The Complainant is Rautureau Apple Shoes, France, represented by Nameshield, France.
The Respondent is Kim Seokjun, Republic of Korea, self-represented.
The disputed domain name <schmoove.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2019, 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 July 5, 2019, 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 July 8, 2019, the Complainant requested English to be the language of the proceeding. On July 9, 2019, the Respondent requested for Korean to be 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 July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on August 6, 2019, that it would proceed to panel appointment.
The Center appointed Andrew J. Park as the sole panelist in this matter on August 26, 2019. 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, a French company, is the owner of the “SCHMOOVE” brand for a wide selection of men’s and women’s shoes. In 2001, the Complainant launched its first collection, with the desire to offer unique shoes to men and women, and soon thereafter, the bold lines and offbeat models found their followers. The Complainant and its SCHMOOVE mark have now become a distinctive and strong brand.
The Complainant is the owner of the following SCHMOOVE trademark registrations:
|
Country |
Name |
Registration Number |
Registration date |
|
International |
SCHMOOVE |
741831 |
13.09.2000 |
|
European Union |
SCHMOOVE |
005705587 |
07.07.2008 |
|
United States of America |
SCHMOOVE |
2944505 |
27.01.2003 |
|
France |
SCHMOOVE |
3007697 |
10.02.2000 |
|
France |
SCHMOOVE |
3020326 |
31.03.2000 |
|
Republic of Korea |
SCHMOOVE |
4007309840000 |
12.12.2007 |
|
Republic of Korea |
SCHMOOVE |
4007309830000 |
12.12.2007 |
The Complainant also owns the domain name <schmoove.fr>, which was registered on December 12, 2001.
The disputed domain name <schmoove.com> was registered by the Respondent on December 18, 2003. The disputed domain name redirects to a parking page with commercial links (pay per click, “PPC”) and it is listed for sale for a minimum price of EUR 9900.
As noted above, the Complainant, following the filing of its Complaint with the Center, requested for English to be the language of the proceeding and, in turn, the Respondent requested for Korean to be the language of the proceeding.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <schmoove.com> is identical and confusingly similar to the Complainant’s SCHMOOVE trademarks in which the Complainant has rights. Specifically, the Complainant argues that the Respondent’s disputed domain name uses its trademark SCHMOOVE in its entirety, and the mere addition of the “.com”, generic Top-Level Domain (“gTLD”) may be disregarded when assessing whether a domain name is identical or confusingly similar to the trademark. Moreover, the wording “SCHMOOVE” has no meaning in English, Korean, or in any other language, and is associated only with the Complainant.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the trademark, or apply for registration of the disputed domain name by the Complainant. Also, the Respondent is not commonly known by the disputed domain name, and has not acquired any rights on the term “SCHMOOVE.” The website which the disputed domain name resolves to includes commercial links in relation to the Complainant’s business activity and offers the disputed domain name for sale, which cannot be considered as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without an intent of commercial gain.
3) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent registered the disputed domain name in bad faith because the Respondent was aware of the Complainant and its trademark at the time of registration of the disputed domain name and also, the Respondent uses the disputed domain name in bad faith because the Respondent attempted to sell the disputed domain name to the general public for EUR 9900. The Respondent’s general offer to sell the disputed domain name for an amount in excess of out-of-pocket costs can be evidence of bad faith under Policy 4(b)(i). Further, the Respondent attempted to attract, for commercial gain, Internet users to the disputed domain name where the Respondent used the resolving webpage to host PPC ads. The Respondent was diverting Internet users searching for the Complainant to its own website and likely profiting, which is further evidence of using the disputed domain name in bad faith under the Policy 4(b)(iv).
On July 9, 2019, the Respondent requested for Korean to be the language of the proceeding. However, the Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth three requirements which must 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 must 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 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 website which the disputed domain name resolved to contains links which are in English;
3) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments; and
4) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is French and the Respondent is Korean.
Therefore English would be a fair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) consider any relevant materials in Korean; 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 SCHMOOVE 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 “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see 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 trademarks.
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 Panel finds 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)(i), and (iv) by registering the disputed domain name in order to (1) attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s mark, and (2) sell the disputed domain name to the public or the Complainant in an amount in excess of the Respondent’s costs related to the disputed domain name.
As stated previously, 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 has registered the trademark, SCHMOOVE in 2000 and has been used as its trademark for almost 20 years. The Complainant registered its trademark much before the Respondent registered the disputed domain name. The disputed domain name is identical to the Complainant’s trademark and the website of the disputed domain name contains links that are related to the Complainant and its business. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s trademark and its business.
The Panel also confirms that there is no evidence whatsoever that the Respondent is currently using or is 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 “SCHMOOVE”. The Respondent is attempting to sell the disputed domain name to the Complainant or any other company for commercial gain at EUR 9900 which is in excess of the Respondent’s costs for the disputed domain name, and it is therefore clear that the Respondent is acting in bad faith.
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 in violation of paragraph 4(b) of the Policy. As the conduct described above falls squarely within paragraph 4(b)(i) and (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 <schmoove.com> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: September 16, 2019