The Complainants are Joël Blomet (the "Individual Complainant") and Prevor (the "Company Complainant") (collectively, the "Complainants") of Valmondois, France, represented by Cabinet Plasseraud, France.
The Respondent is Jinsoo Yoon of Daegu, Republic of Korea.
The disputed domain name <diphoterine.com> (the "Disputed Domain Name") is registered with InsaneNames LLC/NameBright.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 proceeding commenced on August 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 18, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 2, 2015. 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 Complainants submitted a request for consolidation in this proceeding. The Panel permits consolidation of the proceedings consisting of the filing of one Complaint by the two Complainants in this case. This is because the Complainants have a specific common grievance against the Respondent and the Respondent has engaged in conduct that has affected the Complainants' rights. In addition, it would be equitable and procedurally efficient to permit such consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.
The Panel has determined that the language of the proceeding is English. Paragraph 11(a) of the Rules provides that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […]."
The Company Complainant is a company that specializes in toxicology and chemical risk management. It operates worldwide through a wide array of representatives. The Company Complainant produces "Diphoterine", among other products, which is an emergency washing solution for chemical injuries in the eyes or on skin tissue. This solution is found at many work stations and is used as first aid to allow the avoidance or mitigation of the development of chemical burns. The solution is featured in many publications throughout the world and is used by numerous companies, doctors, hospitals and firefighters, among others.
The Individual Complainant is the Managing Director of the Company Complainant and is the owner of numerous trademark registrations for DIPHOTERINE in France, the United States of America, Canada and various countries in Europe (the "DIPHOTERINE Mark"), which it licenses to the Company Complainant. The Complainants' DIPHOTERINE Mark is distinctive and well known worldwide. The Complainants acquired rights in the DIPHOTERINE Mark as early as 1987, several decades before the Respondent registered the Disputed Domain Name.
The Company Complainant has operated an Internet website at "www.prevor.com" for many years. The Disputed Domain Name was initially registered by the Individual Complainant and was redirected to the aforementioned website before expiring accidentally in April 2015.
Soon after its inadvertent expiration, the Respondent registered the Disputed Domain Name on May 18, 2015. The Disputed Domain Name resolves to a SEDO parking page and is currently offered for sale by the Respondent on several online marketplaces for USD 25,000, or more.
According to the Complaint, the Respondent has registered approximately 3,700 domain names under the same email address that appeared on the WhoIs result for the Respondent in this case.
The following are the Complainants' contentions:
- The Disputed Domain Name is confusingly similar to the DIPHOTERINE Mark;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Complainants have neither agreed nor consented to the Respondent's use or registration of the Disputed Domain Name;
- The Respondent has used the Disputed Domain Name to intentionally trade on the Complainants' goodwill and DIPHOTERINE Mark; and
- The Disputed Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainants' contentions.
Paragraph 4(a) of the Policy requires that the Complainants prove the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; 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.
This element consists of two parts: first, do the Complainants have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainants have established rights in the DIPHOTERINE Mark based on both longstanding use as well as its numerous trademark registrations worldwide for the DIPHOTERINE Mark. The Disputed Domain Name consists of the DIPHOTERINE Mark followed by the generic Top-Level Domain ("gTLD") ".com". "The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Finally, the addition of a gTLD such as ".com" in a domain name may be 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. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.
Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. 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 may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 2.0, paragraph 2.1.
Moreover, the Complainants have not authorized, licensed or otherwise permitted the Respondent to use its DIPHOTERINE Mark. The Complainants do not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain. The only uses that the Respondent has made of the Disputed Domain Name are to park the Disputed Domain Name and offer the Disputed Domain Name for sale at prices in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; these uses do not give rise to rights or legitimate interests on the part of the Respondent. The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainants' prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Name in bad faith:
(i) The Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainants who are the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) The Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product on the Respondent's website or location.
This Panel finds that, based on the record, the Complainants have 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 registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440. In addition, the incorporation of a well-known trademark into a domain name by a registrant with no plausible explanation for the usage is an indication of bad faith. Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
Second, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith by attempting to disrupt the Complainants' business to divert Internet users who are searching for the Complainants' products from the Complainants' genuine website as well as by preventing the Complainants from reflecting the DIPHOTERINE Mark in a corresponding domain name.
Third, bad faith may be found where the Respondent knew or should have known of the registration and use of the DIPHOTERINE Mark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainants obtained their trademark registrations for the DIPHOTERINE Mark. The longstanding and public use of the DIPHOTERINE Mark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainants' rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks).
Fourth, the Respondent has been involved in several UDRP cases involving the registration of domain names identical or confusingly similar to registered trademarks, in which the domain names in those cases were transferred to the complainants. See Ironfx Global Limited v. Jinsoo Yoon, WIPO Case No. D2014-2174 (<ironfxglobal.com>); Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247 (<dslverizon.com>, <verixon.net>, <verizo.com>, <verizonwirelsess.com>, <verizonwirelsss.com>, <verzon.net>, and <wwverizon.com>); Groupe Canal+ Company v. Jinsoo Yoo, WIPO Case No. D2006-1240 (<canalplus.com>). The Panel finds that such conduct constitutes bad faith registration in that the Respondent has engaged in a pattern of conduct under Policy, paragraph 4(b)(ii).
In addition, since the Respondent has registered approximately 3,700 other domain names that incorporate the brand names and/or trademarks of other well-known companies, such conduct evidences bad faith.
Finally, another indication of the Respondent's bad faith registration and use is that the Disputed Domain Name was registered, among other reasons described above, for the purpose of selling or otherwise transferring the Disputed Domain Name to the Complainants or to competitors of the Complainants for valuable consideration in excess of any documented out-of-pocket costs directly related to the Disputed Domain Name. See Policy, paragraph 4(b)(i).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.
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, <diphoterine.com>, be transferred to the individual Complainant.
Lynda M. Braun
Sole Panelist
Date: October 7, 2015