WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Innisfree Corporation v. Domain Administrator, See PrivacyGuardian.org / Phan Ky

Case No. D2019-3158

1. The Parties

The Complainant is Innisfree Corporation, Republic of Korea, represented by T&G Law Firm LLC, Viet Nam.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Phan Ky, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <innisvietnam.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2019. On December 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 30, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 30, 2019.

The Center verified that the Complaint together with the amended 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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent sent email communications to the Center on January 3 and 12, 2020, February 23, 2020, and March 7, 2020.

The Center appointed Karen Fong as the sole panelist in this matter on March 6, 2020. 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 leading cosmetics company based in the Republic of Korea. It trades under the brand name INNISFREE which was derived from a poem by WB Yeats, “The Lake Isle of Innisfree”. The Complainant has stores in the Republic of Korea, Hong Kong, China, Japan, Taiwan, India, Singapore, Malaysia, Thailand, Viet Nam, Indonesia, Philippines, India, United States, and Australia.

The INNISFREE trade mark is registered in many jurisdictions including Viet Nam, where the Respondent is based. The earliest trade mark registration in Viet Nam submitted in evidence, Viet Nam Trade Mark Registration No. 35428, dates back to November 13, 2000 (the “Trade Mark”).

The Complainant’s main website is found at “www.innisfree.com”. It also operates country specific websites including “www.innisfree.co.kr” for the Republic of Korea.

The Respondent is based in Viet Nam. The Domain Name was registered on March 6, 2018, using a privacy protect proxy registration service. It is connected to a website (the “Website”) which purports to sell the Complainant’s products bearing the INNISFREE trade mark at discounted prices. The Website also bears the brand name INNISFREE and there is a section of the Website which contains the Complainant’s corporate history as well as many references on the Website to the Complainant. The Complainant’s legal representatives sent a cease and desist letter in Vietnamese to a potential email address of the Respondent on October 25, 2019. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

On January 3, 2020, the Respondent sent an email to the Center stating that he/she no longer owned the Domain Name and it was transferred to a third party also based in Viet Nam. The Registrar confirmed on January 7, 2020, that the Domain Name was in the name of the Respondent. On January 12, 2020, the Respondent emailed the Center again and stated that the Domain Name has been sold to someone else a month ago for “$3000”. On February 19, 2020, the Center emailed the third party to notify him/her as a person of interest in the proceeding to provide an opportunity for a response. No response was received. On February 23, 2020, the Respondent sent an email to the Center inquiring if he/she could “negotiate this domain for around $2500”. On March 7, 2020, after notification of the Panel appointment, the Respondent emailed the Center saying that he/she did not understand and wanted it explained more clearly.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case the Domain Name contains the first two syllables of the Trade Mark, “innis”, and the addition of the geographical term “vietnam”. In the Panel’s view, “innis” is a dominant feature of the Trade Mark and is clearly recognizable in the Domain Name, and so the Domain Name is confusingly similar to the Trade Mark for the purposes of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The addition of a geographical term as a suffix does not prevent a finding of confusing similarity supported by the Respondent’s integration of a distinctive element of the Trade Mark in the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.

The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.

The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark as part of the Domain Name. The Panel notes that the Respondent is not an authorised dealer, licensee or distributor of the Complainant. From the Website, he/she purports to be a seller of the Complainant’s goods bearing the Trade Mark or somehow connected to the Complainant.

Section 2.8.1 of WIPO Overview 3.0 says this:

“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. Instead the Website appears designed to cause Internet users to falsely believe the Domain Name is endorsed and/or operated by the Complainant. The Panel finds the Oki Data principles are not satisfied in this case.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when he/she registered the Domain Name given the fame of the Trade Mark. It is implausible that he/she was unaware of the Complainant when the Domain Name was registered.

The WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

Given that the Respondent is offering for sale products bearing the Trade Mark, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith

The Panel also concludes that the actual use of the Domain Name is also in bad faith. The use of the dominant element of the Trade Mark as part of the Domain Name followed by the geographical name of the country where the Respondent is based is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products in Viet Nam. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. The emails from the Respondent that he/she has sold/transferred the Domain Name to a third party which is not confirmed by the Registrar is another indicator of typical cybersquatter behaviour as is the fact that the Domain Name was registered in the name of a privacy protect/proxy registration service. There is a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on them were authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy. Further in one of the emails from the Respondent there is an offer to sell the Domain Name for an amount exceeding the costs directly related to the registration of the Domain Name. This is evidence that the Respondent has registered the Domain Name for the purpose of selling as set out in paragraph 4(b)(i) of the Policy.

Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., the Domain Name was registered and is being used in bad faith under paragraph 4(b) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <innisvietnam.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: March 30, 2020