The Complainant is Vet Planet Sp. z o.o., Poland, represented by Hasik Rheims & Partners, Poland.
The Respondent is Yang Kyung Won, Republic of Korea.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 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 June 23, 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 June 23, 2021, the Respondent requested for Korean to be the language of the proceeding. On June 24, 2021, the Complainant requested for English to be 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 of the Complaint both in Korean and English, and the proceedings commenced on July 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2021. The Response was filed with the Center on July 19, 2021. On August 2, 2021, the Complainant sent an email to the Center with a letter of observation to the Response.
The Center appointed Moonchul Chang as the sole panelist in this matter on August 27, 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.
The Panel issued the Panel Order No.1 to the Parties on September 23, 2021. The Respondent submitted the supplemental Response on October 1, 2021.
4. Factual BackgroundThe Complainant, Vet Planet Sp. Z o.o., is a Polish company which has developed solutions in veterinary diagnostics, medicines and nutrition. Its major product line is marketed under the brand name “VetExpert” over 30 countries. The Complainant had obtained registrations for the figurative trademarks for VET EXPERT in many jurisdictions including European Union trademark (Registration No. 007509921 with registration date of September 6, 2009; expired on January 9, 2019), and Polish national trademark (Registration No. R.227672 with application date of December 19, 2008; expired on December 19, 2018). Further, the Complainant owns the figurative trademarks for VET EXPERT BASED ON EVIDENCE including the European Union trademark (Registration No. 017454125 with registration date of June 18, 2018), United Kingdom national trademark (Registration No.UK00917454125 with registration date of June 15, 2018) and International figurative trademark (e.g., Registration No. 1410560, registered on February 21, 2018).
According to the publicly available WhoIs information, the disputed domain name
The Complainant contends that:
(1) the disputed domain name is identical or confusingly similar to the Complainant’s trademarks because it contains the VET EXPERT mark in its entirety. The word elements “VetExpert” or “VET EXPERT” in the Complainant’s figurative trademarks have been protected by the Complainant’s both previous and current trademarks which overlap.
(2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized the Respondent to register or use the disputed domain name or the Complainant’s mark. The Respondent is an individual and is not commonly associated with the disputed domain name
(3) the disputed domain name was registered and is being used by the Respondent in bad faith.
Firstly, at the time of registration of the disputed domain name in 2011, the Respondent knew or at least should have known, of the existence of the Complainant’s trademarks since the Complainant launched the brand name of VetExpert in 2008 and registered the figurative trademark of the European Union (Registration No. 007509921) on September 6, 2009 which was publicly available.
Secondly, the Respondent’s website previously offered to sell the disputed domain name displaying the notice in English: “This domain name is for sale at www.VipBroker.com.” The entity of Vip Broker, LLC is considered to be managed by the Respondent, acting as Richard Yaming (see, e.g., Arcadia Group Brands Limited, trading as Topshop v. Richard Yaming,WIPO Case No. D2012-1490; and Deloitte Touche Tohmatsu v. Richard Yaming, Trademark Worx, LLC,WIPO Case No. D2014-1360). This constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent demonstrated an intent to sell, rent, or otherwise transfer it for valuable consideration in excess of its documented out-of-pocket expenses. When the local partner of the Complainant attempted to contact the Respondent by sending an email message, the Respondent replied that he was willing to sell the disputed domain name to the Complainant for a price far exceeding its registration costs.
Thirdly, the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of such website. The Respondent has demonstrated intent to capitalize on the goodwill of the Complainant’s mark for commercial gains in order to increase traffic to the website where the disputed domain name resolves as evidenced by the presence of multiple pay-per-click links posted to the website.
Fourthly, the Respondent has engaged in a bad faith pattern of “cybersquatting” in registering numerous domain names each containing the well-known trademarks with an intention to sell them for a profit. The Respondent’s prior adverse UDRP decisions constitute further evidence of a pattern of bad faith registration (see, e.g., Total SA v. Yang Kyung Won, WIPO Case No. D2009-1483; Volvo Trademark Holding AB v. Kyung Won Yang,WIPO Case No. D2011-0178; LOKEO v. Yang Kyung Won,WIPO Case No. D2015-0128; and Mysuelly v. Yang Kyung Won,WIPO Case No. D2013-1145).
(4) At the time when the Complaint was submitted, the Respondent’s website contained only pay-per-click links and information on the sale of the disputed domain name. Currently, the website at the disputed domain name is redirected to “cafe.naver.com/farhold” which the Respondent asserts to be an automobile fan club. However, it is considered that the Respondent purposes to create impression that he conducts bona fide business activities under the disputed domain name. In fact, the current website has been artificially stuffed with contents previously unavailable and irrelevant to the disputed domain name. It is clear that during the initial negotiations the Respondent intended to resell the disputed domain name to the highest bidder, which is regarded as an evidence of the bad faith.
In the supplemental filing to the Response, the Complainant further contends that:
(5) Although the Complainant’s trademark registration residing the registration of the disputed domain name expired, the Complainant’s other trademarks incorporating the word “VetExpert” have been registered in the meantime, therefore the trademark protection has been continuous and uninterrupted.
(6) The Respondent’s attitude during the initial negotiations with the Complainant clearly indicates his intention to resell the disputed domain name to the higher bidder, which should be regarded as evidence of bad faith.
B. RespondentThe Respondent contends that:
(1) the Respondent registered the disputed domain name
(2) the Respondent has rights or legitimate interests in the disputed domain name because the disputed domain name was legitimately registered to manage an automobile fan club which is one of largest clubs in the Republic of Korea with the membership of 274,488 as of July 19, 2021.
(3) the disputed domain name is neither registered nor is being used in bad faith. The Respondent did not register the disputed domain name in purpose of selling it to others and has been using it for managing the automobile fan club.
