The Complainant is Marie (“Casanera”), France, represented by CMS Bureau Francis Lefebvre, France.
The Respondent is Noorinet, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2020, 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 May 20, 2020, 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 22, 2020, the Complainant confirmed its request for English to 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for the response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2020. The Center appointed Young Kim as the sole panelist in this matter on June 26, 2020. 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. On July 9, 2020, the Panel issued the Procedural Order No. 1 requesting the Complainant to submit materials or evidence by July 14, 2020, which support its allegations relating to the Complainant’s previous ownership of the disputed domain name and the Respondent’s request for disproportionate amount of money in exchange of the transfer of the disputed domain name. The Respondent was also granted to submit comments on the Complainant’s reply to the Procedural Order No.1 by July 17, 2020. The Complainant submitted a response on July 9, 2020 that it was not in a position to provide further written evidence for the items mentioned in the Procedural Order No.1. The Respondent did not submit any comments to the Complainant’s response. 4. Factual Background The Complainant is a company incorporated in France that has manufactured and marketed cosmetic products under the brand “Casanera” since 2011. The Complainant owns a trademark registration for CASANERA (Registration No. 3720114), designating the goods in Classes 3, 4, 14, 18, and 25, in France, which was registered on March 10, 2010. The Complainant also owns the domain name The disputed domain name The Complainant contends that it has rights in the mark CASANERA based on its French trademark registration for the same mark. In addition, the Complainant claims that the Casanera branded products are well known in Asia, especially in Japan, due to the advertising activities involving many celebrities and numerous magazine articles (published between 2012 and 2019) which has introduced and praised the Casanera marked products. Lastly, the Complainant contends that it owns the following domain name which includes the CASANERA mark: Further, the Complainant claims that the disputed domain name is confusingly similar to its well-known and distinctive trademark CASANERA in which the Complainant has rights. The registration date of the Complainant’s trademark predates the registration date of the disputed domain name. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Specifically, the Complainant asserts that it has not given any license or other right to use the CASANERA mark to the Respondent. The Complainant also contends that the Respondent is not commonly known by the disputed domain name and does not have any trademark rights for the same mark. Lastly, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. Lastly, the Complainant argues that the disputed domain name has been registered and is being used in bad faith. Specifically, the Complainant claims that it used to own the disputed domain name 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 shall 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 facts into account: 1) the disputed domain name resolves to a website displaying some words in English. 2) the disputed domain name is offered for sale on the website “www.sedo.com” which is operated in English, indicating that the Respondent has knowledge of English. 3) 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. 4) the Respondent has not objected to the Complainant’s request that English be the language of the proceeding, and has chosen not to participate in the proceeding. 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 A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the CASANERA mark, in light of its trademark registration for the mark as well as the Complainant’s active use of the CASANERA mark. Specifically, the Complainant owns a trademark registration for the mark CASANERA in France, covering various cosmetic products, which was registered four years prior to the registration date of the disputed domain name. Further, the Complainant shows that it started using the CASANERA mark from 2011 continuously and the CASANERA mark is recognized especially by Asian consumers. On the other hand, the Respondent did not submit any rebuttal arguments. Further, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s CASANERA trademark. Specifically, the disputed domain name incorporates the Complainant’s trademark in its entirety, with the only difference being that the disputed domain name includes the generic Top-Level Domain (“gTLD”) suffix “.com” due to the technical configuration of the domain name system. However, the addition of a gTLD 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 or confusingly similar 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 has no relationship with or authorization from the Complainant to use its trademarks. Moreover, 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. The Panel notes that the Respondent has used the disputed domain name for a pay-per-click landing webpage hosting links to third-party commercial websites. However, the Respondent’s use of the disputed domain name incorporating the Complainant’s registered trademark in order to attract Internet users to pay-per-click landing pages which generates revenues for the Respondent is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy (F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451). On the other hand, the Respondent has not submitted any rebuttal arguments. Since the Respondent did not effectively rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, 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 which evidence the 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. In this regard, the Complainant alleges that the Complainant used to own the disputed domain name and accidently failed to renew registration of the disputed domain name, before the Respondent registered the disputed domain name on June 15, 2014. Further, the Complainant alleges that the Respondent requested for a disproportionate amount of money in exchange of the transfer of the disputed domain name. As such, the Panel issued the Procedural Order No. 1 requesting the Complainant to submit materials or evidence which support these allegations. However, the Complainant submitted a reply that it is not in a position to provide further written evidence for the items mentioned in the Procedural Order No.1. The Respondent did not submit any comments to the Complainant’s reply. Thus, the Panel does not consider these allegations of the Complainant. However, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith for the following reasons. First, the Respondent registered the disputed domain name four years after the Complainant registered the CASANERA trademark, and three years after the Complainant started its brand under the mark. Further, the disputed domain name, apart from the gTLD “.com”, is identical to the Complainant’s distinctive trademark, which is a coined term with no dictionary meaning. In addition, the Complainant’s Casanera products have positioned themselves in the natural and organic cosmetics market. Given the circumstances, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant’s rights in its CASANERA mark. The Panel notes that the Respondent has used the disputed domain name for a pay-per-click landing webpage hosting links to third-party commercial websites. With respect to the generation of revenue from domain name parking activities, such act itself does not necessarily amount to a use in bad faith under the Policy. However, it amounts to a use in bad faith where the registrant chose the disputed domain name to take unfair advantage of the reputation of the Complainant’s coined-term mark which is recognized to an extent, in the hope and expectation that identity between the disputed domain name and the Complainant’s mark will result in an increased number of Internet users visiting the Respondent’s website (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715). Thus, the Panel finds that the Respondent is using the disputed domain name in bad faith. As the conduct described above falls squarely within paragraph 4(b)(iv) 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 Young Kim
Sole Panelist
Date: July 22, 2020
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