The Complainant is Compagnie française d’assurance pour le commerce extérieur of Bois-Colombes, France, represented by Cabinet Regimbeau, France.
The Respondent is Jeonggon Seo of the Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with HANGANG Systems Inc. dba D (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2018, the Registrar transmitted by email to the Center its verification response confirming that the language of the registration agreement is Korean and that the Respondent is listed as the registrant, and providing the Respondent’s contact details.
On April 30, 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 May 2, 2018, the Complainant requested for English to be the language of the proceeding. The Respondent submitted no request regarding 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 in Korean and English, and the proceedings commenced on May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2018.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 6, 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, the Compagnie Française d’Asurrance pour le Commerce Exterieur, also known as COFACE, is a French company specializing in credit insurance protection and credit management services for over 70 years. COFACE began to diversify internationally in 1992, and is now a worldwide reference in credit insurance, risk management, and the global economy. It is present directly or via strategic partnerships in 100 countries – including the Republic of Korea, the home country of the Respondent – with the ability to provide cover for its clients in approximately 200 countries.
The Complainant is the owner, among others, of the following trademark registrations:
- French trademark “COFACE” No. 96656978, registered on December 24, 1996, and covering services in classes 35, 36 and 41;
- European Union trade mark “COFACE” No. 500793, registered on January 25, 1999, and covering services in classes 35 and 36;
- International trademark “COFACE” No. 678577, registered on June 10, 1997, designating, inter alia, the Republic of Korea, and covering services in classes 35 and 36.
In addition, the Complainant is the owner of the following domain name which reflects its trademark:
- registered on December 16, 1996.
The disputed domain name was created on September 15, 1997. It resolves to a web page displaying pay-per-click 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 confusingly similar to the Complainant’s trademarks and domain name. The Complainant’s trademark COFACE is substantially reproduced in the disputed domain name and the only difference is the lack of the letter “e” at the end of the word. The disputed domain name which consists of a common, obvious, or intentional misspelling of a trademark is referred to as “typo squatting” and may be sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. Also, the generic Top-Level Domain (“gTLD”) extension such as “.com” is not taken into consideration in assessing the confusing similarity between a trademark and a disputed domain name.
2) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no evidence of the use of the disputed domain name, nor demonstrable preparations to use the disputed domain name or a name corresponding to 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 disputed domain name, 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. The Complainant argues that the Respondent registered the disputed domain name in bad faith. The Complainant is present in 100 countries, including the Republic of Korea, which is the home country of the Respondent, and the Complainant’s trademark COFACE was registered by the Complainant before the Respondent registered the disputed domain name. Consequently, it is implausible that the Respondent was unaware of the Complainant’s trademark COFACE when the Respondent registered the disputed domain name. Further, the Respondent has already been repeatedly involved in previous UDRP cases regarding abusive and bad faith registration of domain names.
The Respondent used the disputed domain name in bad faith. The disputed domain name is used in connection with a parking page which displayed sponsored links related to tourism in the Caribbean. The Complainant noticed that, by clicking on any related links on the right of the screen, the Internet users are automatically redirected to another parking page which contains numerous sponsored commercial links related to the Complainant’s core activity, namely insurance and finance services. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click links. Therefore, the Respondent has sought to deceive and misleadingly divert consumers, for commercial gain, from the original website “www.” by creating a likelihood of confusion with the Complainant’s trademark COFACE as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Furthermore, the disputed domain name has been listed for sale. Considering the fact that the Respondent is in the habit of registering the domain names containing the famous names of third parties without any legitimate interests, this supports the position that the Respondent registered the disputed domain name for the purpose of selling it for valuable consideration in excess of its out-of-pocket costs. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
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 website to which the disputed domain name is redirected contains English, which shows that the Respondent understands English;
3) The Respondent has listed the disputed domain name for sale with a domain name sales service located in the United States of America, which means the Respondent has sufficient ability to communicate in English;
4) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is French and the Respondent is Korean. Therefore English would be the fair language for both Parties.
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 its trademark COFACE and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the omitting one letter “e” at the end of the word from the Complainant’s trademark does not affect the decision when assessing the identity or confusing similarity between the disputed domain name and the Complainant’s trademark. The addition of a gTLD extension 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 or confusingly similar 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 argues 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)(iv) by using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
As already mentioned, 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 COFACE is widely known, that it has been used for over 20 years, and that it was registered before the Respondent registered or acquired the disputed domain name . The disputed domain name which is a typographical variant of the Complainant’s trademark is obviously confusingly similar to the Complainant’s trademark and domain name.
Bad faith can be inferred based on the fame 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 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, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). In addition, the Respondent has already been repeatedly involved in previous UDRP cases in which the Respondent registered in bad faith domain names that contain or are typographical variants of famous or well-known third-party trademarks. This demonstrates a clear pattern of bad faith registrations that is probative of the Respondent’s bad faith in this matter.
The Panel also finds that the Respondent used the disputed domain name to offer in its parking page sponsored pay-per-click links to attract Internet users to its website for commercial gain. Those links are directing Internet users to insurance and finance related services which are the Complainant’s core business activities. It is therefore highly 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.
Accordingly, the evidence, which is not rebutted by the Respondent, 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 order to attract Internet users to its website 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: June 20, 2018
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