ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SK Inc. v. Domain Administrator Case No. D2024-4310 1. The Parties The Complainant is SK Inc., Republic of Korea, represented by Faegre Drinker Biddle & Reath LLP, United States of America (“US”). The Respondent is Domain Administrator, US. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2024. On October 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2024, 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 (PrivacyGuardian.org LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2024, 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 October 25, 2024. 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 October 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2024.
page 2 The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 21, 2024. 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 the ultimate parent company in a group of more than 175 global companies (collectively, the “SK Group”) dating back more than 70 years. SK Group is the second largest conglomerate in the Republic of Korea and one of the leaders in the life sciences, energy, advanced materials, mobility and semiconductor industries. The Complainant owns inter alia the following US registrations for the mark SK LIFE SCIENCE (with design elements): Reg. No. 5848052 (filed on October 18, 2017, registered on September 3, 2019) for pharmaceutical preparations in Class 5, and Reg. No. 5706244 (filed on April 6, 2018, registered on March 26, 2019) for pharmaceutical research in Class 42. The disputed domain name was registered on September 30, 2024. The website associated with the disputed domain name is devoid of content, and the Respondent appears to be using the disputed domain name and associated email address to impersonate the Complainant and send emails to potential job applicants in a phishing scheme. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent has not submitted any reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. WIPO Overview 3.0, section 1.10. The predominant part of the mark SK LIFE SCIENCE is reproduced within the disputed domain name . Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
page 3 Although the addition of other terms (here “inc” and “careers”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegitimate activity (here, phishing and impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith Under the circumstances of this case, including the composition and use of the disputed domain name incorporating the predominant part of the Complainant’s mark together with the terms “inc” and “careers”, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name. The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark and the composition of the disputed domain name. Panels have held that the use of a domain name for illegitimate activity (here, phishing and impersonation/passing off) constitutes bad faith. WIPO Overview 3.0, section 3.4. Under the circumstances of this case, the inactive website, combined with the Respondent’s apparent phishing scheme with the associated email address, leads the Panel to a finding of bad faith under the Policy.
page 4 The Panel finds that the Complainant has established the third element of the Policy. 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 be transferred to the Complainant. /Tobias Zuberbühler/ Tobias Zuberbühler Sole Panelist Date: December 5, 2024
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