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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valextra S.P.A. v. Crystal International

Case No. D2018-1044

1. The Parties

The Complainant is Valextra S.p.A. of Milan, Italy, represented by Bugnion S. p. A, Italy.

The Respondent is Crystal International of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <valextra.asia> is registered with Megazone. Corp., dba HOSTING.KR (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that the language of the registration agreement is Korean and that the Respondent is listed as the registrant, and providing the registrant's contact details.

On May 17, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On May 17, 2018, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding 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 in English and Korean of the Complaint, and the proceedings commenced on May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default in English and Korean on June 15, 2018.

The Center appointed Andrew J. Park as the sole panelist in this matter on June 26, 2018. 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, Valextra.S.p.A. is an Italian company that was founded in 1937 by Giovanni Fontana in Milano, Italy. The Complainant specializes in leather products with distinctive shapes designed for the comfort of sophisticated and cosmopolitan clientele and its long history has become an internationally renowned Italian luxury brand. The Complainant's name is synonymous with a timeless style, innovative trends, exquisite craftsmanship and artisanal techniques of supreme quality. The Complainant also enjoys a vast notoriety in the Republic of Korea and its products are sold in 19 different department stores across the country.

The Complaint is based on the well-known trademark VALEXTRA, which is registered in several countries worldwide and, in particular:

- International Registration No. 817560 for VALEXTRA filed on November 28, 2013 in classes 14, 16, 18 and 25.
- International Registration No. 1257778 for VALEXTRA filed on September 19, 2014 in classes 3, 9, 14, 16, 18, 25 and 35.
- International Registration No. 901444 for VALEXTRA filed on June 10, 2005 in classes 3, 9, 11, 12, 20, 21, 28, 34, 41 and 43.
- International Registration No. 1376258 for VALEXTRA filed on July 27, 2017 in classes 3, 9, 14, 16, 18, 25, and 35.

The disputed domain name <valextra.asia> was registered by the Respondent on July 11, 2016 with Megazone Corp., dba HOSTING.KR, and it resolves to a "website coming soon" webpage.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <valextra.asia> is clearly identical to the Complainant's trademark. The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant's trademark. The only difference between the disputed domain name and the Complainant's trademark is the addition of the gTLD suffix ".asia". However, it is standard practice to disregard the gTLD suffix under the confusing similarity test, except where the applicable gTLD suffix may itself form part of the relevant trademark, which is not the case here.

2) the Respondent has no rights or legitimate interests in the disputed domain name.

i) according to a clearance search, there are no trademarks containing the world "valextra" in the name of the Respondent, Crystal International;
ii) the Respondent is not commonly known by the word "valextra" in any derivation;
iii) the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the VALEXTRA trademark;
iv) the Complainant has prior rights in the VALEXTRA trademark which precede the Respondent's registration of the disputed domain name; and
v) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

3) The disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent registered the disputed domain name in bad faith because the Respondent was well aware of the Complainant's activities, trademark and reputation at the time it registered the disputed domain name. The Complainant has substantially used its trademark in many countries, including the Republic of Korea, which is the country of origin of the Respondent, and the Complainant has several retail stores in the most prestigious shopping malls of South Korea. Consequently, it is implausible that the Respondent was unaware of the Complainant's trademark when the Respondent registered the disputed domain name.

The Complainant also claims that the disputed domain name is being used in bad faith by the Respondent. The disputed domain name leads to a parking page displaying a "Coming Soon ! Valextra.asia" notice and advertises several services in the Internet and telecommunication field. Such use is undoubtedly in bad faith, as it takes an unfair commercial advantage from the distinctive character and reputation of the Complainant's trademark. The Respondent did not only register the disputed domain name under the gTLD ".asia", but also registered the domain name <valextra.vn>. Further, the Respondent has been involved in other UDRP cases regarding abusive and bad faith registrations of domain names.

B. Respondent

The Respondent did not submit any response.

6. Discussion and Findings

A. Language of Proceedings

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 11(a) and 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The disputed domain name resolves to a parking page which is in English;
3) The websites to which the disputed domain name is redirected contains English, which shows that the Respondent understands English;
4) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is Italian and the Respondent is Korean. Therefore English would be the fair language for both Parties;
5) The Respondent has not objected for English to be the language of the proceeding;
6) The Respondent did not submit a response.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the mark VALEXTRA and that the disputed domain name is identical to the Complainant's trademark. The disputed domain name incorporates the Complainant's trademark in its entirety, and the addition of the gTLD extension ".asia" in a domain name may 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).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel's view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.

Further, there is no evidence that the Respondent is currently using or commonly known by, or has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(ii), to prevent the Complainant, 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.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant's allegations of the Respondent's bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds that the Complainant's registered trademark, VALEXTRA is well known, that it has been used for almost 80 years, and that it was registered before the Respondent registered the disputed domain name <valextra.asia>. The Complainant already owns the domain name <valextra.com>.

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademark VALEXTRA. The Respondent has registered a series of domain names such as <valextra.asia> and <valextra.vn> that are exact replicas of the Complainant's trademark to prevent the Complainant from reflecting the mark in a corresponding domain name. In addition, the Respondent has already been repeatedly involved in previous UDRP cases regarding the registrations of multiple trademark-abusive domain names (see Nike Inc. v. Crystal International, WIPO Case No. D2001-0102).

The conduct described above falls squarely within paragraph 4(b)(ii) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <valextra.asia> be transferred to the Complainant.

Andrew J Park
Sole Panelist
Date: July 11, 2018

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