The Complainant is WED S.R.L., Italy, represented by Ports Group AB, Sweden.
The Respondent is JH Kang, Republic of Korea.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2020. On May 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 11, 2020, 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.
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, and the proceedings commenced on May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 17, 2020. 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 BackgroundFounded in 2006 by Christian Benini, the Complainant is the Italian subsidiary of the parent company Swedish Group WA Wallvision AB. The parent company was founded in 1905, acquired the Complainant in 2018, and is a global company in the international wallpaper market. The Complainant owns the domain name
The Complainant owns the following trademark registrations, among many others:
European Trade Mark Registration No. 16266851 for WALL&DECÒ ESSENTIAL WALLPAPER (stylized), registered on September 8, 2017 for goods and services in international classes 16, 17, 24, 27, 37, 40 and 42;
European Trade Mark Registration No. 16266975 for WALL&DECÒ STYLE COLORS (stylized), registered on June 14, 2017 for goods and services in international classes 2, 16, 17 and 35;
International Trademark Registration No. 1387098 for WALL&DECÒ ESSENTIAL WALLPAPER (stylized) designating China, the European Union, the Russian Federation and the United States of America (“United States”), registered on July 18, 2017 for goods and services in international classes 16, 17, 19, 24, 27, 37, 40 and 42; and
United States Registration No. 4834033 for WALL&DECÒ CONTEMPORARY WALLPAPER (stylized), registered on October 20, 2015 for goods and services in international classes 6, 16, 19, 20, 24, 27, 37, 40 and 42 (collectively, the WALL&DECÒ Mark”).
The Disputed Domain Name was created on December 3, 2019. The Disputed Domain Name resolves to a pay-per-click (“PPC”) landing page containing third party sponsored links such as “Bathroom Wall Décor”, “Bathroom Wall Stickers” and “Artdeco”. The Complainant sent a cease and desist letter to the Respondent on January 8, 2020, informing the Respondent of its rights, but never received a response despite several reminders.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) the 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 SimilarParagraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the WALL&DECÒ Mark.
It is uncontroverted that the Complainant has established rights in the WALL&DECÒ Mark based on its years of use as well as its numerous registered trademarks. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,
WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the WALL&DECÒ Mark.
The Disputed Domain Name consists of the entirety of the WALL&DECÒ Mark, with the word “and” replacing the ampersand, and without the accent on the letter: “o”, followed by the country code Top-Level Domain (“ccTLD”) “.co”.
The use of the word “and” in place of the ampersand does not affect confusing similarity, as it is not technically possible to register an ampersand in a domain name. See Cox & Kings Ltd. v. Mr. Manoj,
WIPO Case No. D2011-0349 (the domain name
WIPO Case No. D2019-2097.
Finally, the addition of a ccTLD such as “.co” in a domain name is technically required. Thus, it is well established that such element may typically 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. In addition, there is a risk that Internet users would accidentally type the Disputed Domain Name
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
As the Respondent did not respond to the Complaint, the Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name to rebut the Complainant’s prima facie case. The Panel notes that, given the facts here, the Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond. In particular, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
The Respondent is not commonly known by the Disputed Domain Name, nor has the Complainant authorized, licensed, or otherwise permitted the Respondent to use the WALL&DECÒ Mark. The Respondent has no relationship, affiliation, connection, endorsement or association with the Complainant. Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name because using the Disputed Domain Name to host a PPC page with third party sponsored links is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name. See WIPO Overview 3.0, section 2.9 (“the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”).
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThis Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,
WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s WALL&DECÒ Mark for commercial gain by having the Disputed Domain Name resolve to a landing page with PPC links. Moreover, such registration prevents the Complainant from registering another domain name that incorporates its trademark, also indicative of bad faith. See Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556.
Second, the Respondent appears to be a serial cybersquatter, having engaged in a pattern of registering domain names that infringe third party trademarks. The Complainant noted that it conducted a reverse WhoIs search of the Respondent and found that the Respondent registered over 13,000 domain names, many of which contain well-known trademarks such as ADIDAS, CHLOÉ, and CHRISTIAN LOUBOUTIN, among others. The fact that the Respondent is known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is a further indication that the Respondent registered and is using the Disputed Domain Name in bad faith.1 See NBTY, Inc. v. LaPorte Holdings,
WIPO Case No. D2005-0835.
Finally, the Respondent did not respond to the cease and desist letter and did not explain or justify the use of the Complainant’s trademark in the Disputed Domain Name. Past UDRP panels have held that failure to respond to a cease and desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,
WIPO Case No. D2000-0330.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: June 20, 2020
1 Respondent has also been named a respondent in nine prior UDRP proceedings. In all of the nine cases, the administrative panels ordered the domain names to be transferred to the complainant. Such conduct is also emblematic of bad faith.