The Complainant is ShopInvest NV of Waasmunster, Belgium, represented by De Clercq & Partners, Belgium.
The Respondent is Hong Young Jin of Daegu, Republic of Korea, self-represented. 2. The Domain Name and Registrar
The disputed domain name ("Disputed Domain Name") is registered with Inames Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 15, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 16, 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 July 20, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On July 22, 2015, the Complainant requested for English to be the language of the proceeding. On the same day, the Respondent requested for Korean to be 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 formally notified the Respondent of the Complaint in both English and Korean, and the proceeding commenced on July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Response was filed with the Center on August 12, 2015.
The Center appointed Andrew J. Park as the sole panelist in this matter on August 31, 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, ShopInvest NV of Waasmunster, Belgium, is a Belgian retail clothing store operating under the company name E5 MODE. The Complainant sells clothing and related objects at dozens of stores operating under the E5 MODE name in Europe (including the Benelux Union) and online at "". The Complainant registered and owns several Community Trade Marks for the mark E5 MODE covering goods in classes 25, 35, and 42 (e.g., Registration Nos. 012671831, 011736345 and 006188619). The Complainant first obtained trademark protection for the mark E5-Mode in the Benelux union on February 1, 1989. The Complainant has owned and operated under the domain name since 1996. According to the Complainant, the Complainant also owned and operated under the Disputed Domain Name from 1996 until the domain name registration expired in 2014, and the Disputed Domain Name was registered on June 30, 2014, to the Respondent, Hong Young Jin of Daegu, Republic of Korea. The Panel accepts these contentions. The Complainant sent the Respondent a cease-and-desist letter on November 3, 2014. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant because:
1) the Disputed Domain Name is identical to the Complainant's registered trademark E5 MODE. Specifically, the Complainant contends that it has acquired both statutory trademark rights in the name E5 MODE based on its registered Community Trade Marks, as well as extensive use of the trademark in its advertising, promotional, and service materials, and that the Disputed Domain Name is identical to the Complainant's trademark;
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the E5 MODE mark. The Respondent has been using the Disputed Domain Name in a manner that is likely to mislead and deceive consumers into believing that it has a sponsorship, affiliation or approval from or with the E5 MODE trademark owners/licensees/customers when this is not the case; and
3) the Disputed Domain Name was registered and is being used in bad faith. Specifically, the Complainant contends that the E5 MODE brand and trademark are well-known in the relevant fashion and clothing industry, which the Respondent must have been aware of because it operates a clothing website. The Complainant contends that the Respondent registered the Disputed Domain Name in an effort to profit on the name, fame, reputation and goodwill associated with the Complainant's trademark. The Complainant contends that this is evidenced by the fact that the Respondent is actively advertising on the website for the Disputed Domain Name that the Disputed Domain Name is for sale. B. Respondent
The Respondent contends that the Disputed Domain Name should not be transferred to the Complainant because:
1) there are many, many third parties who use "e5mode". Thus, unless all these other users are copiers of the Complainant's mark, it is unfair to single the Respondent out;
2) there are several domain name registrations for , , etc. dating back to 1996. Since the Complainant's "e5mode" domain name registrations were registered ten years following the earliest such third party registration, the Complainant must have copied another based on Complainant's line of argument;
3) the Disputed Domain Name is merely a noun used by a lot of different parties and if the Respondent does not have any legitimate rights, then neither does the Complainant, and only the original registrant from 1996 should have legitimate rights;
4) the Complainant failed to register , , or other domain names incorporating highly used Top-Level Domains; and
5) the Respondent searched for the Complainant on the Internet and could not locate it, which the Respondent argues is evidence that he did not copy its name. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. A. Language of the Proceedings
The Registration Agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English, and it would cause undue delay and expenses if the Complainant were required to translate the Complaint into Korean;
2) The Disputed Domain Name resolves to a website that includes links in English; and
3) The Disputed Domain Name includes an offer for sale, which is in English.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English. 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.
The Panel finds that the Complainant has established that it has registered rights to the trademark E5 MODE. The Panel is also satisfied that the Complainant has unregistered trademark rights to E5 MODE based on its longstanding use of the name in the clothing and fashion industry.
The Disputed Domain Name is identical to the Complainant's trademark E5 MODE.
The addition of a Top-Level Domain such as ".com" after 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 identical to the Complainant's trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to at least 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 his 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.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Respondent registered the Disputed Domain Name on June 30, 2014 — decades after the Complainant established trademark rights for E5 MODE. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its E5 MODE trademark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that he is commonly known by the Disputed Domain Name or has acquired any rights in the Disputed Domain Name. The Panel finds that the Respondent is improperly using the Disputed Domain Name to create a false impression that the Respondent is affiliated with the Complainant. The Disputed Domain Name includes several sponsored links (presumably pay-per-click) that redirect Internet users to websites relating to the fashion and clothing industry, which compete with the Complainant. Moreover, the Respondent's use of the E5 MODE mark appears to be bait-and-switch, diverting the Complainant's Internet customers to its webpage, which identifies that the Disputed Domain Name is for sale. This clearly is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
The Panel has considered the Respondent's allegations, and 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. The registration of a domain name that is similar to a distinctive third-party trademark by the respondent, when the respondent has no relationship to that mark, may suggest bad faith. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319. Given the undisputed facts, the Panel finds it highly doubtful that the Respondent, who has no relationship to the E5 MODE trademark, would have registered the Disputed Domain Name shortly after the domain name registration expired (and then offered the Disputed Domain Name for sale) without having knowledge of the Complainant or the E5 MODE trademark. The only reasonable conclusion to draw is that the Respondent deliberately sought to attract some of the Complainant's customers to the Respondent's website, with the hope that at least some of them will click sponsored links for which the Respondent will be paid, and/or that someone would purchase the Disputed Domain Name (presumably the Complainant). This falls squarely within paragraph 4(b)(iv) of the Policy. See, e.g., Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
Bad faith can also be inferred based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto. Indeed, it has been established that the registration of a domain name incorporating a well-known trademark can itself constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of was unaware of the complainant's well-known NIKE trademark when registering the domain name).
Given the notoriety of the E5 MODE trademark in the relevant fashion and clothing industry, the Panel finds that it is implausible that the Respondent was unaware of the Complainant's trademark rights when registering the Disputed Domain Name shortly after the domain name registration had expired, providing links to related goods and services on the corresponding website which may compete with the Complainant. Consequently, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
Second, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.
The Panel finds that the only credible explanation for the use of the Disputed Domain Name is to take advantage of the similarity between it and the Complainant's well-known E5 MODE trademark, for commercial advantage (e.g., pay-per-click revenue and/or profit from selling the Disputed Domain Name). As mentioned above, the Respondent has no connection whatsoever to the E5 MODE trademark. Thus, it is the Panel's opinion that the Respondent must have been aware of the E5 MODE trademark and intentionally attempted to use it for commercial gain.
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: September 15, 2015
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