The Complainant is Johnson Creek Enterprises, LLC of Hartland, Wisconsin, United States of America ("United States"), represented by Whyte Hirschboeck Dudek, SC, United States.
The Respondent is ch of Namyayju-si, Gyeonggi-do, 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 May 28, 2015. On May 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 1, 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 proceedings should be English; or, submit the Complaint translated into Korean; or, submit a request that English be the language of proceedings. On June 3, 2015, the Complainant submitted a request that English be the language of proceedings. The Respondent did not provide any submissions in this regard.
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 in both English and Korean, and the proceeding commenced on June 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2015.
The Center appointed Moonchul Chang 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.
On July 20, 2015, due to exceptional circumstances, the Panel extended the due date for rendering its Decision until July 26, 2015. 4. Factual Background
The Complainant is Johnson Creek Enterprises, LLC, a United States corporation which conducts business of manufacturing and selling e-cigarette related products. The Complainant owns multiple trademark registrations for the marks such as JOHNSON CREEK, JOHNSON CREEK ORIGINAL SMOKE JUICE, and ORIGINAL SMOKE JUICE, in numerous countries including the Republic of Korea and the United States. The Complainant has mainly used the domain name in connection with its business.
According to the publicly available WhoIs information, the disputed domain name was registered on April 22, 2015. 5. Parties' Contentions A. Complainant
The Complainant contends that:
(1) The disputed domain name is confusingly similar to the Complainant's trademarks such as JOHNSON CREEK, JOHNSON CREEK ORIGINAL SMOKE JUICE, and ORIGINAL SMOKE JUICE. The disputed domain name incorporates the Complainant's distinctive marks, causing confusion between the mark and the disputed domain name.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not licensed or authorized to use the Complainant's marks. The Respondent is not using the disputed domain name actively for noncommercial use or in connection with a bona fide offering of goods or services. The Respondent uses the disputed domain name to run the website selling products that are competitive with the Complainant's products.
(3) The disputed domain name was registered and is being used by the Respondent in bad faith. Firstly, the Respondent registered the disputed domain name with actual or presumable knowledge of the Complainant's marks and business. Secondly, the Respondent's use of the disputed domain name for a website to sell e-cigarette related products indicates that it intentionally attempts to attract Internet users to its website for commercial gain by creating confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of his website. Thirdly, there is no conceivable legitimate interest in the use of the disputed domain name by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of Proceedings
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel determines otherwise. In this present case, the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean.
The Complaint was submitted in English. The Center immediately notified the parties, in both Korean and English, of the procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding in English. However, the Respondent did not respond to the Center's notification, and then defaulted.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties' level of comfort with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case. A. Identical or Confusingly Similar
The disputed domain name incorporates the distinctive components of Complainant's trademarks such as JOHNSON CREEK ORIGINAL SMOKE JUICE and ORIGINAL SMOKE JUICE. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name itself to determine likelihood of Internet user confusion, see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition 2.0 ("WIPO Overview 2.0"). This Panel considers that the disputed domain name is confusingly similar to the Complainant's trademarks. The generic Top-Level Domain (gTLD) suffix ".com" can be typically disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl,WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent. (See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Firstly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In this present case, the Respondent has used the disputed domain name for a website selling e-cigarette related products that are competitive with the Complainant's goods without the Complainant's permission.
Secondly, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name "has been registered and is being used in bad faith". As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, considering that the disputed domain name includes the Complainant's marks and noting the use of the website targeting the Complainant's business, it is highly likely that the Respondent was aware of the Complainant's marks and business when he registered the disputed domain name.
Secondly, the Respondent has used the disputed domain name in bad faith for a website displaying the Complainant's marks and selling e-cigarette related products that are competitive with the Complainant's goods without the Complainant's permission.
Finally, by using the disputed domain name for a website to sell e-cigarette related products it is presumed that the Respondent intentionally attempts to attract Internet users to his website, for commercial gain, by creating confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its website.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name in accordance with paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case. 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.
Moonchul Chang
Sole Panelist
Date: July 26, 2015
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