The Complainant is NaturChem, Inc. of Lexington, South Carolina, United States of America (“United States”), internally represented.
The Respondent is Beats of Daegu, 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 September 20, 2018. On September 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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 October 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 October 11, 2018, the Complainant requested that English be the language of the proceeding. The Respondent did not submit any 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 in English and Korean of the Complaint, and the proceedings commenced on October 12, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was November 1, 2018. The Respondent did not submit any Response by the said due date. Accordingly, the Center notified the Respondent’s default on November 2, 2018.
The Center appointed Young Kim as the sole panelist in this matter on November 15, 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 United States company that provides vegetation management, including controlling vegetation on plant sites, rail ballast, etc. The Complainant is the owner of the word mark NATURCHEM (the “NATURCHEM mark”) which was registered before the United States Patent and Trademark Office (“USPTO”) on May 23, 1995. According to the USPTO registration, the Complainant began to use the NATURCHEM mark on August 1, 1987.
The disputed domain name was registered by the Respondent on December 18, 2009. Since its registration, the disputed domain name has been parked and listed for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that it was founded in 1987 and used the NATURCHEM mark for decades. The Complainant contends that it has rights in the NATURCHEM mark as it applied for the NATURCHEM mark before the USPTO on March 21, 1994, and registered the NATURCHEM mark under registration No. 1895367 on May 23, 1995.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name but is retaining the disputed domain name for the sole purpose of securing a financial gain. In this regards, the Complainant contends that it made multiple attempts to purchase the disputed domain name for a fair price, but the Respondent reverted with a counter-offer requesting the Complainant to pay a far greater amount of money than the domain name’s fair market value, and eventually rejected the Complainant’s offer. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: 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 has preliminarily accepted the Complaint as filed in English, and 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 11 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The disputed domain name resolves to a website which is in English;
2) 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; and
3) The Respondent has experience in prior UDRP actions which proceeded 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. 6.2. Substantive Matters
Paragraph 4(a) of the Policy sets forth three requirements which must 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. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the NATURCHEM mark in light of its registration of the NATURCHEM mark before the USPTO under registration No. 1895367.
Further, the Panel finds that the disputed domain name is identical to the Complainant’s NATURCHEM mark. Specifically, 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 trademark. B. 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.
The Panel hereby finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent is not currently using the disputed domain name. The Panel notes that the website using the disputed domain name merely says “Buy this domain,” and displays a number of advertisement links that are automatically generated. Further, the Respondent has not submitted any arguments in this regard. The Panel also notes that there is no evidence 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.
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. C. 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 a product or service on the respondent’s website or location.
In this regard, the Panel finds that the Respondent registered the disputed domain name in bad faith for several reasons. The Respondent registered the disputed domain name more than 20 years after the Complainant began using the NATURCHEM mark. The Complainant’s trademark registration of the NATURCHEM mark also precedes the registration of the disputed domain name by the Respondent. The Panel also notes that the word “NATURCHEM” is a coined word.
Further, the Panel finds that the Respondent is using the disputed domain name in bad faith. Specifically, the Respondent initially asked the Complainant to pay USD 7,000 for assigning the disputed domain name on August 11, 2015. While the Respondent lowered its price to USD 6,200 on August 16, 2015, this amount of money still far exceeds the amount generally necessary to register a domain name (the disputed domain name Registrar in this case offers about USD 8.6 per year). And it even exceeds the amount that the parking site, S, where the disputed domain name was parked, suggests as an initial offer for assigning a domain name, i.e., USD 300.
As the conduct described above falls squarely within paragraph 4(b)(i) and (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.
Young Kim
Sole Panelist
Date: November 29, 2018
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