WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hawaii Furnishing Pte. Ltd. v. Jinsoo Yoon
Case No. D2021-2759
1. The Parties
The Complainant is Hawaii Furnishing Pte. Ltd., Singapore, represented by Margaret Law Corporation, Singapore.
The Respondent is Jinsoo Yoon, United States of America.1
2. The Domain Name and Registrar
The disputed domain name <scanteak.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 2021 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 27, 2021.
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 of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on October 1, 2021. 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 is a company, incorporated in Singapore in 1982, which is a manufacturer and retailer of furniture. In 1988, it developed its own brand of teak furniture which it branded as SCANTEAK. The “scan” component of this name related to the Scandinavian-inspired design of the Complainant’s products and “teak” to the type of wood from which they were made. Its SCANTEAK-branded products are now sold in many countries worldwide.
The Complainant has secured trade mark registrations for SCANTEAK in multiple jurisdictions. These include, by way of example only, Singapore trade mark for SCANTEAK (logo), in class 20, registration number T1013199D, registered on November 12, 1994. The Complainant also owns many domain names which comprise or include its SCANTEAK mark, including <scanteak.net>, <scanteak.biz>, and <scanteakfurniture.com>.
The Complainant was previously the registrant of the disputed domain name but failed to renew its registration in April 2021, due to an oversight. The disputed domain name was registered by the Respondent on April 21, 2021 and now resolves to a directory page containing pay-per-click (“PPC”) links such as “Teak Wood Furniture”, “Furniture”, and “Teak Furniture”. At the top of the page is a statement: “This domain name is FOR SALE. Click here to enquire about this domain”. Clicking on the link takes the user through to a third party website on which the disputed domain name is offered for sale at a minimum price of USD 29,700.
5. Parties’ Contentions
A. Complainant
The Complainant says that the disputed domain name is identical to its SCANTEAK trade marks. The test is a side-by-side comparison. The generic Top-Level Domain (“gTLD”) is disregarded for this purpose. The disputed domain name is identical to the Complainant’s SCANTEAK word marks and to the textual elements of its SCANTEAK logos.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship with the Respondent and has not given it permission to use its SCANTEAK trade mark. As the Complainant has used its SCANTEAK brand continuously and consistently since 1988, it has prior rights. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is there evidence that the Respondent has made any demonstrable preparations to use it for such purposes. The Respondent has only used the disputed domain name in order to establish a website providing PPC links, which redirect the Complainant’s customers to competing sites, and to offer the disputed domain name for sale. Moreover, the Respondent is not commonly known by the disputed domain name. The name of the Respondent bears no relation to any part of the disputed domain name, nor is there any evidence that the Respondent has acquired any reputation in it. Furthermore, there is no evidence that the Respondent has made any legitimate noncommercial or fair use of the disputed domain name. The fact that the Respondent has created a webpage which is diverting customers looking for the Complainant’s goods and services to competitors through the use of PPC links shows that the Respondent’s adoption of the disputed domain name was not accidental or coincidental.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. In 2012, the Complainant had acquired the disputed domain name as a result of an earlier proceeding under the Policy and had been using it as a welcome and index page, hosting links to its websites in various jurisdictions. The Respondent acquired the disputed domain name in April 2021, when the Complainant omitted to renew it. The Respondent has acquired the disputed domain name primarily in order to sell it for valuable consideration to the Complainant or one of its competitors. The minimum sale price of USD 29,700 is extortionate and disproportionate to any costs the Respondent may have incurred for acquiring and maintaining the disputed domain name. The Respondent’s obvious purpose is to mislead and divert actual and prospective customers of the Complainant for commercial gain. Moreover, there is evidence that the same entity which is purporting to offer the disputed domain name for sale is offering other domain names for sale. In particular, the personal-named Respondent has been a respondent to numerous other proceedings under the Policy, most of which were determined in favour of the complainant. Accordingly the Respondent has engaged in a pattern of conduct to squat on domain names and prevent legitimate trade mark proprietors from obtaining their corresponding domain names.
Finally, given the fame of the Complainant’s SCANTEAK mark, the Respondent knew or should have known of the Complainant’s prior rights in the mark as at the time of its acquisition of the disputed domain name and has sought to conceal its true identity by use of a privacy service. These factors provide additional support for a finding of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Complainant has produced details of its many trade mark registrations for SCANTEAK, which establish its rights in this mark. As a technical requirement of registration, the gTLD, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The remaining component of the disputed domain name is identical to the Complainant’s mark.
The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods or services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Whether the use of the disputed domain name in order to resolve to a website containing PPC links to goods and services which compete with those of the might amount to a bona fide offering of goods and services is considered at section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. See also, by way of example, the decision of the panel in Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; “using a domain name incorporating the Complainant’s mark to host sponsored links associated with the Complainant’s area of business cannot be a bona fide offering of goods or services”. The Respondent’s links relate to furniture products similar to those sold by the Complainant and it is thereby unfairly capitalizing on the Complainant’s reputation.
Nor does offering the disputed domain name for sale in the circumstances here amount to a bona fide offering of goods and services.
Paragraph 4(c)(ii) of the Policy is inapplicable, there is nothing to suggest that the Respondent has been commonly known by the disputed domain name. Paragraph 4(c)(iii) is also inapplicable in that the use the Respondent is making of the disputed domain name is commercial in character. Moreover, the disputed domain name is identical to the Complainant’s SCANTEAK mark and liable to be associated with it. As explained at section 2.5.1 of the WIPO Overview 3.0: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation”.
Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent; see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The use which the Respondent has made of the disputed domain name points both to an awareness by the Respondent of the Complainant and its SCANTEAK trade mark as at the date of registration of the disputed domain name and an intention on its part to profit unfairly in some manner from its registration. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.
Whilst the use of a domain name to point to a parking page hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it resolves are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The panel’s remarks in Yahoo! Inc. v. Hildegard Gruener are directly applicable to the Respondent’s use of the disputed domain name. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Paragraph 4(b) of the Policy sets out, without limitation circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(ii) of the Policy is if a respondent has registered a domain name in order to prevent the trade mark owner from reflecting its mark in a corresponding domain name and the respondent has engaged in a pattern of such conduct. The Complainant has provided many instances of decisions of earlier UDRP panels which have found against the Respondent. Accordingly, bad faith registration and use by the Respondent is also established under paragraph 4(b)(ii) of the Policy.
Finally, the disputed domain name is advertised on a third party website at a price of USD 29,700. This sum will be likely well in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. This conduct also amounts to bad faith registration and use within the circumstance described at paragraph 4(b)(i) of the Policy; see Warners’ Stellian Company, Inc. v. Moniker Privacy Services and HK Domain Privacy, WIPO Case No. D2013-1886.
The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.
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 <scanteak.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: October 15, 2021
1 The Complaint was initially filed against “The Registrant of the Disputed Domain Name”. In response to the Registrar’s verification request, the Registrar disclosed the name and address of the entity in whose name the disputed domain name is currently registered. The Complainant amended the Complaint in order to name the underlying registrant as the Respondent.