WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crazy Skates Company Pty Ltd. v. Cha Baekjin
Case No. D2018-0020
1. The Parties
The Complainant is Crazy Skates Company Pty Ltd. of Caloundra, Queensland, Australia, represented by Panakos Law APC, United States of America (“United States”).
The Respondent is Cha Baekjin of Busan, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <crazyskates.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 the Respondent of the Complaint, and the proceedings commenced on January 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2018. The Response was filed with the Center on January 29, 2018.
On January 31, 2018, the Complainant submitted a request to file an additional statement.
The Center appointed Adam Taylor as the sole panelist in this matter on February 12, 2018. 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.
On February 14, 2018, the Panel issued Administrative Panel Procedural Order No.1 inviting the Complainant to submit a filing dealing with the matters raised in the Complainant’s request of January 31, 2018, and also inviting the Respondent to respond thereto. Both Parties submitted supplemental filings within the time specified.
4. Factual Background
The Complainant, which is incorporated in Australia, sells roller skates and roller skate accessories worldwide. The Complainant has used the name “Crazy Skates” since around 2010.
The Complainant owns the following registered trademarks for its CRAZY SKATES logo in international class 28:
- Australian trade mark no. 1364485, filed on June 1, 2010, and registered on January 10, 2011.
- United States trademark no. 4027658, claiming a priority date of June 1, 2010, and registered on September 20, 2011.
- International trade mark no. 1055122, designated in the European Union as of December 2, 2015, and in China as of March 10, 2016.
The disputed domain name was originally created on September 4, 2009. The Respondent acquired it on October 16, 2016.
As of December 13, 2017, the disputed domain name resolved to a Sedo parking page with a list of pay‑per‑click (“PPC”) links which included “Crazy Skates”, “Roller Skates”, “Roller Skates Online” and “Inline Skates”. The page also stated that the owner of the disputed domain name was offering it for sale at an asking price of GBP 9,000.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant is well-known. Its products are for sale worldwide including in the Republic of Korea. The products were featured in a reality TV show called “Supermodel Me” that is popular throughout Asia.
The Complainant markets its goods through its own websites at the domain names <crazyskates.com.au> and <crazyskateco.com>, as well as through third-party sites such as Amazon and eBay.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark as it incorporates the Complainant’s trade mark in its entirety.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has no relationship with the Respondent and has not authorised the Respondent to use its trade mark.
There is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services.
The disputed domain name has been parked and listed for sale since it was acquired by the Respondent.
The Respondent is not commonly known by the disputed domain name. Nor is the Respondent making legitimate noncommercial or fair use of the disputed domain name. This is demonstrated by the Respondent’s parking page and exorbitant price for the disputed domain name as well as the Respondent’s ownership of over 2,000 domains which are also parked with Sedo and offered for sale.
The Respondent registered the disputed domain name for the sole purpose of sale to either the Complainant or one of its competitors. This is clear from the offer price of GBP 9,000 stated on the Respondent’s website.
The disputed domain name was registered and is being used in bad faith.
The Respondent only acquired the disputed domain name in October 2016, by which time the Complainant had registered its mark in Australia, the United States and the European Union. The Complainant is known worldwide for its products. A Google search demonstrates the ubiquitous nature of the Complainant’s mark as all of the results on the first page refer to the Complainant. Accordingly, the Respondent cannot reasonably argue that he was unaware of the Complainant’s trade mark. Several of the advertisements on the Respondent’s site lead to the Complainant’s products or those of its competitors.
The Respondent’s immediate listing of the disputed domain name for sale at a grossly inflated price is strongly indicative of bad faith.
Furthermore, registration of a domain name that is confusingly similar to a famous trade mark by an unrelated entity is itself sufficient evidence of bad faith registration and use.
A summary of the Respondent’s contentions is as follows:
The Complainant cannot claim rights in CRAZY SKATES because its registered trademarks post-date the creation date of the disputed domain name.
The Complainant never informed the Respondent about its trade mark rights and the Respondent was not aware of them until these proceedings were filed.
When one searches “Crazyskates” on the Republic of Korea’s main search website, Naver, “you can see that you cannot search anything”.
The Respondent generally purchases domain names involving a combination of common words as these are good for resale. The Respondent does not buy domain names in bad faith.
The Complainant’s trade mark does not include distinctive terms such as “TOEFL” and “Ohama Steaks” but is instead a combination of two commonly used words: “crazy” and “skates”. There are many expiring/expired domain names available for sale which start with the word “crazy”.
C. Complainant’s Supplemental Filing
A summary of the Complainant’s supplemental filing is as follows:
The Response gave the false impression that the Respondent was the original creator of the disputed domain name, whereas the previous registrant has confirmed to the Complainant that he let the disputed domain name lapse in 2016 and had no connection with the Respondent. The Respondent’s vague Response may have been intended to imply a relationship between the Respondent and the previous registrant. There is no basis for the Respondent to claim that its rights predate those of the Complainant.
