The Complainant is Errea’ Sport S.p.A. of Torrile, Italy, represented by Studio Crea Avvocati Associati, Italy.
The Respondent is Noorinet of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2015. On April 7, 2015, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2015, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 9, 2015, the Center notified the Parties – in both English and Korean – that the language of the Registration Agreement for the disputed domain name is Korean. In this transmission, the Center requested the Complainant “to provide at least one of the following:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Korean; or
3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English.”
To the Respondent, the Center instructed, in relevant part:
“In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by April 14, 2015.
Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials (in light of the considerations enumerated in paragraph 3) above) as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On April 9, 2015, the Complainant submitted to the Center a request that English be the language of the proceeding, referring to (and repeating) its supporting arguments contained in the Complaint. The Respondent did not reply to the Complainant’s request, nor did the Respondent submit any request or material to the Center relating to 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, in both Korean and English, formally notified the Respondent of the Complaint, and the proceeding commenced on April 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Respondent’s response was May 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2015.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on May 21, 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 an Italian company in the business of making and selling sports equipment and apparel, using the ERREA trademark. It has received registrations for the ERREA mark in a number of countries, including the Republic of Korea (on October 6, 2008, May 28, 2009, and October 22, 2010, among others).
The Respondent registered the disputed domain name on June 30, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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 in bad faith.
The Complaint also states the following:
“[T]he Complainant is universally recognized by the internet world throughout the expressions ‘ERREA’, ‘ERREA SPORT’ and ‘ERREASPORT’”;
“[T]he Complainant … extended its international market towards Korea since 2007 …”;
“The Complainant is for sure well known also in [the Republic of Korea] …”;
“The Respondent … has no relationship with the Complainant and has no permission from the Complainant to use any trademark”; and
“[T]he Respondent is clearly an usual counterfeiter, acting always with the same program: it first registers a domain name including the trademark owned by a famous Company and then it waits for the legitimate owner to purchase the domain name.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Per paragraph 14(b), the Panel may also draw appropriate inferences from the Respondent’s default. 6. Discussion and Findings
The Panel must initially address the language of the proceeding.
Under paragraph 11(a) of the Rules, the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties. But paragraph 11(a) also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding”. Here, the language of the Registration Agreement is Korean. The Complainant nevertheless requests that English be the language of the proceeding, and the Panel agrees.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding in the English language. The Respondent did not respond to the Center’s notification, and has declined to participate in this mandatory proceeding. Under these circumstances, with only one party remaining, the Panel determines that English is the language of the proceeding.
Turning to the merits, in order to prevail, the Complainant must satisfy each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Panel determines that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights, ERREA. The disputed domain name is comprised of the Complainant’s mark, followed by “sport”, a term that relates closely to the Complainant’s line of products, plus the generic Top-Level Domain (“gTLD”) “.com”.
The first element is satisfied. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has thus met its initial burden of making a prima facie showing. The Respondent then has the burden to demonstrate any such rights or legitimate interests, but has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is demonstrated. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that are evidence of bad faith registration and use.
Here, the disputed domain name resolves to a site that includes links for, among others and most prominently, “Errea Sport”. Internet users are likely to associate the Respondent’s site with the Complainant and its sports equipment and sportswear products. The Panel concludes that by using the disputed domain name, the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site … by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site”, as set forth in paragraph 4(b)(iv).
The third element is also 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 Complainant.
Ilhyung Lee
Sole Panelist
Date: May 24, 2015
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