WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dragonsteel Entertainment, LLC v. Oh Gi Hwan

Case No. D2020-1237

1. The Parties

The Complainant is Dragonsteel Entertainment, LLC, United States of America (“USA”), represented by Strong & Hanni, P.C., USA.

The Respondent is Oh Gi Hwan, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <cosmere.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 May 15, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2020, 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 May 27, 2020, 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 May 28, 2020, the Complainant requested for English to be the language of the proceeding. On June 1, 2020, the Respondent requested for Korean to 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 in English and Korean of the Complaint, and the proceedings commenced on June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. On June 10, 2020, the Respondent requested a one-week extension of the time to file a Response. The Center invited the Complainant to comment on the Respondent’s request for a further extension. The Complainant did not submit any comments. On June 17, 2020, in accordance with the Rules, paragraph 5(d), the Center granted the Respondent a requested extension of the due date of the Response, and confirmed that the new Response due date was July 1, 2020. The Response was filed with the Center on June 29, 2020.

The Center appointed Andrew J. Park as the sole panelist in this matter on July 9, 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, Dragonsteel Entertainment, LLC, is a Limited Liability Company organized under the laws of the state of Utah, USA. According to the Complainant, “Cosmere” is the name of a universe in a series of fictional novels written by Brandon Sanderson, who has assigned all rights in these novels and in the “Cosmere” name to the Complainant. “Cosmere” is widely and exclusively associated with Brandon Sanderson’s books. The Complainant has used “Cosmere” as a trademark since at least 2009-2010 for fiction books, jewelry, and clothing to promote Brandon Sanderson’s books and also on merchandise associated with the books.

The Complainant is the owner of the following COSMERE trademark registration:

Jurisdiction

Trademark

International Classes

Registration Number

Registration Date

USA

COSMERE

9,14,16, and 25

5866305

September 24, 2019

The disputed domain name <cosmere.com> was first registered on July 30, 2008. The Respondent purchased the disputed domain name from Godaddy.com on September 3, 2016, and the ownership to the disputed domain name was actually transferred to the Respondent on September 10, 2016. According to the evidence provided by the Complainant, the disputed domain name used to resolve to a parking page but after the acquisition of the disputed domain name by the Respondent the disputed domain name displayed pay-per-click links related to Brandon Sanderson and books.

The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing three main reasons.

(a) The Respondent’s activities in registering, maintaining the disputed domain name at Godaddy.com, LLC, and transferring it to the Registrar immediately upon receiving an English email regarding the disputed domain name from the Complainant show that the Respondent is sufficiently familiar with and conversant in English.

(b) The Respondent has been the respondent in at least one other UDRP case, which was decided in English upon the panel’s conclusion. The Respondent’s prior UDRP proceedings history confirms that English is the appropriate language for this proceeding.

(c) Forcing the Complainant to participate in this proceeding in Korean would unnecessarily increase the Complainant’s costs and cause delay.

The Respondent requested Korean to be the language of the proceeding and a one-week extension of the time to file a Response. On June 17, 2020, in accordance with the Rules, paragraph 5(e), the Center granted the Respondent a requested extension of the due date of the Response, which was filed with the Center on June 29, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <cosmere.com> is identical and confusingly similar to the Complainant’s COSMERE trademark in which the Complainant has rights. The Complainant’s rights in the COSMERE trademark are very strong because COSMERE is a coined term which is only used in Brandon Sanderson’s novel and has no meaning outside of the Complainant’s use.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not a licensee of the Complainant and has no other claim on rights in the disputed domain name. The Respondent’s use of the disputed domain name is limited to parking the disputed domain name and attempting to sell it, and therefore, the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name either.

3) the disputed domain name was acquired and is being used in bad faith by the Respondent. The Complainant claims that the Respondent has acquired and registered the disputed domain name in bad faith primarily for the purpose of selling the disputed domain name registration to the owner of the trademark for far more than the costs of registration and other costs directly related to the disputed domain name.

B. Respondent

The Respondent requested that the Panel dismiss the Complainant’s claim to transfer the disputed domain name to the Complainant on the grounds summarized below.

