The Complainant is Smartere Secrets London Limited of Warwickshire, United Kingdom of Great Britain and Northern Ireland ("UK"), represented internally.
The Respondent is Goo of Seoul, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names and are 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 June 15, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
On June 28, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain names is Korean. On the same date, the Complainant submitted a translation of the Complaint in Korean. The Respondent did not submit any comments 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 in Korean of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2018.
The Center appointed Andrew J. Park as the sole panelist in this matter on August 8, 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 Complaint, Smartere Secrets London Limited was founded in December 2016. A British color cosmetics company headquartered in England incorporated on August 25, 2017 with the purpose to sell online color cosmetics. Since February 2017, the Complaint has been engaged in the lengthy process of research and development in the business of color cosmetic products under the name "Smartere Secrets London" in the UK, United States of America ("USA") and Canada to present. In July 2017, the Complainant recruited suppliers, including Korean suppliers with whom the Complainant has been working with until the present date under the name "Smartere Secrets London".
The Complainant has registered the mark SMARTERE SECRETS LONDON in the UK and has filed said mark internationally. The Complainant's first application to register the mark SMARTERE SECRETS LONDON was on December 9, 2016 and is the holder of three UK trademarks for SMARTERE SECRETS LONDON. The Complainant also has filed for trademark registrations for SMARTERE SECRETS LONDON in the USA, European Union, Australia and Canada. The UK registrations are:
- Registration No. UK00003201476 for SMARTERE SECRETS LONDON (figurative mark) filed on December 9, 2016 and registered on March 3, 2017 in Class 3.
- Registration No. UK00003260375 for SMARTERE SECRETS LONDON (figurative mark) filed on September 29, 2017 and registered on March 2, 2018 in Class 3 and 35
- Registration No. UK00003260376 for SMARTERE SECRETS LONDON (word mark) filed on September 29, 2017 and registered on March 2, 2018 in Class 3 and 35
The Respondent did not submit a Response.
The disputed domain names and were registered by the Respondent on October 2, 2017 with Megazone Corp., dba HOSTING.KR. The disputed domain names both resolve to undeveloped websites displaying the message "coming soon!". In pre-complaint correspondence, the Respondent offered to sell the disputed domain names to the Complainant for USD 2,800. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names should be transferred to the Complainant because:
1) The Complainant contends that the Complainant's mark SMARTERE SECRETS LONDON appears recognizable in the two disputed domain names and that the two disputed domain names, and are identical or confusingly similar to the Complainant's trademark. The term "smartere" is a distinctive expression that has no meaning in the English language and was developed by the Complainant for use in connection with its products. The generic Top-Level Domain ("gTLD") suffix ".com" is non-distinctive and does not affect the two disputed domain names for the purpose of determining whether they are identical or confusingly similar to the Complainant's trademark. Also, the Complainant owns exclusive rights to the Smartere Secrets London name. In May 2018, the Complainant was coerced and/or limited to be the registrant of the 25 series of domain name(s) that include both first defensive domain(s) and secondly brand domain(s) that convey the words "Smartere Secrets London".
2) The Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant has not agreed to grant any license, authorization, or permission/consent to the Respondent to use the trademark SMARTERE SECRETS LONDON and there is no evidence of the Respondent's use of or demonstrable preparations to use the disputed domain names in connection to commercial online services and/or sales. As the disputed domain names both result in inactive pages and no active online presence, the Respondent is not using either of the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In addition, there is no indication or evidence that the Respondent has been commonly known by the disputed domain names and the Respondent does not seem to have acquired trademark or service mark rights.
3) The disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondent registered the disputed domain names in bad faith because when the Complainant attempted to contact the Respondent twice to resolve the conflict of interest and requested to cease using the disputed domain names and transfer them, the Respondent offered to sell the disputed domain names for USD 2,800, showing that the Respondent registered the disputed domain names for the purpose of selling, renting, or transferring them.
The Complainant also claims that the disputed domain names are being used in bad faith by the Respondent. The disputed domain names lead to a parking page displaying a "Coming Soon!" notice. The Respondent does not appear to use the disputed domain names in connection with a bona fide offering of goods or services, rather, the Respondent has registered the disputed domain names primarily for the purpose of disrupting business by preventing and depriving the trademark owner of registration of the disputed domain names and that reflect to the Complainant's identical trademarks.
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.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 11(a) and 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;
2) although the Complainant is a British company, it subsequently submitted the Complaint in Korean as well;
3) the Complaint was forwarded to the Respondent in both English and Korean;
4) despite the foregoing facts, the Respondent did not respond to the Complaint in either language;
5) in pre-complaint correspondence, the Respondent communicated with the Complainant in English, indicating that the Respondent has sufficient command of English so that it will not be prejudiced by the adoption of English as the language of the proceeding.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed 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 SMARTERE SECRETS LONDON and that the disputed domain names are identical or confusingly similar to the Complainant's trademark. The disputed domain names incorporate the Complainant's trademark in its entirety, or in the case of the disputed domain name , the dominant component of the Complainant's mark. The addition of the gTLD extension ".com" in domain names 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 names are identical or confusingly similar to the Complainant's trademark. 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 names. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain names. 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 names or has been commonly known by the disputed domain names. Also, there is no evidence that the Respondent has an intention to use the disputed domain names 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 names.
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 names. The Respondent has not come forward to rebut the Complainant's assertions in this regard.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names 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 names 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), for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations 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 disputed domain names.
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 names.
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 is a relatively new company to sell online color cosmetics. The Complainant has been engaging and investing in research and development in the business of color cosmetic products under the trademark SMARTERE SECRETS LONDON since 2016. The trademark SMARTERE SECRETS LONDON is very distinctive and developed by the Complainant for use in connection with its products. The Panel also finds that the Complainant's trademark registration is prior to the Respondent's registration of the disputed domain names; the websites which the two disputed domain names resolved to are both parking pages with the message "Coming Soon!"; and the Respondent offered to sell the disputed domain names to the Complainant when the Complainant contacted the Respondent. The Panel finds no evidence that the Respondent has an intention to use the disputed domain names in connection with a bona fide offering of goods or services nor is in the process of preparing a business using same.
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 names and the Complainant's trademark SMARTER SECRETS LONDON. The Respondent has registered the disputed domain names and that reproduce the Complainant's trademark to prevent the Complainant from reflecting the mark in corresponding domain names, and has attempted to sell the disputed domain names to the Complainant for an amount that exceeds the Respondent's documented costs associated with the disputed domain names.
The conduct described above falls squarely within paragraphs 4(b)(i) and (ii) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain names 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 names and be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: August 23, 2018
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