WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BIOPHA v. Boomin Jeong
Case No. D2018-2133
1. The Parties
The Complainant is BIOPHA of Montaigu Cedex, France, represented by Cabinet Vidon Marques & Juridique PI, France.
The Respondent is Boomin Jeong of Busan, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <biolane.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 September 18, 2018. On September 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 28, 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. The Complainant requested for English to be the language of the proceeding on September 28, 2018. The Respondent requested that Korean be the language of the proceeding on October 1, 2018.
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 in English and Korean of the Complaint, and the proceedings commenced on October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Center received informal email communications from the Respondent on October 8 and 18, 2018. The Respondent requested an extension of the Response due date on October 18, 2018. An automatic extension of the Response due date was granted until October 29, 2018, under paragraph 5(b) of the Rules. The Response was filed with the Center on October 29, 2018.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 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.
4. Factual Background
The Complainant is a major player in the field of natural cosmetics for babies and children, headquartered in France. It operates its business and sells the hygiene and care products for babies and children worldwide. The Complainant owns the trademark BIOLANE and has registered such trademark in various countries, the earliest of which dates back to May 25, 1959. The Respondent is a Korean individual.
The Complainant sent a cease and desist letter to the Respondent on July 20, 2018, requesting the immediate transfer of the disputed domain name from the Respondent to the Complainant, which was not responded by the Respondent. The Respondent argues that he never received the cease and desist letter.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because the disputed domain name entirely reproduces the trademark BIOLANE. It also asserts that the Respondent has no rights or legitimate interests in the disputed domain name because it has not given the Respondent any authorization to use the trademark BIOLANE and the Respondent is not engaged in any bona fide offering of goods or services other than using the disputed domain name as a parking page for pay-per-click ads. Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith because i) the Respondent knew or should have known the existence of the trademark BIOLANE, ii) the Respondent did not respond to the cease and desist letter; and iii) the Respondent has registered the disputed domain name primarily to sell it to the Complainant.
The Respondent first contends that the Complaint must be translated into Korean so that he can understand the contents of the Complaint. He also asserts that he did not violate any right of the Complainant. In doing so, he argues that the “biolane” in the disputed domain name is a combination of the two natural words, “bio” and “lane”, in which no individual or corporation has the exclusive right. He further suggests that the Complainant registered the trademark BIOLANE in the United States on July 21, 2009, which is later than the date of the registration of the disputed domain name, which is September 21, 2008. He also submits that the trademark registered in Korea by the Complainant is BIOLANE DE BIOPHA, which is different from the disputed domain name.
6. Discussion and Findings
A. The 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, pursuant to section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers the following points: (i) the language of the contents on the website under the disputed domain name is English and the websites to which the disputed domain name is redirected contains English, which indicates the Respondent’s familiarity with English; (ii) the Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the parties’ respective arguments; and (iii) ordering the Complainant to translate the Complaint in English will cause undue delay in the process.
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 and issue a decision in English.
B. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademark BIOLANE in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of previous UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of WIPO Overview 3.0; see also, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy”. Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. Also, the Top-Level Domain, such as “.com”, is disregarded during the first element confusing similarity test. See section 1.11 of WIPO Overview 3.0.
The Respondent’s contention that the Complainant registered the trademark BIOLANE in the United States on July 21, 2009, which is later than the date of the registration of the disputed domain name, is not particularly relevant to the evaluation of this case. The Complainant already showed with supporting documents that its trademarks were registered in various countries, the earliest of which dates back to May 25, 1959, which is decades earlier than the registration of the disputed domain name. The Respondent’s other contention that the trademark registered in Korea by the Complainant is different from the disputed domain name is also irrelevant for the same reason.
Thus, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
C. Rights or Legitimate Interests
Section 2.1 of WIPO Overview provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademark to the Respondent. It also seems that the Respondent does not have any legitimate interests in the disputed domain name but the Respondent is rather using it as a parking page for pay-per-click ads with links to products competing with the products of the Complainant. Thus, the Panel finds that the Complainant has established a prima facie case that the Respondents do not have rights or legitimate interests in the disputed domain name. On the other hand, in its response, the Respondent fails to show any of the circumstances provided in paragraph 4(c) of the Policy which may indicate its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that bad faith is found when there are circumstances indicating that the Respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. In this case, according to the screen capture of the disputed domain name website submitted by the Complainant as Annex 5, the disputed domain name was up for sale for EUR 25,000, which is clearly in excess of any out-of-pocket costs that may have incurred for the registration (although the disputed domain name website currently does not contain such an offer to sell).
In addition, paragraph 4(b)(iv) of the Policy also provides that bad faith is found when a respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location. In this case, the disputed domain name contains various pay-per-click ads. Given that the Respondent fails to explain in its response how and for what commercial purposes it operated the disputed domain name, it is most plausible that the Respondent registered the disputed domain name to confuse Internet users and attract them to the Respondent’s websites for commercial gains, which constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Lastly, the Complainant submits that the Respondent was previously involved in a prior domain name dispute where the Respondent also tried to sell a disputed domain name, and thus, bad faith was found. This previous proceeding, in combination with the present case, shows a pattern of conduct by the Respondent of preventing the owner of the trademark from reflecting the mark in a corresponding domain name, which constitutes bad faith under paragraph 4(b)(ii) of the Policy.
Thus, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
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 <biolane.com> be transferred to the Complainant, BIOPHA.
Thomas P. Pinansky
Date: November 30, 2018