Complainant is KORA Organics by Miranda Kerr Pty Ltd, Australia, represented by Holding Redlich, Australia.
Respondent is Corrine Hayford-Kwatchey, Kora Naturals, United Kingdom (“UK”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. On January 5, 2021, an informal email communication was received from Respondent to which Complainant submitted its comments on January 13, 2021. Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to panel appointment on January 26, 2021. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 8, 2021. 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 Complainant produces and sells premium organic skincare products and supplements under the KORA trademark (“Complainant’s Mark” or “KORA Mark”) since at least 2009. KORA branded products are sold in over 80 countries around the world and have been featured in a number of well-known international fashion magazines, including Vogue, Cosmopolitan, Glamour, Marie Claire, OK! and Harper’s Bazaar. Complainant owns multiple national and international trademark registrations for its KORA Mark, including International Registration numbers 1375271 (protection extended to the UK and registered on September 28, 2017 with a claimed priority date of July 14, 2017) and 1277447 (protection extended to the UK and registered on July 10, 2015). Respondent obtained a UK registration for the KORA NATURALS mark on October 13, 2017. However, Complainant successfully cancelled Respondent’s registration on October 31, 2019. The Registrar of the United Kingdom Trade Marks Office held that Respondent’s KORA NATURALS mark would likely be confused with Complainant’s Mark and that Complainant had senior rights in and to the KORA designation by way of Complainant’s International Registration numbers 1375271 and 1277447. Respondent registered the disputed domain name Complainant contends that the disputed domain name must be considered confusingly similar since it is merely comprised of the invalidated KORA NATURALS mark. According to Complainant, the decision by the Registrar of the UK Trade Mark Office to invalidate Respondent’s KORA NATURALS mark because it would create a likelihood of confusion with Complainant’s KORA Mark is in itself conclusive evidence that the disputed domain name is confusingly similar to Complainant’s Mark. Complainant also argues that Respondent has no rights or legitimate interest in the disputed domain name. Complainant argues that Respondent’s continued use of the disputed domain name despite the invalidation of the KORA NATURALS mark on account of Complainant’s prior rights in the KORA designation cannot be considered a bona fide offering of goods and services, regardless of whether Respondent’s offering of goods and services could have been considered bona fide before the mark’s invalidation. Lastly, Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the KORA Mark given Complainant’s extensive use of the KORA Mark that predates Respondent’s registration of the disputed domain name. Complainant also contends that Respondent is using the disputed domain name in bad faith given that she is well aware that the KORA NATURALS mark was invalidated by the UK Trade Marks Office because it would cause a likelihood of confusion with Complainant’s KORA Mark. Furthermore, Complainant argues that Respondent’s sale of goods similar to those offered under Complainant’s Mark is further evidence that Respondent is using the disputed domain name in bad faith. B. Respondent Respondent did not substantively reply to Complainant’s contentions. Respondent merely sent an informal communication on January 5, 2021 stating that she is in the process of rebranding her business after “having lost [her] trademark last year” but that she still does not have the necessary funds to complete it. She also stated that she was not capable nor interested in responding to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to formally address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. Where potential evidence of good faith registration and use was in respondent’s control, Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent. See, e.g., Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin,WIPO Case No. D2013-1568; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, d/b/a Big Daddy’s Antiques,WIPO Case No. D2000-0004. A. Identical or Confusingly Similar Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided ample evidence that it has rights in the KORA Mark through its International Registrations. With Complainant’s rights in the KORA Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. Furthermore, UDRP panels have also found that the overall facts and circumstances of a case (including relevant website content or other use) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. WIPO Overview 3.0, Section 1.7. Here, Complainant’s KORA Mark is fully incorporated in the disputed domain name. The addition of the descriptive term “naturals” does not prevent a finding of confusing similarity under the first element.1 The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s KORA Mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or 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; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the KORA Mark in any way. Respondent has also not submitted any arguments or evidence rebutting Complainant’s assertion that Respondent is not commonly known by the disputed domain name. