The Complainant is s.Oliver Bernd Freier GmbH & Co. KG of Rottendorf, Germany, represented by Weber & Sauberschwarz, Germany.
The Respondent is Noorinet of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2015. On May 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and indicating that language of the Registration Agreement for the Disputed Domain Name was Korean. On May 11, 2015, the Center sent an email communication to the Parties inviting the Complainant to submit evidence of an agreement between the Parties that the language of proceeding should be English; or, submit the Complaint translated into Korean; or, submit a request that English be the language of proceeding. On May 21, 2015, the Complainant filed a Complaint in Korean, with a request that English be the language of proceeding. The Respondent did not provide any submissions in this regard by the specified due date.
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 May 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2015. On June 10, 2015, the Center received an email from the Respondent regarding the language of proceeding and indicating that the content of the website at the disputed domain name is automatically generated by Sedo. On June 11, 2015, the Respondent submitted an email to the Center requesting an extension of the Response due date. The due date for filing a Response was extended until June 19, 2015. The Respondent did not file any formal Response.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 2, 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 international fashion company based in Germany whose fashion articles are sold in more than 30 countries.
The Complainant has owned the trademark COMMA since at least 2001. The trademark is registered in a number of countries in Europe for several different goods and for retail services related to fashion.
According to the WhoIs database, the Respondent registered the Disputed Domain Name on March 28, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name incorporates the Complainant’s registered trademark COMMA, in its entirety, and the additional word “fashion” describes the goods the Complainant offers under the trademark. Accordingly, the Complainant states that there is a likelihood of confusion with respect of the Complainant’s registered trademarks and the Disputed Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. The Complainant states that it has not authorized the Respondent to use the COMMA trademark. Moreover, the Complainant states that the Respondent is not known by the name “commafashion”. Finally, the Complainant states that the Disputed Domain Name is not in use but parked with Sedo and being offered for sale. According to the Complainant, the Respondent’s intent is to gain profit by registering and selling domain names that are similar to well known trademarks, such as the COMMA trademark.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. The Complainant states that the term “commafashion” is not descriptive for the goods in question; therefore, the only possible conclusion is that the Respondent registered the Disputed Domain Name because of the similarity to the Complainant’s well-known COMMA trademark. Moreover, the Complainant owns the domain where fashion goods are displayed and sold on the corresponding website.
In view of the foregoing, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions in the Complaint. 6. Discussion and Findings A. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreement for the Disputed Domain Name is in Korean.
The Complainant requests that the language of the proceeding should be English. The Complainant contends that (1) the Disputed Domain Name contains the English word “fashion”, and the content of the website connected to the Disputed Domain Name is also in English; (2) all exhibits of the Complaint are in English and thus, English is the reasonable and appropriate language for the administrative proceeding; (3) the Complainant is not able to communicate in Korean; and (4) if the Complainant were to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 11 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint and annexes have already been submitted in English and the Panel is fully capable of understanding the English language submissions;
2) The Disputed Domain Name uses the English word “fashion”; and
3) Since no formal Response has been filed despite the Complainant’s submission of a Korean-language Complaint, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings; and
4) All of the Center’s communications to the Parties have been transmitted in both English and Korean. B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
Here, the Panel finds that the Complainant owns the registered trademark COMMA. The Disputed Domain Name contains the mark COMMA in its entirety. Prior UDRP panels have found such entire incorporation of the relevant trademark to be sufficient to establish confusing similarity. See Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
The addition of the word “fashion” to the trademark as part of the Disputed Domain Name does not negate confusing similarity but rather enhances it in that the term “fashion” is a descriptive term for the goods offered by the Complainant under the COMMA trademark. Thus, there is a strong likelihood that Internet users will confuse the Disputed Domain Name with the Complainant’s trademark and the goods and services of the Complainant in its customary field of business activity.
The addition of a Top-Level Domain such as “.com” as part of a domain name is technically required. Thus, it is well established that such element may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant alleges that the Respondent has no relationship or economic link with it nor has the Respondent received any license or been permitted to use the COMMA trademark. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has any legitimate interest in the trademark. Further, the evidence supports that the Complainant has trademark rights on the term “comma” in the field of fashion, and the term “comma” has no meaning in the fashion field other than the Complainant’s trademark right and related business.
Finally, there is no evidence of any active or prior use of the Disputed Domain Name by the Respondent other than in connection with a website featuring pat-per-click links and the option to purchase the domain name. Specifically, under the circumstances, there is no evidence of the Respondent using the Disputed Domain Name for a bona fide offering of goods or services; other than to offer it for sale. Neither is there any evidence of legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the Disputed Domain Name.
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 Name. D. Registered and Used in Bad Faith
The Panel will deal with the issue of bad faith registration and bad faith use separately below.
First, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
Given the distinctive character of the Complainant’s business, the Panel finds it implausible that the Respondent was not aware of the Complainant and the Complainant’s activities when registering the Disputed Domain Name. Further, the Panel finds that the Respondent must have been aware of the fact that it chose a name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the Disputed Domain Name was registered in bad faith.
Second, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.
Given the extent of use of the Complainant’s trademark and the distinctive nature of the mark in relation to clothing and fashion accessories, the Panel finds it implausible that the Respondent registered the Disputed Domain Name without prior knowledge of the Complainant and the Complainant’s COMMA trademark.
This is underlined by the fact that the Complainant has registered trademarks and has owned the domain name since 2001 – several years before the Respondent registered the Disputed Domain Name. The Panel therefore finds that the Respondent by its registration and its use of the Disputed Domain Name, intentionally created a likelihood of confusion between the Disputed Domain Name and the Complainant’s trademark with the purpose of attracting Internet users to the website for commercial gain, e.g., to sell the Disputed Domain Name.
Consequently, in the absence of contrary evidence or explanations from the Respondent, the Panel finds that the COMMA trademark, which has acquired a substantial reputation in the fashion industry, is not one that the Respondent would have adopted – especially not with the word “fashion” - other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the Disputed Domain Name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the Disputed Domain Name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its services, and to profit there from.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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.
Andrew J. Park
Sole Panelist
Date: July 20, 2015
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