WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milipol v. Tag Jong Han
Case No. D2019-0060
1. The Parties
The Complainant is Milipol of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Tag Jong Han of Siheung-si, Gyeonggi-do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <milipoloutdoor.com> is registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2019. On January 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2019, 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 January 17, 2019, 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 January 18, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding 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 in English and Korean of the Complaint, and the proceedings commenced on January 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2019.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on February 25, 2019. 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 March 25, 2019, and the parties were so notified.
4. Factual Background
The Complainant is a French economic interest group which organizes trade shows and exhibitions related to police equipment, civil and military security, and related services. The Complainant has been using MILIPOL as a trademark and trade name since as early as 1995. The Complainant owns multiple trademark registrations for MILIPOL in a number of countries worldwide, including in France, the United States, and Japan (International Registration No. 641805, registered on October 8, 1995).
The Respondent appears to be a Korean individual with a residence in the Republic of Korea.
The disputed domain name was registered on November 25, 2018, and resolves to a generic “under construction” message in Korean.
5. Parties’ Contentions
The Complainant contends that the term “outdoor” is descriptive, and therefore, the disputed domain name is confusingly similar to MILIPOL to which the Complainant has trademark registrations worldwide.
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 points out that the Complainant filed a UDRP complaint against this very Respondent in 2015 concerning domain names incorporating the MILIPOL mark, and that the Respondent was ordered to transfer the domain names to the Complainant (MILIPOL v. Tag Jong Han, WIPO Case No. D2015-0506 (<milipolasia.com>, <milipolshanghai.com>, and <themilipol.com>). Based on this, there can be no reason for the Respondent to have registered the disputed domain name other than for the purpose of taking advantage of the reputation and goodwill of the MILIPOL mark for financial gain. Further, the disputed domain name resolves to a “under construction” page which constitutes use in bad faith.
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 the Notification 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. The Respondent subsequently chose not to submit a Response.
Given the fact that the Complainant is based in France 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, but the Respondent neither raised an objection as to language nor submitted any arguments whatsoever in these proceedings.
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 trademark registrations for MILIPOL in various jurisdictions. The disputed domain name entirely incorporates the Complainant’s mark and simply adds the term “outdoor”. The added term “outdoor” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.
For the reasons mentioned above, the Panel finds that the first element 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 Response to these assertions by the Complainant, and there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above and below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
D. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith registration and use in this case.
First, “milipol” is a coined term, and the Respondent’s registration for a domain name containing the exact same term should be viewed as more than mere coincidence.
Further, based on the Respondent’s history of cybersquatting and the prior UDRP decision, there does not seem to be any apparent reason for the Respondent to have obtained registration for the disputed domain name other than to profit from its close similarity to the Complainant’s MILIPOL mark.
For the reasons given above, the Panel finds that the third and final element has been 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 <milipoloutdoor.com> be transferred to the Complainant.
Date: March 25, 2019