Complainant is Kshocolat Limited of Blackwood, South Wales, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Nurinet of Gyeongju-si, Gyeongsangbuk-do, Republic of Korea.
The disputed domain name <kshocolat.com> (the “Disputed Domain Name”) is registered with Netpia.com. Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 16, 2010, the Center transmitted by email to Netpia.com. Inc. a request for registrar verification in connection with the disputed domain name. On April 19, 2010, Netpia.com. Inc. transmitted by email to the Center its verification response, confirming that the 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”).
On April 20, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceeding in it Complaint. The Respondent did not respond to the Center's Language of Proceeding notification. On April 26, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on May 27, 2010. 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.
Complainant owns trademark rights, including the goodwill associated with the KSCHOCOLAT brand for premium chocolate products and chocolate gifts in particular. Chocolates and confectionery sold under the KSCHOCOLAT brand are sold online and in over 2000 stores in the United Kingdom, and in around 8000 stores worldwide in over 22 countries which include Hong Kong, Japan, Australia, New Zealand, the United States and Canada.
Complainant launched its e-commerce website “www.kshocolat.co.uk” around July 2008, and this site, which includes information on Complainant's brand and offers Complainant's products for sale, receives approximately 2,500 visits per month. In addition to Complainant's <kshocolat.co.uk domain>, Complainant owns the following domain names incorporating the KSCHOCOLAT brand name: <kshocolat.cn>, <kshocolat.hk>, <kshocolat.asia>, <kshocolat.in>, <kschocolat.co.nz>, <kschocolât.eu>, and <kschocolât.us>. The Disputed Domain Name was registered on January 6, 2010.
Complainant is the owner of the following trademarks for KSHOCOLAT, each of which is asserted in this case:
United Kingdom Trade Mark No. 2347924, registered November 5, 2003 for the words KSHOCOLÂT and KSHOCOLAT, plus a stylized form of the mark (in a series of 3) for goods in Class 30 which include confectionery and sweets, chocolate, chocolate based products and confectionery, chocolate bars, chocolate sweets and truffles, chocolate liqueurs, and chocolate coated fruits and nuts, among others.
Community Trade Mark No. 4148458, registered February 3, 2006 for the word KSHOCOLÂT for goods in Class 30 which include confectionery and sweets, chocolate, chocolate based products and confectionery, chocolate bars, chocolate sweets and truffles, chocolate liqueurs, and chocolate coated fruits and nuts, among others.
United States Trademark Registration No. 3106135, registered June 20, 2006, for the word KSHOCOLÂT for goods in Class 30 which include chocolate, chocolate bars, chocolate candies and truffles among others.
Complainant argues that: (i) the Disputed Domain Name is identical or confusingly similar to a mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name is identical to Complainant's trademarks, subject to the addition of the circumflex accent over the letter “A” in the trademarks which cannot be reproduced in a domain name. Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that there is no information to suggest a legitimate right to use the name "Kshocolat" by Respondent. Complainant also states that Respondent has not been commonly known by the name “Kshocolat.”
Regarding the third element, Complainant states that the Disputed Domain Name resolves to a webpage comprising numerous sponsored links which relate to chocolate, sweets and other confectionery. Complainant alleges that the commercial impression conveyed to Internet users by this webpage is that the retailers, goods or services referred to on the webpage are endorsed by or affiliated with Complainant. Accordingly, Complainant states that Respondent's domain name suggests a false sense of origin or sponsorship, and was undoubtedly chosen by Respondent in an attempt to free-ride off the goodwill associated with the KSHOCOLAT marks, in which Complainant enjoys exclusive rights, for commercial gain through payments for advertising. The webpage to which the Disputed Domain Name resolves also contains the statement “Buy this domain[.] The domain name <kshocolat.com> may be for sale by its owner!” The webpage contains a hyperlink to a <sedo.co.uk> page which states that the Disputed Domain Name is for sale. Complainant made offers to Respondent for the purchase of the Disputed Domain Name. Respondent originally sought GBP4,000 for the domain name but reduced the price to a “final offer” of GBP2,800 as discussions progressed. Complainant's representatives also sent letters to Respondent advising Respondent of, among other things, Complainant's rights in and to the Disputed Domain Name and requesting transfer of the Disputed Domain Name to Complainant. Respondent did not answer Complainant's correspondence.
Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website corresponding to the Disputed Domain Name by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location. Complainant further submits that there are also circumstances which indicate that the Disputed Domain Name was registered or acquired by Respondent primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant, or to a competitor of Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name. Thus, Complainant claims that Respondent has registered the Disputed Domain Name in bad faith. Complainant also claims Respondent has no rights or legitimate interests in the Disputed Domain Name, which is confusingly similar to trademarks in which Complainant has rights.
Respondent did not reply to Complainant's contentions.
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. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the pre-Complaint emails Respondent sent to Complainant regarding purchase of the Disputed Domain Name, it does not appear as though Respondent has any difficulty comprehending and communicating in English. Respondent also chose not to participate or submit any reply in English or Korean, and Respondent also created the contents of the website to which the Disputed Domain Name resolves in English. In light of these circumstances, the Panel concludes that it will 1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
The case record contains ample evidence to demonstrate Complainant's rights in the registered KSHOCOLÂT trademarks. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant's KSHOCOLÂT marks. The absence of the circumflex in the text of the Disputed Domain Name does not defeat confusing similarity. See Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728. The Panel finds Complainant's case persuasive on this point and that Complainant has demonstrated the first element.
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its KSHOCOLÂT trademarks in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name, and thus paragraph 4(c)(ii) of the Policy is inapplicable in this case. Further, Respondent's use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the unrefuted evidence submitted with the Complaint, the Panel finds that Respondent is not making fair use of Complainant's trademark, but is using the mark to attract Internet users to Respondent's website and then providing links to other sites having little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint.
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 the registrant's website or location or of a product or service on the registrant's website or location.
Complainant has submitted evidence that Respondent registered the Disputed Domain Name to sell, rent or otherwise transfer it to Complainant. Paragraph 4(b)(i) of the Policy. Respondent is also presumably deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore also accepts that Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant's websites to its own website and thus damages Complainant's business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor or for attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kshocolat.com> be transferred to the Complainant.
Andrew J. Park
Dated: June 10, 2010