The Complainant is Kasko Ltd, United Kingdom, represented by Sheridans, United Kingdom.
The Respondent is Jungyuhkook, 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 April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, 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 April 12, 2021, 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 April 12, 2021, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding. On April 20, 2021, the Center requested confirmation by email to the Registrar regarding the expiry of the disputed domain name. On April 21, 2021, the Registrar has confirmed that the disputed domain name will remain in Registrar LOCK status after the lapse of the expiry date and until the UDRP proceedings are concluded and that per ICANN policy either of the parties may renew it. On April 22, 2021, the Center informed the Parties accordingly. 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 English and in Korean, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. Accordingly, the Center notified the Respondent’s default on May 11, 2021. On May 11, 2021, the Respondent filed a late Response in Korean and English. On June 24, 2021, the Respondent sent an email to the Center including supplemental claims in English. The Center appointed Andrew J. Park as the sole panelist in this matter on May 26, 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 The Complainant, Kasko Ltd. is a company in England and Wales that was incorporated on May 26, 2015, with company number 09607496. The Complainant provides software as service solutions to the insurance industry. Kasko Ltd. enables insurers to develop and distribute digital insurance products without tying up internal IT-resources or being bound by limitations of legacy systems and enables digital businesses to offer new insurance services to their customers to increase revenue or retention. The Complainant owns the following trademark registrations and uses the domain name Jurisdiction Trademark Registration No. Registration Date Classes United Kingdom KASKO UK00914285662 April 26, 2016 35 and 42 EU KASKO 014285662 April 26, 2016 35 and 42 The Center noted that the disputed domain name was set to expire on April 27, 2021, which is the case where the disputed domain name expires during the course of the dispute, and informed the Registrar that since the disputed domain name was the subject of a UDRP dispute, the disputed domain name should be placed in Registrar LOCK status until the UDRP proceedings are concluded. The Center received confirmation from the Registrar. The Complainant requested English to be the language of proceedings on April 12, 2021. On May 11, 2021, the Respondent filed a late Response in English. The disputed domain name was registered by the Respondent on April 27, 2002. 5. Parties’ Contentions A. Complainant 1. The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing three main reasons. (a) The language of the Registrar, Magazine Corp., dab HOSTING.KR is Korean/English and its website can be accessed in both Korean and English; and (b) The current content on the website to which the disputed domain name resolved is in English, which is clear evidence that the Respondent is able to understand proceedings in English. (c) Proceeding in Korean and requiring the Complainant to translate the Complaint and all other supporting documents into Korean would be unfair, imposing a burden on the Complainant and delaying the proceedings. 2. The Complainant contends that the disputed domain name should be transferred to the Complainant because: (a) the disputed domain name (b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Complainant has exclusive right in the trademark KASKO and has not granted any license, permission, or authorization to the Respondent to create the disputed domain name by incorporating the Complainant’s trademark. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The only use being made of the disputed domain name by the Respondent is as a parking page for the pay-per-click ads related to the Complainant’s business, insurance. As such, the Respondent is seeking to derive an advantage from user confusion by attracting the Internet users through the misuse of the Complainant’s trademark for commercial gain. (c) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the owner of the trademark or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name by showing that the disputed domain name had been listed for sale from 2009 until the end of 2020. In February 2021, the Complainant attempted to purchase the disputed domain name offering GBP 2,000, however, the Respondent responded with a purchase price of GBP 555,550. The Complainant cancelled the negotiations. In addition, the Respondent started including pay-per-click links in the website to which the disputed domain name resolved from early 2021. These links refer insurance services, which is a primary component of the Complainant’s business. The Complainant believed that the Respondent attempted to attract, for commercial gain, Internet users to its infringing website by creating a likelihood of confusion with the Complainant’s trademark. Also, the Respondent has engaged in a pattern of conduct of preventing trademark owners from reflecting their marks in the corresponding domain names. The Respondent has registered an estimated 3,250 domain names and a number of these domain names incorporate well-known trademarks. B. Respondent On May 11, 2021, the Respondent filed a late Response in Korean and English. The Respondent contends in its Response that KASKO Insurance Company has existed in the Republic of Korea since 1985, but that the business of KASKO Insurance Company was discontinued due to the deteriorating economy in Korea at the time. The Respondent first registered the disputed domain name in 2002 and the Complainant went into business and registered its trademark in 2016. Therefore, it was impossible for the Respondent to know about the Complainant at the time of registering the disputed domain name. On June 24, 2021, the Respondent sent an email including supplemental claims in English. The Respondent contends that the term “kasko” means insurance in the Turkish language. Further, the Respondent claims that the Complainant has tried to buy the disputed domain name before the application date of the Complainant’s trademark, and the Complainant subsequently registered the trademark in order to take away the disputed domain name. 6. Discussion and Findings A. Language of the Proceeding The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) 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 Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments. 3) The content on the site is in English. 