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Complainant’s rights in the KORA Mark were already recognized and protected in the United Kingdom, where Respondent is located, at the time the disputed domain name was registered and Complainant asserted that it has never authorized Respondent to use Complainant’s Mark or any variation thereof. Although Respondent previously held a registration for a trademark corresponding to the disputed domain name, which may have provided a basis for demonstrating rights or a legitimate interest in the disputed domain name, this trademark registration was specifically cancelled on the ground that it was likely to cause confusion with Complainant’s KORA Mark. Thus, such cancelled trademark registration would not support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Thus, Respondent’s offering of goods highly similar to those offered under a trademark found confusingly similar to Complainant’s Mark cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc.,WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’” (quoting Ciccone v. Parisi,WIPO Case No. D2000-0847)); cf. WIPO Overview 3.0, section 2.12.2 (“[P]anels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction.”). Furthermore, Respondent’s use of the disputed domain name to redirect Internet users to a website located at “www.corrine-ebony.uk”, through which Respondent continues to offer goods for sale that are highly similar to and ostensibly compete with those offered by Complainant under its KORA Mark cannot support a claim of rights or legitimate interests to the disputed domain name, as this still constitutes a non-bona fide use of the disputed domain name as described above. WIPO Overview 3.0, section 2.5.3; WIPO Overview 3.0, section 2.12.2. Respondent also cannot demonstrate that the disputed domain name has been used for a legitimate noncommercial or fair use, given the use of the disputed domain name to offer products for sale. Therefore, Respondent has failed to rebut Complainant’s allegations and evidence, and the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name based on the evidence before the Panel. Complainant provided ample evidence to demonstrate its rights in the KORA Mark in the United Kingdom, where Respondent is located, that predate Respondent’s registration of the disputed domain name. Complainant and Respondent apparently operate in nearly identical lines of business, namely selling cosmetic and beauty products to consumers. Therefore, Respondent was likely aware of the KORA Mark when she registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s KORA Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Respondent has provided no evidence to rebut Complainant’s contention that Respondent had knowledge of Complainant’s KORA Mark at the time the disputed domain name was registered. Respondent registered a domain name that fully incorporates and is confusingly similar to the KORA Mark owned by Complainant, and started offering goods nearly identical to these of Complainant on the same market. Respondent has not denied having been aware of Complainant and its activities at the time of the registration of the disputed domain name. As discussed above, Respondent has not established that it has cognizable rights or legitimate interests in the disputed domain name. Taken together, these circumstances satisfy the Panel that Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to the website at the disputed domain name by creating a likelihood of confusion with Complainant’s KORA Mark as to the source, sponsorship, affiliation, or endorsement of the same website or of the product offered on it. This supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b)(iv). See, e.g., Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin,WIPO Case No. D2013-1568. Previous UDRP panels have also found this kind of activity as an indication that a respondent was seeking to disrupt the business of a competitor. See, e.g., Travellers Exchange Corporation Limited v. Travelex Forex Money Changer Case,WIPO Case No. D2011-1364 (“[T]he Panel concludes that Respondent undoubtedly had Complainant’s TRAVELEX mark in mind when registering the Domain Name[…] The Panel concludes that Respondent is seeking to disrupt the business of a competitor, Complainant, by offering at its website the very services Complainant has offered….”). Respondent’s continued use of the disputed domain name to redirect Internet users to an active website that continues to offer products similar to, and potentially competitive with, those of Complainant, even after Respondent’s prior trademark was cancelled on the basis of likelihood of confusion with Complainant’s KORA Mark, is further evidence of Respondent’s bad faith use of the disputed domain name. Respondent has not presented any evidence contradicting the allegations or evidence provided by Complainant. Therefore, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, Internet users to her website or other online location, by creating a likelihood of confusion with Complainant’s Mark through its registration and use of the disputed domain name, and registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraphs 4(b)(iv) and 4(b)(iii) of the Policy, respectively. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith. 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, Brian J. Winterfeldt 1 The fact that Respondent’s UK registration for KORA NATURALS was invalidated because it would cause a likelihood of confusion with Complainant’s KORA trademark further supports a finding of confusing similarity between Complainant’s Mark and the disputed domain name.
Sole Panelist
Date: February 22, 2021
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