The Complainants are Spigen Korea Co., Ltd. of Seoul, Republic of Korea, and Spigen Inc. of Irvine, California, United States of America (“US”), represented by East West Law Group, PC, US.
The Respondent is Domain Admin, Whois Privacy Corp of New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2016. On January 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 2, 2016. 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 Complainants are a company registered in the Republic of Korea and its US subsidiary, who manufacture and sell cell phone, mobile device protective cases and other accessories internationally under the trademark SPIGEN.
Details of registration of the trademark SPIGEN in the US and many other countries have been provided to the Panel, including those of US trademark SPIGEN, registered on November 27, 2012, for goods and services in international class 9.
Since 2007, the Complainants have spent many millions of dollars (US) in advertising, promoting and developing the trademark SPIGEN, and the trademark is now recognized in the mobile phone industry internationally.
The disputed domain was registered on September 15, 2015. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is confusingly similar to their SPIGEN trademark, containing the trademark in its entirety with the mere addition of the (hyphenated) descriptive and/or non-distinctive word “-case”.
The Complainants state that they have at no time consented to the use of their SPIGEN trademark, or to registration of any domain name incorporating their SPIGEN trademark by the Respondent. The Complainants further allege that, to the best of their knowledge, the Respondent is not generally known by the disputed domain name, and that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainants allege that the disputed domain name has been registered in bad faith, and is being used in bad faith in connection with a website offering the sale of goods competing with the Complainants’ goods. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
In the Panel’s opinion, the Complainants have demonstrated clear rights to their SPIGEN trademark. The disputed domain name incorporates the Complainants’ SPIGEN trademark, with the mere addition of the element “-case”. It is well established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive elements to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, “-case” is, in the Panel’s opinion, clearly descriptive or non-distinctive. The Panel, consequently, finds that the Complainant’s have satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity provided by these proceedings to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Furthermore, especially as the website at the disputed domain name uses the Complainants’ trademark and makes no effort to clarify or disclaim the relationship between the Respondent and the Complainants, the Panel finds no other basis in the record to find any Respondent rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant’s have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainants’ trademark was incorporated in its entirety, with no additions beyond descriptive or non-distinctive elements and the legally irrelevant “.com” gTLD indicator, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
It is well-established in prior decisions under the UDRP that use of a disputed domain name in connection with a website offering competing goods to those sold by the complainant under the complainant’s trademark constitutes use in bad faith. The Panel agrees with this well-established finding, and, in the circumstances of the present case, finds that the disputed domain name is being used in bad faith to target the Complainants.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of 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 Complainants.
George R. F. Souter
Sole Panelist
Date: March 13, 2016
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