The Respondent’s statement that the Complainant’s products do not appear on searches on Naver is both misleading and a misrepresentation. The Respondent’s Naver screenshot does in fact include an image of one of the Complainant’s products. When the Complainant replicated the Respondent’s search, the results showed many images of the Complainant’s products, as did variations of the search term. The Respondent’s production of search results was selective.
D. Respondent’s Supplemental Filing
A summary of the Respondent’s supplemental filing (insofar as the Panel can understand it) is as follows:
The Complainant cannot lay claim to the disputed domain name because it was created before the trade mark, despite the fact that the previous registrant of the disputed domain name was unrelated to the Respondent.
As the disputed domain name was not owned by anyone, the Respondent bought it in auction as he was entitled to do. If the Complainant wanted the disputed domain name, it should have paid for it through the auction.
When the Respondent searched for “crazyskates”, there was only one image and it was not known whether this bore the Complainant’s trade mark. There was no other information about the product, such as blog, news and videos. Whereas when you search for other trademarks such as “omahasteaks”, there is much more information.
The Complainant’s trade mark is not known in the Republic of Korea at all and its products cannot be purchased in the Republic of Korea.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s figurative trade marks, which consist of the stylised term “Crazy Skates” together with some minor graphical elements.
Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that assessment of confusing similarity involves comparing the (alpha‑numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
The existence of rights is assessed at the time of filing of the Complaint and not by reference to the date of the Respondent’s acquisition of the disputed domain name (which in any case post-dates the Complainant’s rights), still less in relation to the date of the original registration of the disputed domain name by a person unrelated to the Respondent, as the Respondent claims. See section 1.1.3 of WIPO Overview 3.0. See further in Section 6C below.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to goods, which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Nor can use of the disputed domain name for a website offering the disputed domain name for sale constitute a bona fide offering as the Panel has concluded in section 6C below that such offering was in bad faith.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel will first consider the likelihood that, notwithstanding its denial, the Respondent was aware of the Complainant on acquisition of the disputed domain name on October 16, 2016.
The Complainant has produced a Google.com search for the phrase “crazy skates”. All of the results on the first page relate to the Complainant. The Panel considers it reasonable to infer from this that at least a very substantial proportion of the 81,000 total results specified in the search relate to the Complainant and that the Complainant’s trade mark has therefore achieved a reasonably high profile.
While the Respondent rightly points out that the disputed domain name consists of two common English words and, unsurprisingly, there many domain names which start with the word “crazy”, nonetheless in the Panel’s view the combination of the words “crazy” and “skates” is not an obvious one. Certainly, the Respondent has not provided evidence of anyone else using the same term. Whereas, as mentioned above, the Complainant monopolizes Google.com search results for the name.
The Respondent claims that the Complainant’s products do not feature in search results on Naver, which the Respondent says is the main search engine in the Republic of Korea. The Complainant responds that an image on the Respondent’s Naver screenshot is indeed that of one of its products. Furthermore, the Complainant has produced its own Naver searches, including one for the same search term used by the Respondent, all of which display a significant number of results for the Complainant and its products.
It is not clear why there is a discrepancy between the respective Naver search results for the same search term. In any case, the Panel has placed limited weight on the Naver searches. They are partly in the local language and have not been translated into English, the language of the proceeding. Also, the Respondent’s submissions are not entirely clear. It is, however, apparent to the Panel that the Complainant and its products do feature to some degree in searches on Naver.
Taking the above matters together, the Panel considers that, on the balance of probabilities, the Respondent was likely to have been aware of the Complainant on acquisition of the disputed domain name.
It does not assist the Respondent that the disputed domain name was first registered by an unrelated party before the Complainant acquired trade mark rights. See section 3.8.1 of WIPO Overview 3.0. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.
In this case, the acquisition of the disputed domain name by the Respondent, the “UDRP respondent”, postdates the Complainant’s rights by some six years. The Panel would add that it did not read into the Response an attempt by the Respondent to falsely imply a relationship with the previous registrant, as the Complainant has suggested. While the Respondent’s reliance on the original creation date was flawed, in the Panel’s view it was not a submission that was intended to deceive the Panel.
In the circumstances of this case, the Panel considers that the substantial asking price of GBP 9,000 for the disputed domain name was most likely directed at the Complainant, rather than the world at large. Accordingly, the Panel is of the view that the Respondent registered the disputed domain name primarily for sale to the Complainant in accordance with paragraph 4(b)(i) of the Policy.
Even if the Panel is wrong about that, in any case the Panel considers that paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, in connection with a parking page with links to products relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <crazyskates.com> be transferred to the Complainant.
Date: February 26, 2018