(1) The Respondent does accept the Complainant’s claim that the disputed domain name is identical or confusingly similar to the trademark or service mark to which the Complainant has rights. However, the Respondent argues that the disputed domain name does not have the meaning that the Complainant contends. That is, according to the Respondent, the disputed domain name is a coined term that is a compound word which combines “cos,” which is short for cosmetics, and “mere,” which means simple, and that taken together, means “simple cosmetics.”

In the Republic of Korea, it is clear that “cos” is recognized as an acronym for cosmetics and that it is widely used as such. Many cases can be found where “cos” is included in the domain names of cosmetics related websites, including <cosedu.co.kr> for Korea Cosmetic Specialist Association. In addition, there are many domain names which are identical or similar to the disputed domain name and which are registered with various extensions in other countries.

The Respondent also argues that domain names are used only on-line and are often not created by the combination of commonly used words. Thus, it is natural that these new words do not fit into traditional grammar and thus are not found in Internet search results. The Respondent further claimed that languages can change to reflect the times in which we live; that new words may be created to refer to new things that emerge in a particular era; and that there may be many cases in which new words are created by combining words that are popular at a particular time. When all of these facts are taken into consideration, the Complainant’s claim that it has an exclusive right to COSMERE only based on the results of a Google search are not valid.

(2) Regarding whether the Respondent has rights or legitimate interests in the disputed domain name, the Respondent argues that:

(a) the Respondent is the owner of a business that relates to domain name trading. The Respondent, as a legal entity, registered with the Korea National Tax Service for its business and pays taxes on its business profits. The Respondent registers many domain names consisting of words that they consider to be of commercial value and offers to sell them in the open market, which is a legitimate business;

(b) it is common and widely accepted for individuals or companies that have registered domain names for domain trading related businesses, such as the Respondent, to list domain names at Sedo.com, Aftenic.com, or Godaddy.com. This is done to have better access to potential buyers or to seek profits through parking services that expose commercial advertisements of these companies. The Respondent, too, has listed the disputed domain name on Sedo.com and parked it on an automatically generated website;

(c) it is not the Respondent’s fault for not being aware of the Complainant’s trademark rights and the Complainant’s advertisement appearing on the page to which the disputed domain name is linked. The reason is that when the Respondent acquired and listed the disputed domain name on Sedo.com, the Complainant did not register its trademark COSMERE. In addition, neither the name of the author of the books to which the Complainant has rights nor the titles of the books contain the word “cosmere”, and the book was not even published in the Republic of Korea, thus making it impossible for the Respondent to know about the Complainant and its books; and

(d) although the main purpose of registering and maintaining the disputed domain name is primarily to sell it, the Respondent also registered it for the purpose of conducting a cosmetics business. The Respondent also filed a trademark right for the term “cosmere” with the Korean Intellectual Property Office on May 27, 2020 to protect the interests of its future business and the disputed domain name itself.

(3) The Respondent’s claims as to whether the disputed domain name was registered and used in bad faith are as follows:

(a) In order for the Respondent to register and use the disputed domain name in bad faith, the Respondent must be aware of the existence of the Complainant or its trademark at the time the Respondent purchased the disputed domain name. However, the Respondent acquired the disputed domain name in 2016, well before the Complainant registered COSMERE as a trademark in 2019.

(b) The book by author Brandon Sanderson, published and sold by the Complainant, has neither been published in the Republic of Korea nor translated into Korean, meaning that there was no opportunity for the Respondent to recognize them. In addition, none of Brandon Sanderson’s books have a title that includes the word “cosmere”.

(c) Therefore, it was impossible for the Respondent to have known about the Complainant and its trademark, and, thus, the Respondent has neither registered nor used the disputed domain name in bad faith.

(4) Considering all the facts mentioned above, it is difficult to accept the Complainant’s claim that the Respondent registered and used the disputed domain name in bad faith. Further, even if the Panel considers the merits of the Complaint based only on the Complainant’s trademark registered in 2019, it is far later than the date of the Respondent’s purchase of the disputed domain name in 2016. Accordingly, the Respondent requests that the Complainant’s filing for this dispute be properly judged pursuant to the Rules, paragraph 15(e). The Respondent believes that the Complainant has raised this dispute for the purpose of causing the Respondent to forfeit the disputed domain name or to primarily harass the Respondent.

