The Complainant is Spigen Korea Co., Ltd., Republic of Korea, internally represented.
The Respondent is rh669 lee, ddd, Hong Kong, China. 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 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 25, 2021. The Center verified that the Complaint, together with the amended 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, and the proceedings commenced on April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2021. The Center appointed Pablo A. Palazzi 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 is engaged in the development, manufacturing, and distribution of mobile phone accessories. The Complainant owns several trademarks registrations for the term SPIGEN, among others: - SPIGEN, United States Trademark Registration Number 4248155, registered on February 17, 2012; The Respondent registered the Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name is confusingly similar to its SPIGEN trademark. Rights and legitimate interest The Complainant states that they are the exclusive right holder of the SPIGEN registered trademark. In addition, the Complainant has been using the SPIGEN trademark for their business of manufacturing mobile accessories. Thus, the Complainant contends that the Respondent has absolutely no rights or legitimate interests in respect of the Disputed Domain Name Registration and use in bad faith The Complainant alleges that the Disputed Domain Name has been registered and used by the Respondent in bad faith, since the Respondent simply combined two words: SPIGEN (the Complainant’s trademark) and “cases” (the Complainant’s representative products in the business area) to take unlawful advantage from the Complainant’s reputation established in the customer’s mind. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in the which the Complainant has rights; Based on the evidence submitted, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark SPIGEN. The Disputed Domain Name contains the Complainant’s SPIGEN trademark in its entirety. The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the term “cases”, which are some of the products that the Complainant sells. Thus, the addition of such term does not prevent a finding of confusing similarity between the Complainant’s trademark and the Disputed Domain Name. In addition, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: “(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.” There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SPIGEN trademark. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant has used its trademarks long before the Disputed Domain Name was registered. In light of this, the Respondent likely had knowledge of the Complainant’s SPIGEN trademark when it registered the Disputed Domain Name. The fact that the Disputed Domain Name contains the term “cases” (which is a representative product in the Complainant business area) is evidence of it. The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has intentionally created a likelihood confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its SPIGEN trademark. The Respondent has not denied the Complainant’s assertions because of its default. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights. Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” In the case at hand, the Respondent’s registration of a domain name confusingly similar to the Complainant’s SPIGEN trademark, used it to resolve to a website for offering deposits to the King of Ball Club - Official Partner of European Cup 2021, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, affirm a finding of bad faith. Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and websites in order to attract Internets users for its own commercial gain, as set out in paragraph 4(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name. 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 Pablo A. Palazzi
- SPIGEN, United States Trademark Registration Number 5722363, registered on April 9, 2019; and,
- SPIGEN, United States Trademark Registration Number 5666738, registered on January 29, 2019.
(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. A. Identical or Confusingly Similar
Sole Panelist
Date: June 9, 2021
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