The Complainant is SnoopyBy Co Ltd. of Seoul, Republic of Korea, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Fu Ze Yang / Yang Fu Ze of Putian, Fujian, China.
The disputed domain name <gentlemonstershop.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2016, 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 August 10, 2016, the Center informed the Parties that the Registration Agreement is in Chinese and requested them to comment on the language of the proceeding. On the same day, the Complainant submitted by email a request for English to be the language of the proceeding. The Respondent did not comment on 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 in both English and Chinese, and the proceeding commenced on August 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 15, 2016. 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 Complainant is a Korean company that designs, manufactures and commercializes “Gentle Monster” brand sunglasses. The Complainant holds various trademark registrations, including Chinese Registration No. 11022899 for GENTLE MONSTER, registered on October 7, 2013, and International Registration No. 1124449 for GENTLE MONSTER and device, registered on June 7, 2012. These trademark registrations specify goods that include sunglasses in class 9. The Complainant also promotes its products at its official website “www.gentlemonster.com”.
The Respondent is located in China and is the registrant of the disputed domain name. The Respondent registered the disputed domain name on March 22, 2016. The disputed domain name resolves to a website in English that displays the Complainant’s trademark and logo and offers for sale what are alleged to be the Complainant’s products. Prices are shown in USD.
The disputed domain name is confusingly similar to the Complainant’s GENTLE MONSTER trademark. The disputed domain name incorporates that trademark in its entirety and simply adds a generic term “shop”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has not acquired trademark rights and the Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. The disputed domain name resolves to a website that sells counterfeit goods, which does not constitute a legitimate or fair use.
The disputed domain name was registered and is being used in bad faith. At the time that the Respondent registered the disputed domain name, the Respondent must have known of the Complainant and its trademark because, among other things, the content on the website refers to the Complainant’s business and copies the Complainant’s trademarks and content on the Complainant’s official website. The Respondent uses the disputed domain name intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites because the disputed domain name resolves to a webshop selling counterfeit goods based on the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “unless 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding or, at least, one of the languages of the proceeding. Its main arguments are that the Respondent has sufficient understanding of English as evidenced by the facts that the website to which the disputed domain name resolves is entirely in English and the disputed domain name is constituted of English words.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves is entirely in English, from which it is reasonable to infer that the Respondent understands that language. Moreover, the Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the GENTLE MONSTER trademark.
The disputed domain name incorporates the Complainant’s trademark, omitting only the space between the words “gentle” and “monster”. This omission can be disregarded in a comparison with the Complainant’s trademark as domain names do not include spaces for technical reasons.
There are two additional elements in the disputed domain name. One is the dictionary word “shop”. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. The other additional element is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080. Consequently, the Complainant’s trademark is the dominant and only distinctive element of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance above, the disputed domain name is being used with a website that offers for sale what are alleged to be the Complainant’s products. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s GENTLE MONSTER trademark. The Complainant informs the Panel that the Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. Even if the products are genuine, the website does not accurately disclose the Respondent’s lack of any relationship to the Complainant. These facts indicate that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is “Fu Ze Yang” and the Respondent organization is “Yang Fu Ze”, neither of which are “gentlemonstershop”, nor even “gentle monster”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant’s GENTLE MONSTER trademark. The website with which the disputed domain name is used displays the Complainant’s GENTLE MONSTER trademark and logo and offers for sale what are alleged to be the Complainant’s sunglasses. This all indicates to the Panel that the Respondent was aware of the Complainant and its GENTLE MONSTER trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s GENTLE MONSTER trademark, in connection with a website to offer for sale what are alleged to be the Complainant’s products. Given this circumstance and those described in Section 6.2B above, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website as described in paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <gentlemonstershop.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: September 28, 2016