WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CCA Industries, Inc. v. Jeongyong Cho
Case No. D2017-0769
1. The Parties
Complainant is CCA Industries, Inc. of Ridgefield Park, New Jersey, United States of America (“United States”), represented by Barclay Damon LLP, United States.
Respondent is Jeongyong Cho of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <solarsense.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean and confirming that Respondent is listed as the registrant and providing Respondent’s contact details.
On April 21, 2017, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On April 25, 2017, Respondent requested for Korean to be the language of the proceeding. On April 27, 2017, Complainant requested for English to be the language of the proceeding.
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, in English and Korean, and the proceedings commenced on April 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. At the request of Respondent, the due date for Response was extended to May 22, 2017. The Response was filed with the Center on May 22, 2017.
The Center appointed Moonchul Chang as the sole panelist in this matter on June 2, 2017. 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 is the owner of trademark SOLAR SENSE (United States Reg. No. 4,913,767 registered on March 8, 2016) and SOLAR SENSE & Design (United States Reg. No. 1,394,585 registered on May 27, 1986) for cosmetics including sunscreens and other related products.
According to the publicly available WhoIs information and as confirmed by Registrar, the disputed domain name <solarsense.com> was registered on April 1, 1999. Respondent currently uses the disputed domain name by operating its website, which appears to sell products related to solar power technology. However, shortly before Complaint was filed, Respondent’s website was parked at a single page simply offering the disputed domain name for sale.
5. Parties’ Contentions
Complainant contends that:
(i) The disputed domain name is confusingly similar to Complainant’s trademark SOLAR SENSE. The dispute domain name incorporates Complainant’s trademark SOLAR SENSE in its entirety.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not licensed or permitted Respondent to use the SOLAR SENSE mark. Respondent is not using the domain name in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use. There is no conceivable legitimate interest in the use of the disputed domain name by Respondent.
(iii) The disputed domain name was registered and being used by Respondent in bad faith.
Firstly, Respondent’s motivation in registration of the disputed domain name was to force Complainant to pay an exorbitant fee to buy the disputed domain name because it is confusingly similar to Complainant’s SOLAR SENSE trademark. Secondly, Respondent is a serial domain name squatter and Respondent’s bad faith conduct has been the subject of six reported UDRP decisions. Thirdly, Respondent’s website indicates that the disputed domain name “may be available for purchase,” and provides a fillable form to submit a purchase offer. When Complainant contacted Respondent and requested to have the disputed domain name transferred to Complainant, Respondent offered to sell the disputed domain name for USD 38,000.
Respondent contends that:
(i) The disputed domain name was registered on April 1, 1999, much earlier than Complainant’s domain name <solar-sense.com> registered on April 10, 2005. Respondent has been using the disputed domain name <solarsense.com> by operating its website since February 29, 2000.
(ii) Complainant’s SOLAR SENSE trademark was registered for using in the area of cosmetics and related products only. On the other hand, Respondent uses the disputed domain name in the area of solar technology, which is different from Complainant’s purpose of use.
(iii) Complainant filed the Complaint to attempt reverse domain name hijacking (“RDNH”). Before this Complaint was filed, Complainant used its staff’s personal email address faking its identity to lure Respondent into selling the disputed domain name.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the Parties. In this present case the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean.
However, the Complaint was filed in English. Complainant requests that the language of proceeding be English for the following reasons: (i) the language of Complainant’s SOLAR SENSE trademark and of disputed domain name at issue is English. The fact that the content of Respondent’s website was written in English demonstrates Respondent’s familiarity with the English language; (ii) on the other hand, Complainant is not familiar with the Korean language and was incorporated in the United States; and (iii) under similar circumstances, five previous UDRP decisions with Respondent as a named party have been rendered in the English language. On the other hand Respondent contends that he does not understand English and requests to conduct the administrative proceeding in Korean.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case (see Tumblr, Inc. v. Kenny Kim, WIPO Case No. D2013-0440).
B. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s SOLAR SENSE trademark in its entirety. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to find the domain name “confusingly similar” within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678). The generic Top-Level Domain (“gTLD”) suffix “.com” can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s mark and the first element under paragraph 4(a) of the Policy has been met by Complainant.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on Complainant. However, once Complainant presents a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show its rights or legitimate interests. If Respondent fails to come forth asserting any rights or legitimate interests, Complainant is considered to have satisfied its burden (see, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, Complainant has never licensed or authorized Respondent to use Complainant’s trademark or to register any domain names incorporating the SOLAR SENSE mark. Respondent has used Complainant’s registered trademark without permission from Complainant.
Secondly, Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In this present case, Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut Complainant’s prima facie case.
Thirdly, there is no evidence presented to the Panel that Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition, there is no evidence to suggest that Respondent has been commonly known by the disputed domain name.
As evidenced by Respondent’s submission of the disputed domain name use history, the disputed domain name, likely until the end of 2011 was used by a solar technology corporation based in Canada, also doing business in the United States, seemingly unrelated to Respondent, a domainer in the Republic of Korea. The Panel finds that more likely than not, Respondent acquired the disputed domain name at the earliest in 2012 or sometime thereafter. As evidenced by Complainant, the disputed domain name was parked for sale, and only after the commencement of this proceeding, it resolved to a retail site related to solar technology. The Panel finds that Respondent’s argument and actions are a merely pretextual attempt to avoid the UDRP proceeding and telling of Respondnet’s lack of legitimate interests.
Accordingly, this Panel concludes that Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. As this requirement is conjunctive, Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Complainant’s trademark has been registered since 1986. The disputed domain name entirely incorporates Complainant’s trademark and nothing more. Given the background described above, in this Panel’s view it is likely that Respondent acquired the disputed domain name most likely in 2012 or after with the expectation of selling it to Complainant or others. This is supported by the fact that Respondent’s website at time of filing this Complaint was parked at a single page offering the disputed domain name for sale.
Further, having considered Respondent’s registration of numerous domain names incorporating third-party trademarks, the Panel finds that these registrations constitute a typical pattern of cyber-squatting in bad faith.
Based on the foregoing, the Panel finds that Respondent’s contention on Complainant’s RDNH is unfounded and is satisfied that bad faith registration and use have been established with respect to the disputed domain name in accordance with paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
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 <solarsense.com> be transferred to Complainant.
Date: June 23, 2017