The Complainant is Philippe Starck of Cascais, Portugal, represented by France Harmonie, Luxembourg.
The Respondent is Lim Wonhwi of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (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 February 17, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 18, 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.
On February 22, 2016, 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 February 23, 2016, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request.
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 in both Korean and English of the Complaint, and the proceedings commenced on February 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 4, 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 Complainant, Philippe Starck, is a well-known French designer of products that range from furniture and lemon squeezers, to maga-yachts, hotels, and restaurants. The Complainant is also the registrant of the domain name , which is linked to its official website. In 2015, this website attracted nearly 700,000 viewers. Further, the Complainant is the owner of two trademarks for S+ARCKS (stylized) and STARCK. The two marks together, claim goods/services in International Classes 3, 8, 9, 11, 12, 18, 20, 21, 24, 28, 29, 30, 32, 35, 36, 37, 42, and 43, the earliest registration date of which goes back to December 22, 1994.
The Respondent has not responded to the Complaint. 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 confusingly similar to the Complainant’s registered trademarks S+ARCKS (stylized) and STARCK (collectively referred to as “STARCK”). Specifically, the Complainant contends that it has acquired statutory trademark rights in the name STARCK based on various international and community trademark registrations;
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Pursuant to trademark searches in the Republic of Korea and a company register search in Japan, the Complainant contends that there is no record of the Respondent using or being commonly known under the name “Starcks.”
3) the Disputed Domain Name was registered and is being used in bad faith. Specifically, the Complainant contends that the Respondent is using the Disputed Domain Name in a manner that is similar, if not identical in certain respects, to the Complainant’s official website and is thereby attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks and its official website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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; (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. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Language of the Proceeding
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 preliminary accepted the Complaint filed in English while noting that it would accept a Response filed in either Korean or English, subject to a final 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 is required to translate the Complaint into Korean;
2) The Disputed Domain Name is comprised of the Complainant’s mark and the English word “brand”; and
3) The Respondent has not objected to the Complainant’s request for English to be the language of the proceeding.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center’s preliminary acceptance of 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 common law trademark rights to STARCK based on its longstanding use of the name in the designer industry and its use of STARCK as a dominant portion of its domain name , and invested in its marketing and branding of the mark STARCK. Moreover, the Panel recognizes that the Complainant has statutory rights in the mark STARCK registered in various jurisdictions.
The Disputed Domain Name is similar to the Complainant’s trademark STARCK. First, the dominant and distinctive element of the Disputed Domain Name – “starcks” – is effectively identical to the Complainant’s S+ARCK’S (stylized) mark and is nearly identical to its STARCK mark, the only difference of which is the addition of the letter “s” to the word “starck” in the Disputed Domain Name.
Second, the primary difference between the Disputed Domain Name and the Complainant’s STARCK or S+ARCK’S (stylized) mark is the added hyphen and “brand” in the Disputed Domain Name. The word “brand” is considered a descriptive and non-distinctive element of the Disputed Domain Name, and therefore, although the Disputed Domain Name consists of the added hyphen and the word “brand,” the Disputed Domain Name as a whole nevertheless remains confusingly similar to the Complainant’s STARCK marks.
Finally, the addition of a generic 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 confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to 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 may be 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the Disputed Domain Name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Here, the Panel finds that the Complainant has made out an unrebutted prima facie case.
The Complainant has established that the Respondent has no relationship with or authorization from the Complainant to use its mark and that there is nothing in the record to suggest that the Respondent has been commonly known by the Disputed Domain Name. The Panel’s view is that these facts may be taken as true in the circumstances of this case provided that they have not been denied by the Respondent.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith.
“(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the Disputed Domain Name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel reasonably finds that since the Complainant’s marks are widely known and arbitrary, it is very unlikely that the Respondent, at the time of registration or purchase of the Disputed Domain Name, was not aware of the Complainant’s trademark.
Bad faith can 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 (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the Disputed Domain Name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, is also sufficient evidence of 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).
Furthermore, the Panel recognizes the Complainant’s assertion that the website to which the Disputed Domain Name resolves contains elements of the Complainant’s own website, including similarities in the “look and feel” of the websites and, most notably, the use of the stylized logo “s+arcks”, which is nearly identical to the Complainant’s S+ARCK’S (stylized) registered mark.
These facts show that the Respondent knew of and has sought to take unfair advantage of the similarity between the Disputed Domain Name and the Complainant’s trademark, which is not descriptive or generic, in order to unfairly attract Internet users to its website. The website appears to promote various design related services offered by the Respondent, in competition with the Complainant.
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the Disputed Domain Name and the Complainant’s trademark, in order to attract Internet users to its website 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: April 19, 2016
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