WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Implantcast GmbH v. Beats
Case No. D2018-1833
1. The Parties
The Complainant is Implantcast GmbH of Buxtehude, Germany, internally represented.
The Respondent is Beats of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <implantcast.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 August 9, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 29, 2018.
On August 22, 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 the same day, the Respondent requested that Korean be the language of the proceeding. On September 4, 2018, the Complainant requested that English be the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 in English and Korean of the Complaint, and the proceedings commenced on September 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. On October 2, 2018, the Center informed the Parties that it would proceed to commence the panel appointment process.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on October 19, 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. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to November 16, 2018, and the parties were so notified.
4. Factual Background
The Complainant is a German medical technology company specializing in implants and prosthetics. On June 2, 2006, the Complainant filed a trademark application for IMPLANTCAST before the European Trademark (“EU TM”) and the mark was registered on May 7, 2007, Registration No. 005114301. The Complainant’s goods and services are offered in over 50 countries.
The Respondent appears to be a Korean entity with an address in the Republic of Korea.
According to the WhoIs information, the disputed domain name was registered on July 1, 2007.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the IMPLANTCAST 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 used in bad faith. The Complainant notes that the disputed domain name is linked to a parking service which shows the Respondent’s bad faith intent to profit from the fame of the IMPLANTCAST mark.
The Respondent did not reply to the Complainant’s contentions.
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 in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. Although the Respondent requested the proceedings to be in Korean, the Respondent subsequently chose to not file a formal Response.
First, the Panel notes that English does not appear to be the mother language of either party. Given the fact that the Complainant is based in Germany and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this decision. Besides, both parties were given the opportunity to submit arguments in the language of their preference, and the language in which to render the decision is reserved for the Panel.
Under these circumstances, the Panel finds it proper and fair to render this decision in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds a trademark registration in the EU TM for IMPLANTCAST which is identical to the disputed domain name.
For the reasons mentioned above, the Panel finds that the first element of the Policy has been established.
C. Rights or Legitimate Interests
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. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen to file no substantive Response to these assertions by the Complainant, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds 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.
D. Registered and Used in Bad Faith
The Panel finds that there are more than sufficient reasons to find bad faith in this case. First, the disputed domain name is identical to the Complainant’s name and trademark. Further, the Respondent linked the disputed domain name with a domain name parking service which shows sponsored links to websites advertising implants which are the exact goods for which the Complainant’s IMPLANTCAST mark is known. Based on the circumstances, no reasonable conclusion can be reached other than that the Respondent intentionally registered and used the disputed domain name for the purpose of financially benefiting from visitors that reach the disputed domain name by mistake.
In addition, the Respondent is no stranger to UDRP proceedings and was named as the Respondent in the case Skorpio Limited v. Beats, WIPO Case No. D2018-0443 (<drkshdw.com>). In this case, the Panel found the Respondent to have registered and used the disputed domain name in bad faith, and ordered that it be transferred to the Complainant.
For the reasons given above, the Panel finds that the third and final element of the Policy has been sufficiently 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 <implantcast.com> be transferred to the Complainant.
Date: November 16, 2018