4) The Respondent responded in English. In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean, in English, or in both; (2) consider any relevant materials in both Korean and English; and (3) issue a decision in English. B. Late Filing of the Response Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint. Paragraph 14(a) of the Rules is counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case. The Response was filed one day late. Based on the totality of the circumstances, and also taking into account the fact that the Response was filed before the appointment of the Panel, and that the delay has not delayed the resolution of this proceeding – and also bearing in mind the Panel’s obligations under paragraph 10(b) of the Rules – the Panel has decided that it will accept the late filing of the Response. C. 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 KASKO trademark, and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The mere addition of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see 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 trademarks. D. 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 production of demonstrating its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining on the Complainant. 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 Select 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 Panel finds 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. In fact, the Respondent mentioned another third party using the same mark in Korea which, in addition to the claimed meaning as a dictionary word in Turkish, raises additional doubts as to the Respondent’s bona fides as to this disputed domain name. Further, the Panel notes that while the overall burden of proof is on the Complainant, panels in past UDRP decisions have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in a potentially impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In this case, since the Complainant has been found to have made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. The Respondent, however, failed to come forward with such relevant evidence, and thus, 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. 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. E. 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 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 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)(i), (ii), and (iv) by registering the disputed domain name in order to (1) sell the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, (2) prevent the owner of the trademark from reflecting the mark in the corresponding disputed domain name, provided that the respondent has engaged in a pattern of such conduct, and (3) attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark. The Panel notes the following salient facts: 1. the Complainant had registered the trademark KASKO in 2016 and has been using it as its trademark for approximately 5 years; Pursuant to WIPO Overview 3.0, section 3.8, and as it has been applied and reflected in previous UDRP decisions, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. This is a well-established position and though it is subject to limited exceptions (namely, where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights), the facts of this case do not support the application of such an exception. The Respondent stated that a KASKO Insurance Company had existed in the Republic of Korea since 1985 and that it eventually ceased business. Although the Respondent did not specifically claim how it came to select the name “kasko” as its disputed domain name, he has affirmatively denied knowledge of the Complainant at the time when the disputed domain name was registered. At the same time, the fact that the Respondent himself mentioned the now-defunct Korean business raises doubts as to whether he may have been targeting that company, and thus generally not necessarily acting in good faith in acquiring the disputed domain name. This Panel also takes note of certain conduct by the Respondent, including the use of the Complainant’s KASKO trademark on the website of the disputed domain name, and the fact that the Respondent has registered more than 3,000 domain names. While such conduct may support a finding of bad faith use, it cannot overcome the issue with the registration date vis-à-vis the Complainant (Green Tyre Company Plc. v. Shannon Group,WIPO Case No. D2005-0877). Finally, while the Respondent’s knowledge of the now-defunct Korean third party using the same mark raises a question about his intent to sell the disputed domain name to the mark owner at a profit, in the circumstances and noting the date of the registration and the Complainant’s own trademark registration dates, the Panel does not consider the Respondent’s offer to sell the disputed domain name to the Complainant dispositive. In conclusion, the Panel finds that the Complainant has not established that the disputed domain name was registered in bad faith. The Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. The Panel does note that given the possible targeting of the Korean third party mark, and the links directed to the Complainant, the Complainant would not be foreclosed from pursuing any course of action it may deem appropriate in a court of competent jurisdiction. 7. Decision For the foregoing reasons, the Complaint is denied. Andrew J. Park
2. the disputed domain name was registered by the Respondent on April 27, 2002, approximately 14 years before the Complainant’s trademark registration date;
3. the word “kasko” is a word of German origin, and as the Respondent claims in the Turkish language, that is commonly used in connection with insurance services;
4. the website to which the disputed domain name resolves has been listed for sale from 2009 to 2020;
5. there is no evidence that the Respondent is currently using or is commonly known by, has used, or has a bona fide intent to use or has been commonly known by the disputed domain name;
6. in 2021, the Respondent started including pay-per-click links in its website that are related to insurance services, which are the primary component of the Complainant’s business;
7. the Respondent used the Complainant’s KASKO trademark and services in its website without the Complainant’s permission or authorization;
8. the Respondent has registered more than 3,000 domain names, most of which incorporate well-known trademarks, and has thus prevented the owners of the trademarks from reflecting their trademarks in corresponding domain names; and
9. the Respondent sought to sell the disputed domain name to the Complainant at a price of GBP 555,550.
Sole Panelist
Date: June 30, 2021
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