The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Park HyungJin of GimHaeSi, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2015. On June 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 8, 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 proceeding commenced on June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2015.
The Center appointed Dawn Osborne 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
The Complainant is a French industrial group operating worldwide and specializing in cosmetics and beauty for over a hundred years. It distributes its products in the Republic of Korea where the Respondent is domiciled.
In 2012, the Complainant launched the brand Steam Pod. It is used around the world by professionals and was elected the winner of best hair tool in 2013. The Complainant is owner of trade mark registrations for STEAM POD throughout the world including in the Republic of Korea, that predate the registration of the Domain Name.
The Domain Name was registered on January 31, 2013 after international magazines had already referred to the Steam Pod brand. The Domain Name resolves to a parking page displaying commercial links some of which are related to cosmetic products, including hair products and including both those of the Complainant and its competitors. The Domain Name is offered for sale at EUR 3,900 on the parking page attached to the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarized as follows:
The Complainant is a French industrial group specializing in cosmetics and beauty which recently celebrated its centenary. It is one of the world’s largest groups in the cosmetics business. Present in over 130 countries, it is present in every continent and distributes products in all sectors of the beauty industry. It distributes its products in the Republic of Korea where the Respondent is domiciled.
In 2012, the Complainant launched the brand Steam Pod. It is used around the world by professionals and was elected the winner of best hair tool in 2013. The Complainant is owner of trade mark registrations for STEAM POD throughout the world including in the Republic of Korea.
The Domain Name is identical or at least confusingly similar to the Complainant’s trade mark STEAM POD. The public would reasonably assume that the Domain Name would be owned or related to the Complainant.
The generic Top-Level Domain (“gTLD”) extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trade marks and the Domain Name.
The Respondent has no prior rights or legitimate interests in the Domain Name. The registration of the trade mark STEAM POD preceded registration of the Domain Name by years.
The Respondent is not commonly known by the name “Steam Pod”, is in no way affiliated with the Complainant and is not authorized or licensed to use the STEAM POD trade mark or to register the Domain Name. There is no use of the Domain Name for a bona fide offering of goods or services as the Domain Name resolves to a parking page displaying commercial links and some of them are related to cosmetic products, including hair products and including both those of the Complainant and its competitors. This is clearly commercial use, so there is no legitimate noncommercial or fair use of the Domain Name. The Respondent is not seriously interested in using the Domain Name since after its registration it has been offered for sale.
The Domain Name was registered on January 31, 2013 after international magazines had already referred to the Steam Pod brand. On the WhoIs database search, the Domain Name is described as “ - this website is for sale! - steam pod hair care Resources and Information” showing the Respondent is well aware of the Complainant, its STEAM POD trade mark and the Complainant’s field of activities.
The Respondent is linked to more than 15,000 domain names. The Respondent has been involved in several UDRP proceedings for domain names reproducing third parties’ trade marks and in which he has no rights or legitimate interests and transfer has been ordered. The Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name resolves to a parking page displaying commercial links some of which are related to cosmetic products, including hair products and including both those of the Complainant and its competitors. The Domain Name is offered for sale at EUR 3,900 on the parking page. It is clear that the chief intention is to derive profit by selling the Domain Name to the Complainant or its competitors. Further, the use of the Domain Name to divert Internet users and to direct them to a web page providing revenues through click-throughs evidences bad faith. The use of a well-known trade mark to attract users to a web site for commercial gain and competing products causing confusion constitutes a use in bad faith pursuant to the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or confusing similarity
The Complainant has trade mark registrations across the world for the STEAM POD word mark including in the Republic of Korea where the Respondent is based. The Domain Name is identical to the Complainant’s STEAM POD trade mark save for the gTLD “.com” which is not typically considered for these purposes under the Policy. As such the Panel holds that the Domain Name is identical to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response. He has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods or services, given its confusing use, as discussed below, and is not commonly known by the Domain Name. Nor is he making noncommercial or fair use of the Domain Name. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“(i) circumstances indicating that [the Respondent has] registered or [has] 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 complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;”
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why he would be entitled to register the Domain Name equivalent to the Complainant’s trade mark in the “.com” gTLD against a background where he has been ordered to transfer domain names containing the trade marks of others in other UDRP proceedings. Further, in the opinion of the Panel the use made of the Domain Name is confusing. The content on the page attached to the Domain Name shows that the Respondent is well aware of the Complainant, its trade marks and products. The site has been used for links to third party products and to promote products in the same industry as and referring to the Complainant.
In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Domain Name, the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant.
The Respondent’s offer to sell the Domain Name on the page also indicates bad faith under paragraph 4(b)(i) of the Policy and supports a finding of bad faith use and intent upon registration to profit through sale.
It seems that the Respondent has also been involved in a pattern of activity in registering domain names containing the trade marks of others and has been ordered to transfer such domain names under the Policy in other UDRP proceedings (paragraph 4(b)(ii) of the Policy).
As such, the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb 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 Domain Name be transferred to the Complainant
Dawn Osborne
Sole Panelist
Date: July 21, 2015
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