WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thule Sweden AB v. Yungu Jo
Case No. D2015-1965
1. The Parties
Complainant is Thule Sweden AB of Hillerstorp, Sweden, internally represented.
Respondent is Yungu Jo of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <thulestore.com> is registered with Pheenix, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2015, 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 proceeding commenced on November 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 3, 2015.
The Center appointed Andrew Mansfield as the sole panelist in this matter on January 7, 2016. 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 Thule Sweden AB (hereinafter “the THULE Group” or “Complainant”) owns numerous intellectual property rights across the world and Europe. Complainant indicates that it has 144 registered THULE trademarks worldwide. The THULE trademark brands various types of goods including carriers, racks, boxes and cases for transportation. Complainant further indicates that it has a total of thirteen international trademarks and national trademarks in the Republic of Korea. Complainant provided a table of those marks it asserts are registered or recognized in the Republic of Korea, among which, for example, Republic of Korea Trademark registration No. 291956 for THULE, registered on June 20, 1994.
Complainant provided copies of the above marks and registrations to the Panel.
The disputed domain name was created on April 16, 2015 and resolves to a pay-per-click website where the disputed domain name is also offered for sale.
5. Parties’ Contentions
Complainant owns numerous intellectual property rights across the world and Europe. Complainant states that it has registered the domain name <thule.com> in 1998 and has used it as the main website to advertise the brand “Thule” ever since. Apart from this domain name, Complainant has registered 278 Thule related domain names worldwide.
Complainant therefore alleges that it has exclusive right to use or grant licenses to use the THULE trademark and brand name in domain names, and to act against any third party using the THULE trademark in a domain name without authorization. The unauthorized use of the THULE trademark, continues Complainant, qualifies as trademark infringement.
Complainant bases this Complaint on the fact that the disputed domain name is confusingly similar to Complainant’s trademark THULE and argues consumers are bound to mistake it for a mark of Complainant or a mark authorized or licensed by Complainant. Complaint alleges that Respondent is trying to exploit Complainant’s goodwill and reputation. According to Complainant, the likelihood of confusion is increased by the fact that Complainant’s mark is combined with the word “store”, indicating that the website at the disputed domain name is a website engaged in commerce in Thule products.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed, Complainant must prove that:
(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) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that Complainant must prove that the disputed domain name is identical or confusingly similar to the trademark.
Complainant has adequately demonstrated its rights to the THULE mark. The record is replete with evidence that Complainant has valid registered and common law marks around the world and that at least thirteen of such marks apply to activities in the Republic of Korea.
The disputed domain name is confusingly similar to Complainant’s THULE mark. It contains Complainant’s THULE mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of “store”, and the generic Top-Level Domain (gTLD) “.com”. The addition of generic, non-distinctive letters or words to a trademark does not distinguish the disputed domain name from Complainant’s trademark. See, e.g., Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Public Service Electric & Gas Company and its affiliates and subsidiaries v. The Whois Privacy Service/ Adjaele Global Internet Ltd, WIPO Case No. D2011-1799. Similarly, many UDRP panels have found that the addition of the gTLD “.com” generally does not distinguish a domain name from a complainant’s mark.
Because Complainant owns an internationally-recognized brand and sells a variety of carriers, racks, boxes and cases for transportation through its various boutiques and domain names, confusion is enhanced by the addition of the term “store”. The disputed domain name falsely suggests that it resolves to a website operated by, or otherwise affiliated with, Complainant.
Accordingly, the Panel finds that Complainant has rights in the THULE mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the THULE mark and has not authorized Respondent to register and use the disputed domain name <thulestore.com>. The Panel finds that there has never been any relationship between Complainant and Respondent, and Respondent has never been licensed or otherwise authorized to use Complainant’s Thule trademark in any manner, including in or as part of a domain name. The Panel finds that Respondent registered the disputed domain name without permission of Complainant and created pay-per-click website. The disputed domain name is also offered for sale.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent has made no showing that it has any rights or legitimate interests in the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name, and Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant must prove that the disputed domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by a complainant in order to demonstrate bad faith use and registration of a domain name. Such circumstances include, among others:
circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling […] the domain name registration to the complainant who is the owner of the trademark […] (paragraph 4(b)(i) of the Policy); and
registration of the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy); and
by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. (paragraph 4(b)(iv) of the Policy)
Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark. Respondent is not using the disputed domain name in connection with a bona fide commercial offering nor for a legitimate noncommercial or fair use. The Panel concludes from the evidence that Respondent is using the website for pay-per-click links to third-party websites. Respondent failed to answer the emails of Complainant regarding the trademark infringement and despite being warned about it continued using the disputed domain name. The disputed domain name is also evidently offered for sale.
Furthermore, Respondent was party to previous UDRP disputes (see, IndusInd Bank Limited v. DomainCA (Whois Protect Service) / Yungu Jo, WIPO Case No. D2014-0811 and Securon Manufacturing Limited v. Yungu Jo, WIPO Case No. D2015-0151) where the panel decided that the Respondent has registered and used the disputed domain names in bad faith.
The Panel finds that Respondent must have had knowledge of Complainant’s rights in the THULE mark when it registered the disputed domain name, since Complainant’s THULE mark is unique and well-known. Respondent’s awareness of Complainant’s trademark rights in the THULE mark at the time of registration suggests opportunistic bad faith registration. See, e.g., BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Also, the fact that the disputed domain name is linked to a website which is not associated with Complainant yet was selling products bearing the THULE mark, would amount to bad faith. See Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019.
Respondent has engaged in a pattern of conduct evidencing that he has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Respondent has been named in previous UDRP decisions, all of which have ordered transfer of the disputed domain names to the complainants. Respondent’s conduct, in the Panel’s view, falls within paragraph 4(b)(ii) of the Policy.
Therefore, the Panel is satisfied that Complainant has established bad faith registration and use as required by 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, <thulestore.com>, be transferred to Complainant.
Date: January 28, 2016