The Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Beats of Daegu, Republic of Korea, self-represented. 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 February 26, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2018, 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 March 8, 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 March 8, 2018, the Complainant requested that English be the language of the proceeding.
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, and the proceedings commenced on March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. The Response was filed with the Center on April 9, 2018.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 26, 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 is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his career in fashion design in Los Angeles, United States, in 1994, and moved his production to Italy, starting worldwide distribution, in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the “Rule Breakers” award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. The Complainant has opened stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong.
The Complainant is the registered owner of approximately twenty-four (24) trademark registrations or applications comprised of or containing the term DRKSHDW, including the following:
- European Union Trade Mark Registration No. 008119018 DRKSHDW, covering a broad range of goods in Classes 3, 9, 14, 18 and 25, registered on November 22, 2009;
- International Registration No. 999870 DRKSHDW, covering a broad range of goods in Classes 3, 9,14, 18 and 25, registered on February 23, 2009 and designating protection in Japan, the Republic of Korea, Singapore, Turkey, China, Russian Federation, and Switzerland;
The Respondent responded to the Complainant’s contentions on April 9, 2018.
The disputed domain name was registered by the Respondent on December 5, 2010 with Megazone Corp., dba HOSTING.KR. The Complainant submitted evidence that the disputed domain name previously resolved to a website displaying third party pay-per-click links. Currently, the disputed domain name does not resolve to an active website. 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 trademark in which the Complainant has rights. The Complainant first launched its DRKSHDW brand in 2006 and registered its trademark, DRKSHDW in 2009 which is prior to the Respondent’s registration of the disputed domain name. The disputed domain name’s suffix is not taken into account for the purpose of assessing the identity and similarity between the disputed domain name and the trademark rights.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name and the Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. The Respondent has no evidence of the use of the disputed domain name, nor demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent has never been commonly known in the normal course of business by the DRKSHDW trademark and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent of commercial gain.
3) the disputed domain name was registered and is being used in bad faith.
First the disputed domain name was registered in bad faith. The Respondent uses a fictitious name, such as “Nurinet”, “Noorinet”, and “Beats” as the registrant name. These registrant names are all used by the same individual or business who is the Respondent in this Complaint. The act of changing registrant names is an attempt to hide its true identity from claims that it engaged in a pattern of bad faith registration; Nurinet has been identified as a respondent in fourteen (14) adverse UDRP decisions and Noorinet has been identified as a respondent in twenty-five (25) adverse UDRP decisions. Further, at the time the Respondent acquired the disputed domain name, it must have been aware of the Complainant and its rights because the Complainant enjoyed international success, including in the Republic of Korea.
Second, the Respondent is using the disputed domain name in bad faith based on the argument that the Respondent’s passive holding of the disputed domain name constitutes registration and use in bad faith insofar as the disputed domain name is being used as a blocking registration, and thus preventing the Complainant from using the disputed domain name for legitimate commercial purposes. Further, the Complainant argues that the Respondent is the owner of approximately 38,000 domain names, many of which are virtually identical to the registered trademarks or enforceable unregistered trademark rights of third parties, and are likely to have been used and registered in bad faith. B. Respondent
The Respondent claims that it has been using disputed domain names since 2010 and argues that the Complainant stated that the trademark for DRKSHDW was registered in 2009, when in fact, it was not. The Respondent claims that the trademark registration date of the Complainant’s DRKSHDW mark is 2013, which is subsequent to the Respondent’s registration date of the disputed domain name.
Further, the Respondent argues that at no time during its ownership of the disputed domain name has the Complainant challenged its registration until now. Finally, the Respondent argues that despite the Complainant’s allegation that the disputed domain name is being used to generate profits or commercial gain, it is not generating any revenues. 6. Discussion and Finding
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 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 disputed domain name resolves to a website which is in English;
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 DRKSHDW 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 the addition of a generic 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 trademarks. 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.
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)(ii) and has registered or has acquired the disputed domain name to prevent the Complainant from using the disputed domain name for legitimate commercial purposes. The Complainant also insists that the Respondent has been using different fictitious names, such as “Nurinet,” “Noorinet,” and “Beats” as its registrant name, and that by so doing, it is attempting to hide its true identity from the allegation that it is engaged in a pattern of bad faith registrations. The Respondent has been identified as the respondent in almost thirty adverse UDRP decisions and is the owner of approximately 38,000 domain names, many of which are virtually identical to the registered trademarks or enforceable unregistered trademark rights of third parties.
The Panel finds that the Complaint’s registered trademark DRKSHDW is used on a global basis, and has provided a selection of trademark registrations pre-dating the earliest registration date of the disputed domain name in 2010.
Further, 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 is 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 “DRKSHDW”.
The Complainant asserts that the Respondent has, under the guise of various fictitious names, been identified as the respondent in almost thirty adverse UDRP actions. The Panel does not make a finding here regarding the Complainant’s assertions, but notes in any event that the Respondent is the owner of approximately 38,000 domain names, many of which are virtually identical to the registered marks or enforceable unregistered trademark rights of third parties. It is equally noteworthy that the Respondent did not dispute these facts that were raised by the Complainant.
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 at least paragraph 4(b)(ii) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(ii) 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: May 10, 2018
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