The Complainants are Spigen Korea Co., Ltd. of Geumcheon-gu, Seoul, the Republic of Korea (“Korea”) and Spigen, Inc. of Irvine, California, United States of America (referred to as “the Complainant”), represented by East West Law Group, PC, United States of America.
The Respondent is O nederland eenmanszaak, of Rotterdam, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2015. On May 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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.
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 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on July 15, 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
Both Complainants are members of the Spigen group of companies which is one of the leading manufacturers and sellers of cell phone and mobile device protective cases in the world. The Complainant group owns numerous trade mark registrations worldwide for or including its SPIGEN mark. In particular, the first Complainant owns United States trade mark registration under numbers 4248155 for the SPIGEN logo and word mark dating from February 17, 2012 and the second Complainant owns trade mark registration number 86103698 for the SPIGEN word mark. The second Complainant also owns United States trade mark registration 4519528 for the SLIM ARMOUR mark. The second Complainant has owned the domain name since 2005 and operates a website for the Complainant’s products from this domain name.
The Respondent, based in the Netherlands, registered the disputed domain name on September 1, 2014. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in the SPIGEN mark as noted above and that since 2007 it has spent spent millions of dollars and expended years of effort in advertising, promoting and developing the trademarks SPIGEN and SLIM ARMOR worldwide. It submits that the disputed domain name wholly incorporates its SPIGEN mark and is therefore confusingly similar to that mark.
The Complainant submits that it has never authorised the Respondent to use its SpIGEN mark or to register the disputed domain name and that there is no evidence that the Respondent has developed any rights in the SPIGEN or SLIM ARMOUR marks or is making a legitimate noncommercial or fair use of the disputed domain name. It notes that the Respondent is using the disputed domain name to resolve to its website at at which the Respondent displays numerous unauthorised copies of the Complainant’s own advertising images of its products. The Complainant says that the Respondent sells cell phones bearing the marks SPIGEN or SLIM ARMOR at the website and that these products are a mix of the Complainant’s genuine products and of counterfeit products. The Complainant says this is not a legitimate business activity and accordingly it submits that the Respondent has no legitimate interests in the disputed domain name.
The Complainant says that the Respondent registered the disputed domain name on September 1, 2014 well after the Complainants began using the SPIGEN and SLIM ARMOR marks and domain names. It says that in view of the infringing content on the Respondent’s website and its sale of both genuine and counterfeit products there is no question but that the Respondent was aware of the Complainant’s mark and rights at the date of registration of the infringing domain name and therefore the registration must have been made in bad faith.
The Complainant submits that the Respondent is a competitor of the Complainant and is seeking to lead consumers to conclude that the Respondent’s goods are exclusively or jointly developed, licensed, or certified by, or are otherwise associated or affiliated with the Complainant. Consumers, especially those who learn about the Respondent’s website by word of mouth, are likely to be misled as to the source, sponsorship, or affiliation of the Respondents’ goods and services. As a result says the Complainant, the Respondent is using the disputed domain name in connection with to intentionally attempt to attract, for commercial gain by creating a likelihood of confusion with the Complainants’ name and marks as to the affiliation or endorsement of that website which amounts to use in bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in its SPIGEN mark under United States trade mark registration number 4248155 and under trade mark registration number 86103698. The disputed domain name wholly incorporates this mark with the addition of the common English word “store”. The addition of this word does not in any way distinguish the disputed domain name from the Complainant’s SPIGEN mark as noted in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
As a result the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has not authorised the Respondent’s use of its SPIGEN mark and that there is no evidence to suggest that the Respondent has any rights in the SPIGEN mark, or is making a legitimate noncommercial or fair use of the disputed domain name.
The evidence before the Panel points to the Respondent using the disputed domain name to resolve to a domain name at at which it uses copies of the advertising photographs on the Complainant’s website to offer for sale, either the Complainant’s genuine products, or counterfeit versions of its products. The Complainant has submitted evidence to demonstrate that SLIM ARMOUR is one of its key trade marks for its products. The Complainant additionally submits that it has never authorised the Respondent to use this mark, to reproduce its photographs, or to distribute its products and notes that the Respondent is simply using its trade marks and intellectual property in bad faith in order to confuse internet users into thinking that they are dealing with the Complainant and buying products from the Complainant, when this is not the case.
The Panel considers that the Complainant has therefore made out a prima facie case, as it is required to do under this element, that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence before the Panel to rebut the Complainant’s case and neither are there circumstances to suggest otherwise. Accordingly and also considering the Panel’s findings in relation to bad faith under Part C below, the Panel finds that the Complainant has successfully made out its case under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on September 1, 2014, more than 18 months after the Complainant first filed its SPIGEN mark (registration number 4248155) in the United States and many years after the Complainant submits that it first started using its mark in around 2007 and also after registration of the Complainant’s own domain name at .
The Respondent is clearly using the disputed domain name to resolve to a website that masquerades as if it is the Complainant’s. At this website there is an unauthorized use of the Complainant’s trade marks (including the SPIGEN and SLIM ARMOUR marks) and of its’ advertising photographs. Both genuine and counterfeit examples of the Complainant’s products are offered from the website. The very strong inference is that the Respondent was very well aware of the Complainant’s mark and rights at the date of registration of the disputed domain name. The Panel therefore infers on the balance of probabilities that the disputed domain name was registered in bad faith.
The evidence before the Panel is that Internet users clicking on the disputed domain name are re-directed to a website at “www.” at which the Complainant’s trademarks are used without authority and infringing copies of its advertising photographs are displayed in order to sell both genuine and counterfeit versions of the Complainant’s products. The overwhelming impression is that the Respondent is using itself, or is facilitating the use by someone else, of the disputed domain name, in connection with in order to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainants’ name and marks as to the affiliation or endorsement of that website, or of the products advertised on it. This amounts to evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy and is exactly the sort of example of conduct in bad faith and of cybersquatting that the Policy was designed to combat.
Accordingly the Panel finds that the Complaint also succeeds under the third element of the Policy. 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 either of the Complainants.
Alistair Payne
Sole Panelist
Date: July 21, 2015
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