The Complainant is CWe Form & Design AB of Stockholm, Sweden, represented by PG Magnusson Advokatbyra AB, Sweden.
The Respondent is Star Vision Co., Ltd of Hanam-si, Gyeonggi-do, Republic of Korea, self-represented. 2. The Domain Name and Registrar
The disputed domain names and are registered with K co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2015. On January 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 2, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On February 3, 2015, the Complainant requested for English to be the language of the proceeding. The Respondent's due date to submit its Language of Proceedings request was February 7, 2015. On February 11 and 13, 2015, the Center received emails from the Respondent requesting for Korean to be the language of the proceeding.
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 February 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2015. The Response was filed with the Center on February 17, 2015.
The Complainant submitted a Supplemental Filing for consideration on March 16, 2015. The Supplemental Filing consisted of the Korean Intellectual Property Office's ("KIPO"): (1) Decisions of Final Rejection on March 2, 2015, whereby KIPO found the Complainant's oppositions against the Respondent's trademark applications well-grounded and rejected the following Korean trademark applications: No. 40-2014-0001340; No. 40-2014-0001342; No. 40-2014-0001344; and (2) Notice of Provisional Refusal on March 6, 2015, regarding Korean Trademark Application No. 40-2014-0050563. The Complainant requested that the information stated above be considered as evidence of the Respondent's registration and use in bad faith.
The Respondent submitted an email to the Center on March 17, 2015.
The Panel, using its discretion under paragraphs 10 and 12 of the Rules, has decided to accept the Complainant's Supplemental Filing.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 4, 2015. 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 Complainant is CWe Form & Design AB, a limited liability company located in Stockholm, Sweden. The Complainant was founded in 2004 by Ms. Carin Wester, a Scandinavian designer. Ms. Wester's designs have been sold under the brand CARIN WESTER since 2004. The Complainant owns several trademark registrations worldwide, which include: "CARIN WESTER"; "WESTER"; and "CW DESIGNED BY: CARIN WESTER". The strikethroughs are included in the registrations. The CARIN WESTER mark has been acknowledged as a popular fashion brand in various publications. Indeed, the Complainant has a worldwide network of over 173 resellers of fashion goods bearing the CARIN WESTER brand. Such resellers include Weekday and Urban Outfitters.
The Respondent is Star Vision Co., Ltd., of Hanam-si, Gyeonggi-do, Republic of Korea. The Respondent registered the disputed domain names on January 17, 2014. The Respondent markets and sells sunglasses on a website at the disputed domain name . The disputed domain name does not resolve to an active website. The Respondent has filed several trademark applications with the KIPO containing the words "Carin Wester". On March 2, 2015, the KIPO issued final decisions rejecting the Respondent's trademark applications containing "Carin Wester" because they were identical to the Complainant's prior-used and well-known CARIN WESTER marks. 5. Parties' Contentions A. Complainant
The Complainant contends that:
1) The disputed domain names are confusingly similar to the Complainant's trademark registrations. The only difference is that the disputed domain names are formed by the name "Carin Wester" with a hyphen connecting the name "Carin" and the surname "Wester", while the Complainant's registered trademarks consist of the name "Carin" and the surname "Wester", without the hyphen but presented with a strikethrough, namely "CARIN WESTER".
2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the CARIN WESTER mark. The Respondent has been using the disputed domain names in a manner that is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the CARIN WESTER trademark owners/licensees/ customers when this is not the case. The Respondent's use of the disputed domain names is not fair use, because it confuses the Internet users as to the owner of the trademark, and diverts the attraction the Complainants' trademarks cause to its own commercial enterprises.
3) The disputed domain names were registered and are being used in bad faith; The CARIN WESTER brand and trademarks are well-known in the fashion industry, which the Respondent must have been aware of; The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites. B. Respondent
The Respondent contends that:
1) It applied for trademark registration of the mark CARIN WESTER on October 30, 2013, registered the mark on February 24, 2014, and has been using the mark in commerce ever since in connection with its claimed goods covering eyeglasses, sunglasses, and contact lenses. Thus, the Respondent claims to have the right to own and use the disputed domain names.
2) There is no consumer confusion between the disputed domain names and the Complainant's trademark. The Respondent contends that it does not have any economic relationship with the Complainant because they are involved in totally different industries. Specifically, the Respondent claims that the Complainant sells body and foot protective clothing and shoes, while it sells eyeglasses, sunglasses and contact lenses. Second, the Respondent contends that the Complainant's mark is not known in the Republic of Korea or amongst Korean consumers. In support thereof, it claims that when searching for the Complainant on NAVER (a popular Korean search engine), the Complainant's name "hardly" appears.
