WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M.F.H. Fejlesztõ Korlátolt Társaság v. Park Kyubg Suk
Case No. D2015-0713
1. The Parties
The Complainant is M.F.H. Fejlesztõ Korlátolt Társaság of Budapest, Hungary, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Park Kyubg Suk of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <intimissime.com> is registered with Go France Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2015. On April 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 025, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 29, 2015. 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 trades in underwear and nightwear, among other things, in a number of European and other countries. The Complainant uses the brand name and trademark INTIMISSIMI and is of a scale that it has some 1200 franchised outlets in 31 countries. The Complainant has an online shop for lingerie and underwear located at its main website “www.intimissimi.com” and other websites containing the word “intimissimi”.
The Complainant or its parent company, Calzedonia Luxembourg S.A., is the registrant of a number of INTIMISSIMI trademarks of which the following are representative:
INTIMISSIMI, Republic of Korea (South) trademark, registered October 11, 2001, registration number 0503418, class 25;
INTIMISSIMI, Community trademark, Office for Harmonization in the Internal Market, registered April 2, 2002, registration number 001978808, classes 25, 35;
INTIMISSIMI, International trademark, WIPO ROMARIN database, registered April 20, 1988, registration number 692492, classes 25, 35;
INTIMISSIMI, Canadian Intellectual Property Office, registered January 16, 2003, registration number TMA573828, class 25.
No background information is available about the Respondent except for the name and contact details provided in order to register the disputed domain name, and that it has been possible in the past to correspond with the Respondent via the Internet. The disputed domain name was registered by the Respondent on February 17, 2010.
5. Parties’ Contentions
The Complainant contends that it is the owner of trademarks including those listed in section 4 above, and has attached copies of relevant trademark registration documents or online records.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Complainant says the disputed domain name <intimissime.com> is phonetically, visually and conceptually similar to the trademark INTIMISSIMI. The difference of one letter is negligible and constitutes the practice known as “typosquatting”, and the Respondent is trading on the basis of the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name has effectively been parked for five years. The website to which it resolves hosts a wide variety of link headings including references to clothing and lingerie. It is contended that the use of the Complainant’s trademark to direct customers to its competitors is not a bona fide use. The Complainant contends that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name since the corresponding website is probably generating pay-per-click revenues from the hosted advertising links.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name is parked and used for sponsored links. The Respondent’s intention is to attract customers looking for fashion shops and to divert them to the Respondent’s website.
The Complainant states that it sent a cease and desist letter to the Respondent on March 16, 2010, asking for the transfer of the disputed domain name. The Respondent replied on the same date by quoting a price of EUR 3800.00 for the disputed domain name. On March 18, 2010 the Respondent apparently offered by email to sell the disputed domain name for the price of EUR 380.00, which the Complainant accepted. The transaction did not proceed and in May 2011 the intermediary agent through which the sale would have taken place, Sedo, wrote to the Complainant to give the reason as being that the seller “did not fulfill his part of the transaction” and that “the wrong price has been set for this area in the seller’s account”.
The Complainant says the Respondent’s offer of the disputed domain name for sale indicates an intention to benefit from it financially.
The Complainant submits that non-use of the disputed domain name for an active website does not preclude a finding of bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the documentary evidence presented that the Complainant has rights for the purposes of the Policy in the registered trademark INTIMISSIMI.
The disputed domain name is <intimissime.com>. The generic Top-Level Domain (gTLD) designation of the disputed domain name, in this case “.com”, can usually be disregarded in the determination of confusing similarity. What remains is “intimissime”, which differs from the Complainant’s trademark only in the last letter. The Panel finds the difference in spelling of the disputed domain name to be insufficient to avoid confusion with the Complainant’s trademark. The Panel further finds on the balance of probabilities that, in various languages, there would be a likelihood of “intimissime” and the Complainant’s trademark being pronounced identically, and correspondingly a probability of the Complainant’s trademark at least sometimes being spelt mistakenly as “intimissime”. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark and finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that it has not licensed or authorised the Respondent to use the Complainant’s trademark in any way. The Complainant also says that the parking of the disputed domain name for five years without active use, except to provide links that are presumably of a pay-per-click nature, shows that the Respondent has no legitimate interest in it.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Respondent has not made any showing under paragraph 4(c) of the Policy or replied formally to the Complaint. The Complainant’s evidence includes screen captures of the website to which the disputed domain name resolves. The website is populated with about 60 widely disparate headings such as “Insurance”, “Movies” and “Diet”, and also pertinently “Womens Clothing”, “Mens Clothing”, “Lingerie” and “Shoes”. It may reasonably be concluded that these are pay-per-click links installed in order to generate revenue for the benefit of the Respondent. The Panel does not find bona fide use of the disputed domain name in the terms of paragraph 4(c)(i) of the Policy.
There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The use of the disputed domain name is clearly not noncommercial in the terms of paragraph 4(c)(iii) of the Policy.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The screen captures of the website of the disputed domain name project unequivocally that it is offered for sale. The page title reads “intimissime.com - intimi ssi me Resources and Information. This website is for sale! pagina 1 van 1”. A box at the top of the page on April 7, 2015 proclaimed “BUY THIS DOMAIN The domain intimissime.com may be for sale by its owner!”. On April 14, 2015 and April 16, 2015 this box had been adjusted to read “BUY THIS DOMAIN The owner of intimissime.com is offering it for sale for an asking price of 3800 EUR!”.
Documentary evidence of correspondence shows that as long ago as March 16, 2010, in reply to the Complainant’s cease and desist letter, the Respondent tried to sell the disputed domain name to the Complainant for EUR 3800.00. This was only a month after the disputed domain name had been registered.
The Panel finds on the evidence and on the balance of probabilities that the Respondent’s primary purpose in registering the disputed domain name was to transfer it profitably to the Complainant or any other party within the meaning of paragraph 4(b)(i) of the Policy, constituting registration in bad faith. The Panel also finds the disputed domain name to have been used, to at least the extent of having been placed on offer awaiting sale and having been a platform for a link farm, constituting use in bad faith. The fact that the disputed domain name may not have been used actively for any other purpose, having regard to all the circumstances of the present case, does not preclude a finding of use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The provision of pay-per-click links on a website, leading to advertisers at other websites, and the receipt of remuneration in return for the service, may be entirely legitimate. It may not be legitimate, however, if another’s trademark is used without authorisation as the means of attracting visitors for onward referral. On the evidence and on the balance of probabilities the Panel finds that the Respondent’s business model has been to hold the disputed domain name for sale, and meanwhile to “monetise” it, that is, to present visitors to the website with commercial links potentially remunerative to the Respondent. The Panel finds it more probable than not that visitors to the website of the disputed domain name will have reached it through initial confusion with the Complainant’s trademark, constituting bad faith use in the terms of paragraph 4(b)(iv) of the Policy.
Accordingly the Panel finds registration and use of the disputed domain name in bad faith to have been proven under paragraph 4(a)(iii) of the Policy.
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 <intimissime.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 9, 2015