The Complainant is Meest Corporation Inc. of Toronto, Ontario, Canada, represented by Deeth Williams Wall LLP, Canada.
The Respondent is DNAdmin of Gwangju, 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 with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2017. On December 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the Registration Agreement is Korean and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 4, 2018.
On January 5, 2018, 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 January 10, 2018, the Complainant requested for English to be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.
The Center appointed Andrew J. Park as the sole panelist in this matter on February 16, 2018. 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, Meest Corporation Inc., is a company that provides goods and services relating to delivery and courier services, money transmission services, and advertising. The Complainant operates under the registered trade name “Meest” in Canada and internationally. Its specialized transportation and logistics services are recognized in North America.
The Complainant has used the name Meest continuously since 1997 and is the owner of various trademark registrations consisting of MEEST, including the following:
Country
Mark
Reg. No./Date
Canada
MEEST
768473/June 2, 2010
United States of America (“US”)
MEEST
3896030/December 28, 2010
The Respondent has not responded to the Complaint.
The disputed domain name was registered by the Respondent on October 28, 2004, and resolves to a web page displaying pay-per-click links, including those that relate to delivery and courier services. 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 and confusingly similar to the Complainant’s MEEST mark in which the Complainant has rights. The Complainant has used its mark continuously in advertising, marketing and sales materials since 1997, and the mark is commonly used alone, in a design, in conjunction with other words, or as the primary feature of the MEEST corporate name and business name. It is well-established that the specific top level domain “.com” is not considered to be a distinguishing element when evaluating the identity or confusing similarity between a Complainant’s trademark and a disputed domain name. Therefore, the disputed domain name is identical to the Complainant’s trademark MEEST.
2) the Respondent has no rights or legitimate interests in relation to the mark which the Complainant has used since 1997. The Respondent registered the disputed domain name without the consent of the Complainant. The Respondent has no bona fide commercial or noncommercial basis for using the disputed domain name and is not commonly known by the disputed domain name . The Respondent has made no effort to use the website with the disputed domain name in connection with a bona fide offering of goods and services. The Respondent intends to sell the disputed domain name to the Complainant or to the Complainant’s competitors. The Respondent’s primary purpose in the purchase of the disputed domain name is the resale of the disputed domain name to the Complainant at a vastly inflated price.
3) the disputed domain name was registered and is being used in bad faith. The Complainant’s mark, MEEST, was already a substantial and widely known international brand, operating in Canada, the US, and Europe. Thus, the Respondent must have had actual or constructive knowledge of the trademark as a common law mark at the time of registration of the disputed domain name. The Complainant also argues that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of its out-of-pocket expenses directly related to the disputed domain name. The Respondent is using the website with the disputed domain name to link to other sites with the same business activity as the Complainant, and some of the commercial websites linked from the disputed domain name were those of the Complainant’s competitors. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 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 and other documents into Korean;
2) The Complaint was notified to the Respondent in both English and Korean;
3) The disputed domain name resolves to a website which is in English; and
4) The Respondent (or an agent closely associated with the Respondent) corresponded with the Complainant in English in discussions over the sale of the disputed domain name, indicating that the Respondent understands the English language.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; 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 Panel finds that the Complainant has established registered rights in the mark MEEST and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and addition of a Top-Level Domain such as “.com” in a domain name may 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 trademarks. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) 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 is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademark. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Further, there is no evidence that the Respondent is currently using or commonly known by, or has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name “Meest”.
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 that 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, paragraph 4(b)(i), and had registered or had acquired the disputed domain name to market the sale of the disputed domain name and to attract offers from Internet users for a valuable amount in excess of the Respondent’s costs related to the disputed domain name. When the Complainant attempted to engage in correspondence with the Respondent to discuss the transfer of the disputed domain name, the Respondent (or its agent) demanded the Complainant to pay a sum of USD 100,000 for the disputed domain name.
As stated previously, 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 finds that the Complainant’s registered trademark MEEST is well-known, and that it has been used for over 20 years. The disputed domain name is identical and confusingly similar to the Complainant’s trademark and the Panel confirms that there is no evidence that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name “Meest”. It is clear that the Respondent is attempting to sell the disputed domain name to the Complainant or to any other company for commercial gain. Furthermore, the fact that the Respondent used the disputed domain name to place ads competing with the Complainant makes it clear that the Respondent is acting in bad faith.
Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in violation of paragraph 4(b)(i) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(i) of the Policy, 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: March 3, 2018
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