Complainant is JUNG S.A.S, France, represented by AB INITIO, France.
Respondent is Withheld for Privacy Purposes, Iceland / Hloniphile Nomasonto, Australia. 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, 2021. On May 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 Complainant on May 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 18, 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 Respondent of the Complaint, and the proceedings commenced on May 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 9, 2021. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 28, 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, Jung S.A.S., operates an online marketplace known as BACK MARKET for refurbished electrical and electronic products, including, by way of example, smartphones, computers, and televisions. Complainant operates its online marketplace through a website at “www.backmarket.com” and has done so since 2014. Complainant owns a number of trademark registrations for its BACK MARKET mark in connection with its services including, inter alia, an International Registration (No. 1415150) that issued to registration on January 17, 2018 and which was extended and accepted in multiple jurisdictions such as (i) the United States of America (Registration No. 5,790,473) that issued to registration on July 2, 2019, (ii) Australia (Registration No. 2088381) that issued to registration on April 9, 2020, and (iii) the European Union (No.1415150), that was accepted for registration on December 27, 2018. Complainant also owns a pending application for the BACK MARKET mark in South Africa (Application No. 2020/15636) that was filed on June 30, 2020. Respondent, who appears to be based in Australia, registered the disputed domain name on February 12, 2021. Respondent has used the disputed domain name with a website for an entity calling itself “Back Market,” to sell “pre-owned cellphone, laptop and headphones.” Respondent’s “Back Market” company claims to be based in Pretoria, South Africa and holds itself out as “Filling a Gap in the market, supplying more economically priced, top quality refurbished phones, laptops and headphones.” Complainant sent Respondent a demand letter on March 16, 2021 regarding the disputed domain name and the use of the name and mark BACK MARKET. Respondent does not appear to have responded to that letter and the disputed domain name continuous to resolve to Respondent’s website. 5. Parties’ Contentions A. Complainant Complainant asserts that it has strong rights in the BACK MARKET mark in connection with its services on account of Complainant’s use of such since 2014 and on account of Complainant’s trademark registrations for the BACK MARKET mark. Complainant contends that the disputed domain is confusingly similar to Complainant’s BACK MARKET mark as it fully includes the BACK MARKET mark with the descriptive term “deal” that does not reduce the risk of confusion. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not affiliated with Complainant and has no authorization to use Complainant’s BACK MARKET mark, (ii) holds no trademark rights in BACK MARKET, and (iii) must have had a malicious intent in registering the disputed domain name. Lastly, Complainant maintains that Respondent has registered and used the disputed domain name in bad faith as “it is inconceivable” that Respondent did not register the disputed domain name in full knowledge of Complainant’s right in the BACK MARKET mark, particularly as Respondent has used the disputed domain name for a website selling electrical and electronic goods. In that regard, Complainant argues that because Respondent is using the disputed domain name for the very same activity that Complainant uses its BACK MARKET mark, Respondent is clearly attempting to benefit or profit from the reputation Complainant enjoys in its BACK MARKET mark and services. B. Respondent Respondent did not reply 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 A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns and uses the BACK MARKET mark (which has been registered and used well before Respondent registered the disputed domain name). With Complainant’s rights in the BACK MARKET mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s BACK MARKET mark as it incorporates the BACK MARKET mark in its entirety at the head of the disputed domain name. The addition of the word “deal” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s BACK MARKET mark as the BACK MARKET mark is clearly visible in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the BACK MARKET mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. 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. 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 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. The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that offers for sale refurbished phones, laptops, and headphones, the very service of Complainant under its BACK MARKET mark. Respondent’s website prominently features the BACK MARKET mark standing alone throughout the website, specifically advises that it sells refurbished products, and has done nothing to dispel that it is not affiliated, endorsed or connected in some way to Complainant and its BACK MARKET online platform. Indeed, given Respondent’s use of the BACK MARKET name and mark for a website that essentially competes with Complainant by offering the same services, it is hard for the Panel to conceive of any legitimate basis for Respondent’s actions. Simply put, Respondent’s use of Complainant’s BACK MARKET mark to redirect users to Respondent’s competing website does not support a claim to rights or legitimate interests. See WIPO Overview 3.0 at section 2.5.3. Given that Complainant has established a prima facie case and has demonstrated with sufficient evidence that it owns rights in the BACK MARKET mark, and given Respondent’s above noted actions and failure to appear in this proceeding, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith Given Respondent’s actions noted above and failure to appear in this matter, it is easy for the Panel to conclude that Respondent opportunistically registered and used the disputed domain name, which is based on and fully incorporates Complainant’s BACK MARKET mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein). Respondent’s failure to respond to a demand letter from Complainant further highlights Respondent’s bad faith. Respondent’s failure to respond to defend its actions underscores that Respondent likely did not, and does not now have, a legitimate basis for registering and using the disputed domain name. Based on Respondent’s actions it is apparent that Respondent’s registration and use of the disputed domain name was not undertaken for a legitimate reason or purpose but was designed to create confusion with Complainant’s BACK MARKET mark in order to entice consumers to use Respondent’s services offered through its website at the disputed domain name.1 Given Respondent’s actions and failure to appear in this proceeding, the Panel finds that the Complainant has proven by a preponderance of the evidence that Respondent registered and used the disputed domain name 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 Georges Nahitchevansky 1 While Respondent’s “Back Market” company purports to be based in Pretoria, South Africa, the Panel notes that Respondent’s website makes no limitation on where goods will be shipped and in fact allows consumers to pay in GBP or USD. Consequently, it appears to the Panel that Respondent is attempting to compete with Complainant in the very same markets in which Complainant operates in or would likely expand to.
Sole Panelist
Date: July 12, 2021
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