6. Discussion and Findings

A. Language of Proceeding

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant was required to translate the Complaint and other documents into Korean; and

2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments.

3) In addition, the Panel further notes that at the time the Complainant contacted the Respondent by email (on February 2020) the registrar for the disputed domain name was GoDaddy.com, LLC. However, sometime after such email communication, the Respondent transferred the disputed domain name to the Registrar Megazone Corp., dba HOSTING.KR.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) consider the Response and any relevant materials in Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the mark COSMERE and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of the generic Top-Level Domain extension “.com” is typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.

The Respondent argues that it owns and operates a legitimate business that is involved in the buying and selling of domain names for profit. The Respondent also argues that it purchased the disputed domain name for the purpose of using it in connection with a cosmetics business.

On balance, the Respondent’s “legitimate business” argument fails in the Panel’s view to carry the burden of demonstrating its rights or legitimate interest in the disputed domain name. The issue, of course, is not whether the Respondent is engaged in a legitimate business, but rather, whether he has a right or legitimate interest in the disputed domain name. Further, as discussed in the next section on bad faith registration and use, the Panel finds that the circumstances of the case leads to a finding that the Respondent registered the disputed domain name with the Complainant’s COSMERE mark in mind (which had been used in Brandon Sanderson’s books for over half a decade prior to the Respondent’s acquisition of the disputed domain name, as well as subsequently on merchandise associated with the books). The Panel finds it suspect that the Respondent filed a trademark right for the term “cosmere” with the Korean Intellectual Property Office in May 27, 2020 (i.e., after having knowledge of this dispute, and almost four years after the acquisition of the disputed domain name). The Respondent’s claim that he registered the disputed domain name given his business in buying and selling domain names for profit, as a result of a combination of “cos” (short for cosmetics), and “mere” (which would mean simple), does not explain the long use for a pay-per-click website with links to Brandon Sanderson after his acquisition of the disputed domain name.

Further, the Respondent’s “cosmetics business” argument noted above must also fail, since the Respondent failed to produce any evidence to support that (before any notice of the dispute) he made preparations to use the disputed domain name for a “cosmetics business”.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Thus, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the 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 or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i) by registering the disputed domain name in order to sell the disputed domain name to the public or to the Complainant in an amount in excess of the Respondent’s costs related to the disputed domain name.

The Panel notes that while the Complainant’s COSMERE trademark was registered on September 24, 2019, it has a claimed first use in commerce of August 31, 2010 for several products.

The Respondent’s argument that it owns a legitimate business that buys and sells domain names for profit does not explain the reason why the disputed domain name has been used from 2016 to 2019 (i.e., just after its acquisition), for a site with pay-per-click links related to Brandon Sanderson and books. The Panel further notes from the evidence provided by the Parties, that the disputed domain name was purchased at an auction for expired domain names and subsequently used for pay-per-click links targeting the Complainant and its area of commerce, and moreover was offered for sale for a price in excess of the Respondent’s documented out-of-pocket costs. In view of the above, the Panel is ready to find bad faith consistent with the circumstance set forth in paragraph 4(b)(i) of the Policy. Further, especially noting the suspect timing of the Respondent’s trademark application, the Respondent’s argument that he registered the disputed domain name for the additional purpose of using it in connection with a cosmetics business is not, by itself, credible and cannot be accepted barring supporting evidence. The Panel moreover notes that if the Respondent’s business is as a domain name trader, it does not add up that his “primary” purpose would be to sell such domain name but to “also” use it for a cosmetics business. As mentioned previously, the Respondent failed to provide any such evidence to support the claim that the disputed domain name was acquired for purposes of use in connection with a purported cosmetics business. Furthermore, the Panel finds irrelevant that the Respondent’s commercial gain due to the monetization of the website at the disputed domain name has been low. The Panel finds that the Respondent has likely tried to create an association between the disputed domain name and the mark COSMERE used by the Complainant, and has tried to attract Internet users to its website by creating a likelihood of confusion due to such association.

Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 disputed domain name <cosmere.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: July 24, 2020