ADMINISTRATIVE PANEL DECISION
Renée Blanche S.r.l. v. Yang Kyung Won
Case No. D2018-0541
1. The Parties
The Complainant is Renée Blanche S.r.l. of Salento, Italy, represented by Società Italiana Brevetti S.p.A.., Italy.
The Respondent is Yang Kyung Won of Seoul, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <reneeblanche.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 March 12, 2018. On March 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2018, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the contact details.
On March 16, 2018, 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 March 19, 2018, the Respondent requested that Korean be the language of the proceeding. On March 19, 2018, the Complainant requested that English 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 the Respondent of the Complaint, and the proceedings commenced on March 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. On March 29, 2018, the Respondent requested an extension of the Response due date. On April 4, 2018, the Center granted the Respondent an additional four calendar days to respond, and confirmed the new Response due date was April 15, 2018. On April 11, 2018, the Respondent requested a further extension of the Response due date. On April 13, 2018, the Center granted the Respondent an additional seven days to file a Response, and confirmed the new due date for Response was April 22, 2018. The Response was filed with the Center on April 23, 2018.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on April 30, 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.
4. Factual Background
The Complainant is an Italian company that has been operating in the beauty and health care industry since 1970. The Complainant is the owner of several trademark registrations for the mark RENÉE BLANCHE and its variations (i.e., RB RENÉE BLANCHE) in several countries, the earliest of which was registered on March 26, 1998, in Italy (Registration No. 301995900440685). The Complainant also is the owner of many domain names which incorporate the trademark RENÉE BLANCHE, including, but without limitation, <reneeblanche.it>, <reneeblanche.info>, <reneeblanche.biz>, <reneeblanche.hk>, etc.
The Respondent is a Korean individual who operates an Internet community for fans of Audi cars. The Respondent registered the disputed domain name on September 23, 2011. The disputed domain name <reneeblanche.com> redirects users to the website for such Internet community.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant notes that (i) its trademark RENÉE BLANCHE pre-dates the registration of the disputed domain name; (ii) the Respondent has registered the disputed domain name primarily for the purpose of sale of the same; (iii) the Respondent is using the disputed domain name to divert Internet users from the Complainant’s true website; (iv) the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name and has engaged in a pattern of such conduct.
In the Response written in Korean, the Respondent contends that he registered the disputed domain name to create a website for an environmental campaign related to eco-friendliness and energy saving. He asserts that he registered the disputed domain name because “RENÉE BLANCHE” translates to “Renew White”, which he believed was a perfect fit for his website for the environmental campaign. He also contends that he was not aware of the trademark RENÉE BLANCHE until he was notified with the domain name dispute by the Center. He further contends that he did not have any intention to sell the disputed domain name.
At the same time, the Respondent acknowledges that the disputed domain name redirects users to the website for the Internet community for fans of Audi cars. He also contends that the purpose of such website is environmental campaigning.
Finally, the Respondent contends that the Complainant is trying to engage in “Reverse Domain Name Hijacking” and attempting to hijack his legal rights in the disputed domain name.
6. Discussion and Findings
A. 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 both Parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English.
In determining the language of the proceeding in the present case, the Panel considers the following points: (i) the Respondent, upon his request, was given an extension of 11 days to file his Response so that he could get a Korean translation of the Complaint; (ii) the Response (in Korean) indicates the Respondent’s knowledge of the requirements under the UDRP; and (iii) the Panel is familiar with both languages, capable of reviewing all the documents and materials in both languages, and able to give full consideration to the Parties’ respective arguments.
In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it holds trademark registrations for the mark RENÉE BLANCHE. The disputed domain name incorporates this trademark in its entirety, and “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.” Active Sportswear Int. A/S v. Yang Kyung Won, WIPO Case No. D2016-0887. UDRP panels also held that “domain names are identical or confusingly similar to a trade mark for purposes of the Policy ‘when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.’” Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150 (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In light of the previous UDRP decisions, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
C. Rights or Legitimate Interests
By demonstrating that (i) the Complainant is the registered owner of the trademark RENÉE BLANCHE; (ii) the Complainant has neither authorized nor given its consent to the Respondent to register and use the trademark; and (iii) the Respondent is not known and cannot be known by the disputed domain name, the Complainant has met its initial burden of making a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests.
The disputed domain name redirects Internet users to a website for fans of Audi cars, which is not in any way associated with the trademark RENÉE BLANCHE. The website has several advertisements and pay-per-click links relating to the sale and purchase of cars and automobile accessories, which also have nothing to do with the trademark RENÉE BLANCHE. Using a disputed domain name to divert Internet users to a website with such advertisements and pay-per-click links does not constitute bona fide offerings of goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 2.5 and section 2.9; See also Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Thus, the Respondent fails to show that he used the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent also fails to show that he has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights.
Finally, the Respondent’s contends that he registered the disputed domain name to create a website for an environmental campaign to promote eco-friendliness and energy saving, and therefore, he has rights or legitimate interests. The Respondent asserts that this contention is supported by the fact that he created a website “www.renewwhite.com”, which has some environmental-related content. The problem with this approach is that the website “www.renewwhite.com” was created only after he found out about the present domain name dispute. The Panel took the liberty of conducting a WhoIs search of the domain name <renewwhite.com>. Although the Respondent registered the disputed domain name in 2011, he created <renewwhite.com> on March 27, 2018, which is right after he learned that the Complaint has been filed against him. A sudden creation of a website which has not existed for the past nine years is not enough to support the Respondent’s contention that he registered the disputed domain name to create a website for an environmental campaign. On the contrary, the questionable timing, along with the fact that the disputed domain name has kept, and still is, diverting people to the website for Audi fans, raises a suspicion that the Respondent only created the website to come up with an improvised excuse for the wrongful use of the disputed domain name. Regardless of what his true intention was, the presented facts do not show any legitimate, noncommercial use of the disputed domain name by the Respondent.
In light of the foregoing, the Panel finds that the Respondent fails to show his rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that a respondent is deemed to have registered and used a domain name in bad faith if “by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.” Here, it is clear that the Respondent has used the disputed domain name to attract Internet users to the website for Audi car fans to generate commercial gains through the advertisements and pay-per-click links.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
E. Reverse Domain Name Hijacking
“(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements […],
(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint […],
(iii) reasonably ignoring established Policy precedent […],
(iv) the provision of false evidence, or otherwise attempting to mislead the panel,
(v) the provision of intentionally incomplete material evidence […],
(vi) the complainant’s failure to disclose that a case is a UDRP refiling,
(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis,
(viii) basing a complaint on only the barest of allegations without any supporting evidence.”
The Respondent has neither shown any of the above circumstances nor raised any other reasonable grounds for the Reverse Domain Name Hijacking claim. Therefore, the Panel finds that the Respondent’s claim is without merit.
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 <reneeblanche.com> be transferred to the Complainant, Renée Blanche S.r.l.
Thomas P. Pinansky
Date: May 13, 2018