3) It has spent substantial resources for advertisements and websites, and it actively sells its products throughout the Republic of Korea. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain names to the Complainants. Those requirements are that: (i) the Respondent's domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. 6.1 Language of the Proceedings
The registration agreement for the disputed domain names is in Korean; Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, while notifying the proceeding in both English and Korean, the Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise its discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432. Based on (1) the Respondent's pre-complaint written correspondence with the Complainant in English relating to the Respondent's desire to sell and/or produce sunglasses for the Complainant, and (2) the English language content of the Respondent's website at the disputed domain name ; it does not appear the Respondent has any difficulty comprehending and communicating in English. As prior UDRP panels have determined, if an entity conducts activities (here, commercial activities) in English, it is difficult for that entity to object if someone complains about such activities in English. Burger King Corporation v. Burger King S.R.L.,WIPO Case No. DRO2008-0012.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English. A. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has established that the name CARIN WESTER has become a distinctive identifier associated with the Complainant. The Complainant owns several registered trademarks for CARIN WESTER, which were registered years before the disputed domain names were registered. The registered trademarks are used in connection with fashion products, including clothing, footwear, and headgear, as well as for accessories and bags.
The disputed domain names wholly incorporate the Complainant's registered mark. In prior UDRP decisions, it has been widely held that a domain name which wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson,WIPO Case No. D2008-1338.
Regarding punctuation differences between the disputed domain names and the Complainant's registered trademarks, it has often been expressed in UDRP decisions that a minor variation, such substituting one punctuation mark for another or adding a punctuation mark to a mark, is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion. Here, adding a hyphen between the words "Carin" and "Wester", in the manner which the Respondent specifically did, to the mark CARIN WESTER clearly resulted in such a minor variation. See, e.g., Forideas Pty Limited v. Movember Organization,WIPO Case No. D2013-1385; AlgaeCal Inc. v. AlgaeCal Fraud,WIPO Case No. D2013-1248; General Motors LLC v. Carol Schadt,WIPO Case No. D2012-2106; National Westminster Bank plc v. Steve Mart,WIPO Case No. D2012-1711. Further, the fact that the disputed domain names do not include strikethrough punctuation as do the Complainant's trademarks is of no consequence. Such punctuation is invalid for a domain name.
Indeed, the Panel notes that on March 2, 2015, the KIPO issued final decisions rejecting the Respondent's trademark applications containing "Carin Wester" because they were identical to the Complainant's prior-used and well-known CARIN WESTER marks. The Respondent, in its email to the Center of March 17, 2015, claimed that it owns registered trademark for CARIN WESTER (application No. 40-2014-0001340), but the Panel notes that invalidation action has been taken by the Complainant for the said trademark application as well.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain names are confusingly similar to the Complainant's CARIN WESTER mark. B. Rights or Legitimate Interests
There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain names.
The general consensus of UDRP panel views on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Complainant has established a prima facie case against the Respondent. The Respondent has failed to come forward with sufficient evidence demonstrating rights or legitimate interests in the disputed domain names, and, further, there is not sufficient evidence in the case file that would demonstrate that the Respondent had such rights or legitimate interests.
For example, there is no evidence that the Respondent was known under the disputed domain names or "Carin Wester" name prior to registering the disputed domain names. Indeed, the disputed domain names had no known meaning in English or Korean, which is the purported language of the Respondent, other than through the goodwill and brand recognition associated with the Complainant's trademarks. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the CARIN WESTER mark. See Audi AG v. Mike Gillespie, Gillespie Auto Group,WIPO Case No. D2007-1850.
Moreover, the evidence strongly supports the Complainant's allegations that the Respondent has been using the disputed domain names in a manner that is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval with the CARIN WESTER trademark owners/licensees/ customers when this is not the case. This shows that the Respondent's use of the disputed domain names is not fair use, because they confuse Internet users as to the owner of the trademark, and diverts the attraction the Complainant's trademarks cause to its own commercial enterprises. See Volvo Trademark Holding AB v. e-motordealer Ltd,WIPO Case No. D2002-0036.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
- circumstances indicating that you have registered or you have acquired the 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- you have 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 you have engaged in a pattern of such conduct; or
- you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
Bad faith can be inferred based on the fame of the complainant's marks, such that the respondent was aware or should have been aware of the complainant's mark and claims of rights thereto (particularly in view of the complainant's use of its mark on the Internet). Here, given the timing of the disputed domain name registrations (January 17, 2014), the Panel finds it highly doubtful that the Respondent would have registered them without having knowledge of the Complainant.
The registration by the Respondent of a domain name that is similar to a distinctive trademark, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting,LLC,WIPO Case No. D2005-1319). As mentioned above, the Respondent has no connection whatsoever to the trademark CARIN WESTER.
Commercial gain must have been the Respondent's intention for registering the disputed domain names. Thus, in deciding to incorporate the trademark CARIN WESTER in the disputed domain names, the Respondent must have been aware of and intended to benefit from the fame in the same. Indeed, the Respondent's website markets and sells sunglasses, which goods are identical or at least similar to the goods for which the Complainant's trademarks are used and registered. Accordingly, the Panel finds that the only credible explanation for the use of the disputed domain names is to take advantage of the similarity between the disputed domain names and the Complainant's trademark to draw Internet users to those sites for commercial advantage.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that the disputed domain names have been registered and used in bad faith by the Respondent. 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 names and be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: March 18, 2015
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