The Complainant is Nununu Baby Ltd. of Ramat Hasharon, Israel, represented by Soroker Agmon Nordman, Advocates & Patent Attorneys, Singapore.
The Respondent is Noorinet of Gyeongsangbuk-do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Megazone Corp., dba HOSTING.KR (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2016. On November 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 and that Korean is the language of the Registration Agreement.
On December 1, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On December 2, 2016, the Complainant requested that English be the language of the proceeding. The Respondent requested that Korean be the language of the proceeding on December 5, 2016.
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 proceedings commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. On December 14, 2016, the Respondent requested the extension of the Response due date. In accordance with paragraph 5(b) of the Rules, the Center extended the Response due date until December 31, 2016.
The Response was filed with the Center on December 30, 2017.
On January 12, 2017, the Complainant submitted a Supplemental Filing.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 13, 2017. 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 well-known fashion company based in Israel. It has been using the mark NUNUNU since 2006 and has been selling clothing for children and infants under the NUNUNU trademark worldwide ever since, and in the Republic of Korea since as early as 2010.
The Complainant owns multiple trademark registrations around the world, including in the United States of America for the NUNUNU mark registered on January 5, 2016 and August 9, 2016 (Reg. Nos. 4,883,006 and 5,015,566, respectfully). In addition, the Complainant has a pending International application for the NUNUNU mark that was filed on April 12, 2016 that designates Korea.
Through the Complainant's investments in marketing and advertising, including a significant Internet presence, and through its excellent reputation, the Complainant's goods bearing the NUNUNU trademark have gained vast goodwill.
The facts of record do not show the nature of the Respondent's business activities.
The disputed domain name was first created on October 29, 2007, and according to the Complainant's evidence showing a full WhoIs report of registrant changes, was subsequently transferred to the Respondent on or about November 2, 2013. The disputed domain name had resolved to a parking page with pay-per-click ("PPC") links. 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 or confusingly similar to the Complainant's NUNUNU trademark.
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name on the grounds that the Respondent is not known by the NUNUNU trademark; the Complainant did not authorize nor otherwise permit the Respondent to use the disputed domain name or any other domain name that incorporates the NUNUNU mark; the Complainant did not dispose of the disputed domain name; the Respondent has no bona fide offering of goods or services in respect of the disputed domain name; and the Respondent is not using the disputed domain name for legitimate noncommercial or fair use.
3) the disputed domain name was registered and is being used in bad faith. First, the Respondent registered the disputed domain name for the purpose of attracting, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's NUNUNU trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or services on the Respondent's website.
Second, the Respondent acquired the disputed domain name primarily for the purpose of selling or otherwise transferring it to the Complainant as the owner of the NUNUNU trademark or to its competitor, and to prevent the Complainant from using its NUNUNU trademark in a corresponding domain name.
Finally, the Respondent has been named as a respondent in numerous UDRP proceedings in the past and has been found in those proceedings to have registered and used the disputed domain names in bad faith. B. Respondent
The Respondent submitted its Response to the Complaint by an email to the Center dated December 30, 2016. He contends that it registered the disputed domain name in 2007, some nine years prior to the registration date of the NUNUNU mark by the Complainant. He also contends that there are other domain names that incorporate the word "nununu", but that the Complainant has not taken actions against said registrants. Finally, the Respondent contends that he did not obtain the disputed domain name with the intention of benefiting from the NUNUNU trademark. 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, communicated relevant case communications in both languages, and has indicated that it would accept 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, which indicates that the Respondent understands English;
3) The Respondent responded to the Complaint, which again shows that the Respondent understands English.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint and Response as filed respectively in English and Korean; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Respondent claims that the Complainant's trademark registration dates for the NUNUNU mark are some nine years after the registration date of the disputed domain name.
Those dates are irrelevant for purposes of the first element, and as such the Panel finds that the Complainant has established registered rights in the mark NUNUNU and that the disputed domain name is identical to the Complainant's trademark NUNUNU. The addition of a generic Top-Level Domain ("gTLD") such as ".com" in a domain name may generally be 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 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 its 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 claims in its Response to the Complaint that it acquired the disputed domain name for its business purposes and, specifically claims that he did not acquire the disputed domain name for the purpose of benefitting from the Complainant's NUNUNU trademark. The Respondent did not provide any evidence in support of its claims.
The Panel finds that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent has failed to invoke any circumstances which can demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name.
The Complainant has asserted that the Respondent is not known by the NUNUNU trademark; the Complainant did not authorize nor otherwise permit the Respondent to use the disputed domain name; the Respondent has no bona fide offering of goods or services in respect of the disputed domain name; and the Respondent is not using the disputed domain name for legitimate noncommercial or fair use.
There is no evidence in the record that denies or challenges these facts and accordingly, the Panel's view is that these facts may be taken as true. Further, the evidence shows that the Respondent knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's unique NUNUNU trademark, in order to profit by hosting PPC links related to the Complainant's area of business and offering to sell the disputed domain name. The Panel finds that this conduct is evidence of cybersquatting and does not provide a right or legitimate interest in the disputed domain name under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592).
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use the name "nununu".
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. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraphs 4(b)(i), (ii), and (iv). The Respondent merely denied the Complainant's said claims, but offered no evidence in support.
The Panel finds that the Complainant's registered trademark NUNUNU is widely known, that it has been used prior to the registration of the disputed domain name and well before the disputed domain name was transferred to the Respondent. Since the disputed domain name is identical to the Complainant's trademark and the website at the disputed domain name contained links to the Complainant's competitors, it is very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant's trademark and its business.
Bad faith can be inferred based on the strength of the reputation of the Complainant's mark, such that the Respondent was aware or should have been aware of the Complainant's marks and claims of rights thereto (particularly in view of the Complainant's use of its marks on the Internet). The Panel finds it highly doubtful that the Respondent who is no stranger to adverse UDRP proceedings 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 or term, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
Accordingly, the evidence shows that when it acquired the disputed domain name in November 2013, the Respondent likely knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademarks in order to attract Internet users to its website for commercial gain. This conduct 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: February 1, 2017
Full & Egal Universal Law Academy