. He registered the Disputed Domain Name on May 5, 2013. 5. Parties’ Contentions A. Complainant
The Complainants’ contentions can be summarised as follows:
(a) The Complainants own several trade mark registrations including Australian and European Community trade marks for ALKAWAY registered on December 5, 2008 and March 20, 2013 respectively.
(b) The Respondent has not shown any use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.
(c) The Disputed Domain Name used to resolve to a website indicating that the Disputed Domain Name was for sale.
(d) The Respondent has demanded that the Complainants pay USD 23,000 for the Disputed Domain Name, which is far more than the Respondent’s actual out-of-pocket costs of registering the Disputed Domain Name. This constitutes registration and use of the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainants. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. Also, the Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainants have rights in respect of the ALKAWAY trade mark on the basis of its Australian and European Community trade mark since December 5, 2008 and May 20, 2013 respectively.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name is identical to the ALKAWAY trade mark, except the gTLD extension “.com”. The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the ALKAWAY trade mark in which the Complainants have rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor associated with the Complainants in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainants’ ALKAWAY mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the ALKAWAY trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to demonstrate that it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainants’ contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainants’ statements and documents submitted.
The Disputed Domain Name resolves to a page with a statement in Korean which means “We will search for it in a new way”. Apart from this, the Disputed Domain Name does not appear to be engaged in any bona fide offering of goods or services. The Complainants contend that prior to the dispute, the Dispute Domain Name resolved to a page indicating the Disputed Domain Name was for sale. However, the Complainants failed to record evidence of this before the Respondent removed the page.
In any case, it is clear that no legitimate noncommercial or fair use has been being made of the Disputed Domain Name without intent for commercial gain (paragraph 4(c)(iii) of the Policy). The Complainants have produced evidence of correspondences between the Complainants and the Respondent’s agent whereby the Respondent had offered to sell the Disputed Domain Name for $23,000 (presumably USD). Under the Policy, registering a domain name primarily for the purpose of selling it to a complainant or the complainant’s competitors for sums in excess of out-of-pocket costs do not serve to create any rights or legitimate interests in the Disputed Domain Name. Given the above, it is evident that the Respondent obtained the Disputed Domain Name for commercial gain and the Respondent cannot claim any rights or legitimate interests in the Disputed Domain Name. The Panel thus finds that paragraph 4(a)(i) of the Policy is satisfied. C. Registered and Used in Bad Faith
As mentioned, the Respondent’s motive for registering and using the Disputed Domain Names in bad faith is evidenced by the fact that the Respondent’s asking price for the Disputed Domain Name is USD 23,000. These circumstances indicate that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names to the Complainants or to a competitor of the Complainants in excess of the Respondent’s out-of-pocket expenses for registering and transferring the Disputed Domain Name, which is clearly indicative of bad faith registration and use under paragraph 4(b)(i). The Panel thus finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainants.
Gabriela Kennedy
Sole Panelist
Date: July 26, 2013
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