The Complainant is Get Fresh Cosmetics Ltd t/a Bomb Cosmetics of Dorset, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Adlex Solicitors, UK.
The Respondent is Yongwan Ji of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2016. On February 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 26, 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 29, 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 the same day, the Complainant confirmed its request for English to be the language of the proceeding as indicated in the Complaint.
The Respondent has not submitted its language 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 of the Complaint, in both English and Korean, and the proceeding commenced on March 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 11, 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, Get Fresh Cosmetics LTD t/a Bomb Cosmetics, is a UK Private Limited Company incorporated on June 2, 1998, and since that time, has been engaged in the business of manufacturing and retail of handmade bath, body, face, shower and other cosmetic products under the name “Bomb Cosmetics”. The Complainant has been selling its products in approximately 45 countries under the Bomb Cosmetics brand, and has been trading under the name “Bomb Cosmetics”. Further, the Complainant acquired in 2004 and has been using it to host its main website.
The Complainant registered and owns the following trademark registrations:
1. Community Registration
Mark: BOMB COSMETICS
Registration No.: 001155803
Registration Date: June 4, 1999
International Class: 3
2. Community Registration
Mark: BOMB COSMETICS
Registration No.: 006362024
Registration Date: September 6, 2007
International Classes: 3, 4 and 5
3. U.S. Registration
Mark: BOMB COSMETICS
Registration No.: 3891843
Registration Date: June 5, 2009
International Classes: 3, 4 and 5
4. Chinese Registration
Mark: BOMB COSMETICS
Registration No.: 3525735
Registration Date: April 15, 2003
International Class: 3
The Disputed Domain Name was registered on February 15, 2016, and it resolves to a website with sponsored links, some of which lead to the Complainant’s competitors as well as to websites offering the Complainant’s products. 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 BOMB COSMETICS. Specifically, the Complainant contends that it has acquired registered trademark rights in the name BOMB COSMETICS, and has engaged in extensive trading and marketing activities. Therefore, the Complainant has acquired substantial reputation and good will in the distinctive name “Bomb Cosmetics” such that it is recognized by the public as the Complainant’s cosmetics retail business and the Disputed Domain Name contains the Complainant’s trademark in its entirety.
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 BOMBS COSMETICS mark. The Respondent’s website at the Disputed Domain Name contains links that lead to the Complainant’s competitors and other companies in the same business as the Complainant; and
3) the Disputed Domain Name was registered and is being used in bad faith. Specifically, at the time of registration of the Disputed Domain Name by the Respondent in 2016, the Complainant was already conducting business under the domain name and therefore the Respondent must have been well aware of the Complainant’s business when the Respondent registered the Disputed Domain Name. The Complainant also contends that the Respondent is trying to take advantage of the trademark BOMB COSMETICS to draw traffic to its website and to thereby commercially profit by misleading consumers who are searching for information on the Complainant’s business. 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: (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. 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 preliminarily accepted the Complaint as filed in English, and a response in either English or Korean, 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 expense 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 Respondent corresponded with the Complainant in English prior to this proceeding which shows that the Respondent can understand English.
In light of these circumstances, the Panel concludes that it will (1) 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 mark and, second, is the Disputed Domain Name identical or confusingly similar to that mark.
The Panel finds that the Complainant has established that it has registered rights to the trademark BOMB COSMETICS and that the Disputed Domain Name is identical to the Complainant’s trademark BOMB COSMETICS. The addition of a generic Top-Level Domain such as “.net” 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 February 15, 2016 — more than a decade after the Complainant established its business presence and began using the BOMB COSMETICS mark. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its BOMB COSMETICS 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 Complainant’s competitors or other companies that are in the same business as the Complainant. This clearly is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
The Panel 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, and the Respondent has not filed a Response.
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 BOMB COSMETICS trademark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the BOMB COSMETICS 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 the sponsored links for which the Respondent will be paid, and/or sell the Disputed Domain Name for a profit (presumably to 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.
As explained above, the Respondent registered the Disputed Domain Name more than a decade after the Complainant established its business presence, also online, under the BOMB COSMETICS trademark. Under such circumstances, and having considered paragraph 3.1 of the WIPO Overview 2.0, the Panel finds registration in bad faith, as the Respondent is clearly aware of the Complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the Disputed Domain Name and the Complainant’s mark.
Second, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.
The Panel finds that the two credible explanations for the use of the Disputed Domain Name is first, to take commercial advantage of the similarity between it and the Complainant’s well-known BOMB COSMETICS trademark (e.g., pay-per-click revenue and/or profit from selling the Disputed Domain Name). In addition, the Panel notes that the Respondent not only listed the Disputed Domain Name for sale, but actually contacted the Complainant for the purpose of selling the Disputed Domain Name. The Respondent’s selling price of USD 2,500 is considered excessive relative to the reasonably nominal cost to register the Disputed Domain Name and to maintain it for a very short period of ownership.
Finally, as mentioned above, there is nothing in the record to show that the Respondent has any connection whatsoever to the BOMB COSMETICS mark. Thus, it is the Panel’s opinion that the Respondent must have been aware of the BOMB COSMETICS 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: April 26, 2016
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