WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Demex v. Bentz
Case No. D2015-1926
1. The Parties
The Complainant is Demex of Lezennes, France, represented by EY Société d'Avocats, France.
The Respondent is Bentz of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is <demex.com> and is registered with Inames Co., Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015.
On October 28, 2015, the Center requested from the Registrar verification of the elements of the dispute in connection with the disputed domain name. On October 29, 2015, the Registrar confirmed the elements of the dispute to the Center, and notified that the language of the Registration Agreement for the disputed domain name was Korean.
On X, the Center notified the parties in both French and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On X, the Complainant requested French to be the language of the proceeding, to which the Respondent did not reply.
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 of the Complaint in both French and Korean, and the proceedings commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on December 2, 2015.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 16, 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 is the company Demex, a simplified joint stock company.
The Complainant owns several trademarks involving the term "Demex" including the French trademark DEMEX filed on March 5, 1998, No. 98722122, designated for "frozen fruits and vegetables" from Class 31. The Complainant also owns the international trademark DEMEX, No. 698155, filed on July 21, 1998 with priority over the previously-mentioned French trademark, which also covers "frozen fruits and vegetables" from Class 31 (the "Trademarks").
The Complainant uses its Trademarks in connection with frozen fruits and vegetables throughout Europe, including in the following countries; Denmark, Finland, United Kingdom of Great Britain and Northern Ireland, Switzerland, Czech Republic, Germany, Hungary, Italy, and Poland.
The disputed domain name was created on October 2, 2001 and resolves to a parking page with sponsored links where the disputed domain name is offered for sale.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its Trademarks in which the Complainant has rights.
The Complainant alleges that the disputed domain name is identical to the Complainant's Trademarks, and that the disputed domain name is likely to generate a risk of confusion in the public. The Complainant further alleges that the risk of confusion is greater because the Complainant operates the domain name <demex.fr>.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that disputed domain name merely redirects to a parking page indicating that the domain name is for sale.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of this bad faith, the Complainant notes that the disputed domain name does not in fact operate, but instead only leads to a landing page in which the disputed domain name is offered for sale for the sum of USD 9,746.25.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and the Complainant submitted its Complaint in French.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise its discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
First, the Panel notes that English does not appear to be the mother tongue of either party. Given the fact that the Complainant is based in France and the Respondent is based in the Republic of Korea, and the Complainant and the Respondent more likely than not understand English, English would appear to be the fairest neutral language for rendering this decision. Further, the Panel notes that the Respondent has chosen not to participate in this proceeding. Moreover, the same Respondent was a party to a previous UDRP case, in which the Panel has rendered the Decision in English (see DZ Bank AG v. Bentz, WIPO Case No. D2006-0414). Finally, the Panel notes that the website to which the disputed domain name resolves displays text in English.
While the Panel can fully understand the present record in French and Korean, for the above-mentioned reasons, the Panel concludes that it will issue a decision in English.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds several trademark registrations for the term "Demex" which are closely associated with its business activities in Europe.
The disputed domain name wholly incorporates the Complainant's trademark with the addition of the generic Top-Level Domain ("gTLD") ".com". It is well established that the addition of the gTLD ".com" is typically without legal significance when comparing the disputed domain name to the Complainant's trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; cf., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Further, the disputed domain name incorporates the Complainant's existing Trademarks. The disputed domain name incorporates the dominant feature of the Complainant's mark and is, in the Panel's view, confusingly similar to the Complainant's mark. See Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant's Trademarks, and the first element has been established.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of production, several past UDRP decisions have held that "once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing" (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 Panel finds that the Complainant has adequately supported the inference that the Respondent's actions satisfy the requirement of paragraph 4(b)(iv) of the Policy. In the present case, the disputed domain name is linked to a domain parking service in which the disputed domain name is offered for sale. The mere fact of diverting users in this misleading manner is evidence of bad faith.
For the reasons given above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the third and final element of the Policy has been established.
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 <demex.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: January 7, 2016