The Complainant is Kao Kabushiki Kaisha (Kao Corporation) of Tokyo, Japan, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Noorinet of Gyeongju, Gyeongsangbukdo, 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 in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2017. On January 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2017, 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 January 23, 2017, 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 date, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2017.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 8, 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 Kao Kabushiki Kaisha (Kao Corporation), a chemical and cosmetics company established in 1887 and headquartered in Tokyo, Japan. Since its founding, the Complainant has expanded its business globally and owns several renown brands, including, among others, “John Frieda”, “Jergens”, “Molton Brown” and “Goldwell”. Among its recent and successful brands is a line of products called “MegRhythm Steam Eyes Masks” which are in high demand in Japan and globally. The Complainant launched its “MegRhytm” product in 2005.
The Complainant owns extensive trademarks in various jurisdictions around the world in connection with its “MegRhytm” products, including MEGRHYTHM, registered in Japan, the Republic of Korea, the European Union and Singapore (the “Trademarks”).
The Respondent, who has chosen not to participate in these proceedings, is Noorinet, of the Republic of Korea. The Respondent has been involved in numerous similar UDRP proceedings.
The disputed domain name was created on September 6, 2015, and updated on August 31, 2016.
The disputed domain name resolves to a parking page with sponsored links on which the disputed domain name is offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its Trademarks in which the Complainant has rights.
The Complainant alleges that the disputed domain name is identical to the Complainant’s Trademarks, and that the disputed domain name is likely to generate a risk of confusion to the public.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has not authorized the Respondent to use its Trademarks. The Complainant notes that the disputed domain name redirects to a parking page providing commercial links to colic products and baby products and formulas, including products with the Complainant’s Trademarks.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of this bad faith, the Complainant notes that the disputed domain name is publicly offered for sale and displays pay-per-click advertising links. 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 its Complaint in English.
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. 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 the Respondent has numerous domain names using only the Latin alphabet, and that the Respondent has registered various domain names subject to English registration agreements. Further, the Panel notes that the disputed domain name currently resolves to a parking page in English, in which the disputed domain name is offered for sale in English. The Panel additionally notes that the Respondent has chosen not to participate in this proceeding. And finally, the Panel notes that the same Respondent has been a party to numerous UDRP cases in which the panels rendered decisions in English.
For the above-mentioned reasons, the Panel concludes that it will 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 the 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 several trademark registrations for MEGRHYTHM which are closely associated with its business activities around the world.
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 typically without legal significance when comparing the disputed domain name to the Complainant’s trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins,WIPO Case No. D2013-0603; cf., 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.
Accordingly, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is identical 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 production, several past UDRP decisions have held that “once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents 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 Respondent in the present case has chosen to file no response. Moreover, 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 Complainant has established 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)(ii), includes “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”. The Panel notes the Respondent’s history of previous UDRP rulings.
Another 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 website or location or of a product or service on your website 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 in which the disputed domain name is offered for sale. The mere fact of diverting users in this misleading manner for commercial gain is evidence of bad faith, particularly noting that the disputed domain name is identical to the Complainant’s Trademarks. From these facts and without any submission from the Respondent, the Panel can only infer that the Respondent registered and is using the disputed domain name for financial benefit on the back of the Complainant’s Trademarks.
For the reasons given above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and 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: March 22, 2017
Full & Egal Universal Law Academy