WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Sungjun Cho

Case No. D2020-1597

1. The Parties

Complainant is Société Anonyme des Eaux Minérales d'Evian (SAEME), France, represented by Cho & Partners, Republic of Korea.

Respondent is Sungjun Cho, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <evianmsg.com> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on July 16, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on July 28, 2020. 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

Complainant is a subsidiary of the French company Danone S.A., an international producer of food and beverages. According to Complainant, 1.5 billion bottles of Evian brand mineral water are sold in 125 countries each year, including in the Republic of Korea, where Respondent is located. Complainant’s EVIAN mark (“EVIAN Mark” or the “Mark”) is also used for beauty and health products such as mineral water sprays and resorts and spas.

Complainant is the proprietor of numerous trademark registrations, including the following:

- Republic of Korea trademark No. 1500610 for EVIAN (word mark), registered on July 16, 2019 for goods in classes 18, 24, and 25;

- International trademark No. 860678 for EVIAN (device mark), registered on June 6, 2005 for services in classes 41, 43, and 44;

- International trademark No. 235956 for EVIAN (word mark), registered on September 24, 1960 for goods in classes 32 and 33.

Complainant is the proprietor of domain names containing the EVIAN Mark such as <evian.us>, <evian.com>, and <evian.fr>.

The disputed domain name <evianmsg.com> was registered by Respondent on October 25, 2019. The disputed domain name resolves to a website primarily in the Korean language offering massage services.

5. Parties’ Contentions

A. Complainant

Under the first element, Complainant states that the disputed domain name wholly incorporates the world-famous EVIAN Mark. The disputed domain name is identical or confusingly similar to the EVIAN Mark, since the disputed domain name is only distinguished from the EVIAN Mark by the term “msg,” which is an abbreviation widely recognized as “message” or “massage”. The addition of this term does not mitigate confusing similarity. Moreover, Complainant operates a spa under the EVIAN Mark in the Republic of Korea, where Respondent appears to be based. The disputed domain name resolves to a website purporting to offer ordinary massage services but Complainant believes the website disguises other services actually offered by Respondent.

Under the second element, Complainant states that Respondent is not affiliated or associated with Complainant, nor has Complainant authorized Respondent to use and register the EVIAN Mark or a domain name incorporating the Mark. The registration of the EVIAN Mark preceded the registration of the disputed domain name by many years, as the oldest EVIAN registration dates to the 1960s. Given the success of the EVIAN brand, Respondent cannot reasonably argue that it was intending to develop a legitimate activity through the disputed domain name. Respondent is not commonly known by the disputed domain name, and the unlawful nature of Respondent’s business makes any legal or legitimate marketing or publicity activities impossible.

Under the third element, Complainant states that, considering the long use and fame of the EVIAN Mark, it is inconceivable that Respondent was unaware of the EVIAN Mark when registering the disputed domain name. Even a basic Internet search would have revealed the use of the EVIAN Mark for services proximate to Respondent’s massage services. Respondent is free-riding on the high reputation of the EVIAN Mark for its own commercial gain.

Respondent is also using the disputed domain name in bad faith. In particular, Respondent displays Complainant’s well-known EVIAN Mark on its website. Respondent acted in full knowledge of Complainant’s earlier rights and is using Complainant’s Mark to market unlawful services.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the EVIAN Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRO Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s EVIAN Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the EVIAN Mark. The disputed domain name contains the EVIAN Mark in its entirety. The addition of the term “msg” does not prevent a finding of confusing similarity with the EVIAN Mark, which is clearly recognizable within the disputed domain name.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

Furthermore, it is the well-established view of UDRP panels that the addition of the generic Top-Level Domain to a domain name does not prevent the domain name from being confusingly similar to the complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which contain Complainant’s long-established and famous Mark together with the term “msg” (regardless of its meaning, which the Panel would consider most obviously a reference to “message”, rather than “massage”) cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the EVIAN Mark with the permission of Complainant.

There is no evidence of legitimate noncommercial or fair use of the disputed domain name, as <evianmsg.com> is used to advertise on-site massage services. The record contains insufficient information for the Panel to conclude that Respondent is indeed offering adult services through the website, but in any case it is evident that Respondent is using the disputed domain name for a business venture of some type.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases cited thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the near identity between Complainant’s Mark and the disputed domain name and the fact that the disputed domain name resolves to a website offering services similar to those for which Complainant has established trademark rights, there can be no finding of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith:

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

(ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the EVIAN Mark predate by decades the registration of the disputed domain name. The Panel agrees with previous UDRP panels that the EVIAN Mark may be considered a famous mark. The disputed domain name contains Complainant’s Mark in its entirety, with the addition of the term “msg,” which does not prevent a finding of confusing similarity. The record contains evidence that a Google search for the term “evian massage” returns results for the EVIAN-branded spas operated by Complainant in Asia and specifically in the Republic of Korea, where Respondent is based. It is implausible that Respondent was unaware of Complainant’s Mark. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website at “www.evianmsg.com” that offers services similar to those offered by Complainant under the EVIAN Mark including in the Republic of Korea, where Respondent is based. Moreover, Respondent’s website includes a representation of Complainant’s device mark.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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 <evianmsg.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: August 11, 2020