(4) the Respondent asserts that the Complaint was brought in bad faith, especially in an attempt at Reverse Domain Name Hijacking.
In the supplemental Response, the Respondent further contends that;
(5) under the UDRP rules an offer or intend to sell a domain name would not by itself be the evidence of bad faith registration.
(6) since the Respondent has been interested in the Bitcoin business and especially VeChain (“VET”), the Respondent plans to use the disputed domain name for the VeChain coin business.
6. Discussion and Findings 6.1. Preliminary Issue: Language of ProceedingsAccording to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the parties. In this present case the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean.
However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons. The Complainant is unable to communicate in Korean and the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings. When the Complainant contacted the Respondent prior to the filing of the Complaint, the Respondent replied to the Complainant in English, which indicates that the Respondent is able to communicate in English. The Respondent’s previous website of the disputed domain name features various phrases in English including “This domain name is for sale at www.vipbroker.com”, “Please click here to inquire” and “For Sale”. Moreover, English was the language of the proceeding in the prior adverse UDRP decisions against the Respondent. (SeeTotal SA v. Yang Kyung Won, WIPO Case No. D2009-1483; Volvo Trademark Holding AB v. Kyung Won Yang,WIPO Case No. D2011-0178; LOKEO v. Yang Kyung Won,WIPO Case No. D2015-0128; and Mysuelly v. Yang Kyung Won,WIPO Case No. D2013-1145). On the other hand, the Respondent requests to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and he does not understand English.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. In order to provide a fair opportunity to each party the Panel also issued the Panel’s Order No.1 with a brief Korean translation of the Complaint while allowing the Respondent to reply in Korean.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors. In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Decision in English.
6.2. Substantive IssuesUnder paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(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.
The disputed domain name
The Complainant has obtained registrations for the figurative trademarks for VET EXPERT BASED ON EVIDENCE in many jurisdictions. The Panel assessment of identity or confusing similarity involves comparing the domain name and the textual components of the relevant mark. On this basis, trademark registrations with figurative elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. (Section 1.10 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In addition the Respondent contends that the Complainant’s trademarks VET EXPERT is not well known and is not registered in the Republic of Korea. However, noting the global nature of the Internet and Domain Name System, the jurisdiction where trademark is valid is not considered relevant to assessment under the first element of confusing similarity test. (Section 1.1.2, WIPO Overview 3.0)
Numerous UDRP panels have held that where a domain name incorporates a complainant’s trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, it is sufficient to consider the domain name “confusingly similar” to that mark within the meaning of the Policy (Section 1.7 of WIPO Overview 3.0). In addition, the generic Top-Level Domain (“gTLD”) suffix “.com” can be disregarded under the confusing similarity test (Section 1.11.1, WIPO Overview 3.0)
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0)
Firstly, the Complainant contends that it has never licensed or authorized the Respondent to use the Complainant’s trademark or to register any domain names incorporating it, but that the Respondent has used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case. Secondly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has registered and used the disputed domain name for the purpose of selling it for a profit or for operating a pay-per-click website. Further, after the Complaint was submitted, the disputed domain name is currently being redirected to “cafe.naver.com/farhold” which the Respondent asserts to be an automobile fan club. However, the Panel considers that there is no link between the Respondent’s activity and the disputed domain name and rather, the current website was made to create impression that the Respondent conducts bona fide activities. The Panel concludes that the Respondent failed to come forward with any appropriate evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case. Thirdly, the Panel found no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the Complainant’s VET EXPERT marks were registered and used by the Complainant prior to the Respondent’s registration of disputed domain name, it is most likely that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademarks. In addition, the Respondent in all likelihood registered the disputed domain name with the expectation of commercial gains by selling it to the Complainant or others.
Secondly, the Respondent offered to sell the disputed domain name on the previously associated website. Under the UDRP, registering a domain name for subsequent resale would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner. (Section 3.1.1 of WIPO Overview 3.0). However, the Panel notes that the website at the disputed domain name as recently as June 9, 2021, resolved to a site with pay-per-click links competing with the Complainant’s services, it then resolved to a page purporting to be for “Local Hive co-working & co-living space”, and then (subsequent to the filing of the Complaint in this proceeding) it pointed to a site purportedly used to manage an automobile fan club with over 250,000 members. Despite the Panel’s Order No.1 requesting the Respondent to clarify what bona fide activities he conducts or intends to conduct in association with the disputed domain name, the Respondent failed to explain as to why he had to make such changes in the span of at most a few months or why he chose the disputed domain name for such use in the first place. Rather, the Respondent now indicates the future business plan to use the disputed domain name for a VET coin business. Noting no further credible explanation for the use of the disputed domain name has been provided by the Respondent, the Panel finds the Respondent’s bad faith in assessing the Respondent’s overall intent.
Finally, having examined the Respondent’s previous registration of numerous domain names incorporating well-known trademarks the Panel considers that these registrations constitute a typical pattern of cybersquatting. (See, e.g., Total SA v. Yang Kyung Won, WIPO Case No. D2009-1483; Volvo Trademark Holding AB v. Kyung Won Yang,WIPO Case No. D2011-0178; LOKEO v. Yang Kyung Won,WIPO Case No. D2015-0128; and Mysuelly v. Yang Kyung Won,WIPO Case No. D2013-1145).
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
D. Reverse Domain Name HijackingThe Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Rules provides that, “[i]f after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
However, having considered that the disputed domain name has been registered and is being used in bad faith, the Panel is of the opinion that the Complainant has not filed its Complaint in bad faith as an attempt at RDNH.
7. DecisionFor 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
Moonchul Chang
Sole Panelist
Date: October 8, 2021