The Complainant is SnoopBy Co Ltd. of Seoul, Republic of Korea, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Fu Ze Yang aka Yang Fu Ze of Putian, Fujian, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China.
The disputed domain names <gentlemonstereyeglasses.com>, <gentlemonstereyewear.com>, <gentlemonsterfashion.com>, <gentlemonsteronline.com>, <gentlemonsteroriginal.com>, <gentlemonstershop.net>, <gentlemonstershopping.com>, <gentlemonsterstore.com>, <gentlemonstersunglass.com> and <gentlemonstersunglasses.com> are 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 18, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19 and August 23, 2016, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2016 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 August 30, 2016.
On August 23, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On August 30, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceeding commenced on September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 23, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 30, 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 company founded in 2012 and incorporated in the Republic of Korea, and a designer and manufacturer of eyeglasses promoted and marketed worldwide under the trade mark GENTLE MONSTER (the "Trade Mark"). The Complainant is the owner of an international registration for the Trade Mark, dating from June 7, 2012, and a registration for the Trade Mark in the Republic of Korea, dating from July 10, 2013.
The Respondent is apparently an individual resident in China.
The disputed domain names <gentlemonstereyeglasses.com>, <gentlemonstereyewear.com>, <gentlemonsterfashion.com>, <gentlemonsteroriginal.com>, <gentlemonstershop.net>, <gentlemonstershopping.com> and <gentlemonstersunglass.com> were all registered on April 26, 2016. The disputed domain names <gentlemonsteronline.com>, <gentlemonsterstore.com> and <gentlemonstersunglasses.com> were all registered on April 21, 2016.
The disputed domain names <gentlemonstereyeglasses.com>, <gentlemonstereyewear.com>, <gentlemonstershopping.com>, <gentlemonstersunglass.com> and <gentlemonsteronline.com> have been resolved to the websites which offer for sale what the Complainant alleges are counterfeit versions of the Complainant's sunglasses (the "Websites"). The disputed domain names <gentlemonsterfashion.com>, <gentlemonsteroriginal.com>, <gentlemonstershop.net>, <gentlemonsterstore.com> and <gentlemonstersunglasses.com> have not been used.
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreements.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The disputed domain names are English language domain names;
(2) The Websites are English language websites;
(3) It is therefore clear that the Respondent must have a sufficient understanding of the English language.
The Respondent has not filed a Response and has not filed any submissions regarding the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreements, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. Three of the Websites contain both English and Korean language content, and the other two contain only English language content. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names comprise the Trade Mark in its entirety, together with the common and generic words which are either descriptive of the Complainant's goods marketed and sold under the Trade Mark, or are generic words related to shopping, fashion or the Internet. The Panel finds the addition of such generic and descriptive words does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, five of the disputed domain names have been used in respect of the Websites, which include pictures taken from the Complainant's official website, and the Complainant's logo, and which offer for sale eyeglasses under the model names of the Complainant's products. The Complainant asserts that the products offered for sale on the Websites are counterfeits. The other five disputed domain names have not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
In light of the manner of use by the Respondent of the Websites described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy. Even if the goods on the Websites are not counterfeits, the manner in which the Respondent has registered and used the disputed domain names, including copying content taken without authorisation from the Complainant's official website, clearly demonstrates that the disputed domain names have been registered and used in bad faith.
In all the circumstances, and given in particular the Respondent's use of the Websites, the Panel finds that the Respondent must clearly have known of the Complainant and of its rights in the Trade Mark at the time of registration of the five disputed domain names that have not been used. The Panel accordingly finds that these five disputed domain names have also been registered and used in bad faith.
For the foregoing reasons, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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 names <gentlemonstereyeglasses.com>, <gentlemonstereyewear.com>, <gentlemonsterfashion.com>, <gentlemonsteronline.com>, <gentlemonsteroriginal.com>, <gentlemonstershop.net>, <gentlemonstershopping.com>, <gentlemonsterstore.com>, <gentlemonstersunglass.com> and <gentlemonstersunglasses.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 14, 2016