The Complainant is Repetto of Paris, France, represented by Nameshield, France.
The Respondent is Dotname Domain Privacy, Dotname Korea Corp. of Seoul, Republic of Korea / Choi Ji Hyun of Seongnam-si, Gyeonggi-do, Republic of Korea, self-represented.
The disputed domain name <repettokorea.com> is registered with Dotname Korea Corp. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 20, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the language of the registration agreement is Korean; disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On June 29, 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 the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant requested for English to be the language of the proceeding and filed an amended Complaint on June 29, 2018. The Respondent did not submit any request regarding the language of the proceeding. The Center received informal email communications from the Respondent on July 2 and 3, 2018.
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 Korean and English of the Complaint, and the proceedings commenced on July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. Email communications were received from the Respondent by the Center on July 12, 2018. As the communications were received well before the due date for Response, the Center requested confirmation from the Respondent that the communications should be regarded by the Center as its complete Response. On July 17, 2018, the Respondent confirmed that the communications shall be regarded as its complete Response.
The Center appointed Andrew J. Park as the sole panelist in this matter on August 17, 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.
The Complainant, Repetto, was created in 1947 by Rose Repetto. It was originally a French ballet shoes company and now develops exclusive, and the most technical products in the dance industry. It now creates unique products for dance, shoes, a ready-to-wear collection inspired by dancer's clothing, items of leather goods (bags, purses), and perfume.
The Complainant owns several trademark registrations consisting of the name REPETTO, including the following:
|
Trademark |
Trademark Office |
Registration No |
Registration Date |
|
Repetto (figurative) |
WIPO |
1040048 |
March 29, 2010 |
|
Repetto (figurative) |
WIPO |
679526 |
September 5, 1997 |
|
R Repetto (figurative) |
WIPO |
433035 |
October 21, 1977 |
The Complainant owns several domain names consisting of the name "Repetto;" its main domain names are <repetto.fr>, registered and renewed since June 22, 1999, and <repetto.com>, registered and renewed since April 20, 1997.
The Respondent registered the disputed domain name <repettokorea.com> on January 11, 2018. The disputed domain name redirects to the domain name <dotname.co.kr>, which displays the Registrar's official website homepage.
Following the registration of the disputed domain name, the Complainant sent to the Respondent a cease-and-desist letter on January 30, 2018. The Respondent never responded.
The Respondent did not submit any request regarding the language of the proceeding. It did, however, send several informal email communications to the Center on July 2, 2018 and July 3, 2018, and submit the Response on July 12, 2018. Most of the email communications were in English.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <repettokorea.com> is identical and confusingly similar to the Complainant's trademark in which the Complainant has rights. In particular, the disputed domain name consists of the Complainant's trademark REPETTO in its entirety and is combined with the geographic term "Korea". The geographic term is not sufficient to take into account for the purpose of assessing the identity and similarity between the disputed domain name and the Complainant's trademark. Also, the addition of the generic Top-Level Domain ("gTLD") suffix ".com" does not change the overall impression of the designation as being connected to the Complainant's trademarks. Thus, the disputed domain name <repettokorea.com> is confusingly similar to the Complainant's trademark REPETTO.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent does not own any registered rights on the terms "repetto korea" which comprise part or all of the disputed domain name. The Complainant has not given its consent for the Respondent to use its registered trademark in a domain name registration and has never agreed to grant any license, authorization, or permission/consent to the Respondent to use the trademark REPETTO. The Respondent has no evidence of the use of the disputed domain name in connection with a bona fide offering of goods or services and has never been commonly known in the normal course of business by REPETTO trademark and furthermore, the disputed domain name redirects to the domain name <dotname.co.kr> which is the Registrar's official website homepage. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent of commercial gain. Accordingly, the Complainant claims that the Respondent has no rights or legitimate interests on the disputed domain name <repettokorea.com>.
3) the disputed domain name was registered and is being used in bad faith. The Complainant contends that the disputed domain name is confusingly similar to its trademark REPETTO. The Respondent chose to associate the Complainant's trademark REPETTO with the geographical term "Korea" to take unfair advantage of the Complainant's global reputation, especially in the Republic of Korea, since the Complainant has stores in the Republic of Korea, owns several social media accounts under the name "repetto korea" and communicates through the website <repetto.kr>.
Furthermore, the disputed domain name redirects to the domain name <dotname.co.kr>, which is the Registrar's official website homepage and the Respondent has never replied to the Complainant's cease and desist letter, all of which contribute a finding of bad faith.
The Complainant contends that the trademark REPETTO has the status of a reputed trademark with a substantial and widespread reputation throughout the world and that the Respondent wants to create likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website, which evidences bad faith registration and use under the Policy.
The Respondent, specifically Choi, Ji Hyun, an individual and the recorded registrant of the disputed domain name, did not submit any formal response, but did send several informal email communications to the Center.
The Respondent stated that it was difficult to understand the Complaint and the procedures involved in the WIPO proceeding because it was all in English. However, the Respondent further stated that it would "remove" the disputed domain name. In a subsequent email, the Respondent stated that it had not used the disputed domain name <repettokorea.com> commercially and had no plans to use it; further, the Respondent stated that it would transfer the ownership of the disputed domain name to the Complainant provided that it is not contacted any further about this matter.
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.
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.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 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 Respondent sent several email communications to the Center in English, which shows that the Respondent can understand English;
3) The Complainant and the Respondent use different languages. The Complainant is French and the Respondent is Korean. Therefore English would be the fair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) accept the informal email Response in Korean and English; and (3) issue a decision in English.
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 REPETTO and that the disputed domain name is confusingly similar to the Complainant's trademark. The disputed domain name incorporates the Complainant's trademark in its entirety, and adding the geographic term "Korea" does nothing to avoid a finding of confusing similarity to the Complainant's trademark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
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.
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.
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 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)(iv). The Respondent has created a disputed domain name that is confusingly similar to the Complainant's trademark REPETTO with the knowledge of the Complainant's world-wide famous brand and its business. The Complainant insists that the facts that the disputed domain name redirects to the domain name <dotname.co.kr>, which is the Registrar's official website homepage and the Respondent has never replied to the cease and desist letter sent by the Complainant show the Respondent's unauthorized registration of disputed domain name in bad faith.
As already mentioned, the Respondent did not file any formal 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 trademark REPETTO is well known, that it has been used for more than 70 years since 1947. The disputed domain name is confusingly similar to the Complainant's trademark and adding the geographic term "Korea" to the disputed domain name may lead Internet users to think that there is a connection between the Respondent and the Complainant. In addition, the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or commonly known by, 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 or the name REPETTO. It was clear that the Respondent registered the disputed domain name with the knowledge of the Complainant's famous brand and its business.
Accordingly, the evidence 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 in violation of paragraph 4(b)(iv) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, 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).
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 <repettokorea.com> be transferred to the Complainant.
Andrew J Park
Sole Panelist
Date: September 3, 2018