The Complainant is Mouvement pour une Organisation Mondiale de l’Agriculture S.A.S. of Paris, France, represented by AARPI Clairmont Avocats, France.
The Respondent is Noorinet of Daegu, 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 August 4, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 August 6, 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 August 10, 2015, the Complainant requested for English to be the language of the proceeding. On August 13, 2015 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 and 4, the Center formally notified the Respondent of the Complaint in both English and Korean, and the proceeding commenced on August 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 8, 2015.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 24, 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 company which owns two registered trademarks involving the term “MOMAGRI”, including MOMAGRI (French National Trademark Application No. 3442112 filed on July 24, 2007, and which covering services classes 35, 41, 42 and 44); and MOMAGRI (International Trademark Application No. 932302 filed on January 19, 2007 for the European Union, United States of America and Switzerland, covering services classes 35, 41, 42 and 44).
In addition to its registered trademarks, the Complainant also owns and operates the following domain names which are composed totally or partially of the term “MOMAGRI”:
; ; ; ; ; ; ; ; .
The Complainant uses its trademarks in connection with services linked to agricultural policies. The term “MOMAGRI” is an abbreviation of the Complainant’s company name (Mouvement pour une Organisation Mondiale de l’Agriculture).
The Respondent registered the disputed domain name on January 12, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks MOMAGRI in which the Complainant has rights. The Complainant also notes that it was the first registrant of the disputed domain name and held it since 2005, and that after it failed to timely renew it in 2009, the disputed domain name was registered by the Respondent. The Complainant also notes that the word “MOMAGRI” is an original word and does not exist in the French language. The Complainant further notes that the Complainant is mostly known by its abbreviated name “MOMAGRI” and that the disputed domain name entirely reproduces the MOMAGRI trademarks, as well as the registered domain names of the Complainant, and that they are visually identical and pronounced in the exact same manner.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent has not been licensed, authorized, or otherwise permitted by the Complainant to use any of the prior MOMAGRI trademarks, or to register any domain name incorporating the MOMAGRI trademarks. The Complainant further contends that there is no bona fide offering of goods or services under the disputed domain name. The Complainant notes that the disputed domain name is used solely for the purpose of attracting users to a parking page on which commercial links to competitive commercial websites are displayed, and on which the Respondent offers to sell the disputed domain name to the highest bidder. The Complainant further notes that the commercial links on the webpage of the disputed domain name are all connected to the agriculture field in which the Complainant operates its business, and that each of these links resolve to another parking page which display links in the French language mostly related to agriculture.
The Complainant also contends that the disputed domain name was registered in bad faith and is being used in bad faith. The Complainant alleges that the disputed domain name was registered in bad faith, noting that the term “MOMAGRI” is a distinctive acronym of the Complainant’s company name with no meaning in the French language. The Complainant also notes that there is a history of bad faith findings in cases involving the Respondent. Further, the Complainant contends that the Respondent is using the disputed domain name in bad faith because the Respondent is intentionally creating a likelihood of confusion between the disputed domain name and the Complainant’s trademarks for the purpose of attracting Internet users to its website for the commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Issue: Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and the Complainant submitted arguments as to why English is more appropriate, citing a number of factors.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise its discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432.
First, the Panel notes that English does not appear to be the mother tongue of either party. Given the fact that the Complainant is based in France and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this Decision. The Panel also notes that the disputed domain name displays its content in English and in French. The Panel additionally notes that the Respondent has been involved in at least nine (9) past UDRP proceedings in which English was accepted as the language of the proceeding, without this fact being contested by the Respondent. Further, the Panel notes that the Respondent has chosen not to formally participate in this proceeding.
For the above-mentioned reasons, the Panel concludes that it will proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English, and issue a decision in English.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by a respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds trademark registrations for MOMAGRI which are closely associated with its business activities.
The disputed domain name wholly incorporates the Complainant’s trademark with the addition of the generic Top-Level Domain (gTLD) “.com”. It is well established that the addition of the gTLD “.com” is without legal significance when comparing the disputed domain name to the Complainant’s registered trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins,WIPO Case No. D2013-0603; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element has been established. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, prior UDRP decisions have held that once a complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests applies, the burden of production on this factor shifts to the respondent to rebut the showing (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; see also International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks. The Panel agrees that this supports that the Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102 (finding that an absence of license permitting to use complainant’s trademark or to apply for any domain name incorporating any such mark is prima facie evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Furthermore, the evidence and circumstances do not support a finding that the Respondent is commonly known by the domain name, or that the Respondent is making a legitimate noncommercial or fair use of the domain name.
The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b)(iv) of the Policy. In the present case, the disputed domain name is linked to a domain parking service which had sponsored links to the Complainant’s competitors’ websites. On this parking service page, the Respondent has also offered the disputed domain for sale. The fact that the domain name parking service had links to the Complainant and the Complainant’s competitors’ websites shows that the Respondent was aware of the Complainant, its products and its trademarks, and intentionally created a likelihood of confusion. The mere fact of diverting users in this misleading manner is evidence of bad faith.
The Panel further notes that there is a history of bad faith findings in cases involving the Respondent. See Association des Centres Distributeurs E. Leclerc – A.C.D Lec v. Noorinet,WIPO Case No. D20155-0024, LEGO Juris A/S v. Noorinet,WIPO Case No. D2010-1705; Kshocolat Ltd v. Nurinet,WIPO Case No. D2010-0577; Key Relocation Center AB v. Nurinet,WIPO Case No. D2013-1885; Microsoft Corporation and Skype v. Nurinet (Noorinet),WIPO Case No. D2012-0536. Having considered the Respondent’s registration of multiple confusingly similar domain names to well-known trademarks, the Panel finds that these registrations constitute a pattern of bad faith registration and use under paragraph 4(b) of the Policy. See Audi AG v. Noorinet,WIPO Case No. D2014-1879.
For the reasons given above, the Panel finds that the third and final element of the Policy has been established. 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.
Thomas P. Pinansky
Sole Panelist
Date: October 7, 2015
Full & Egal Universal Law Academy