WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spigen Korea Co., Ltd. v. Blue Face
Case No. D2021-1188
1. The Parties
The Complainant is Spigen Korea Co., Ltd., Republic of Korea, represented internally.
The Respondent is Blue Face, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <spigencase.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, 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. The Center sent an email communication to the Complainant on April 20, 2021, 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 April 25, 2021.
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 proceeding commenced on April 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 28, 2021. 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 company incorporated in the Republic of Korea, and a manufacturer of mobile accessories, including cases for mobile phones, tablet PCs and smart watches, marketed and sold under the trade mark SPIGEN (the “Trade Mark”).
The Complainant is the owner of several registrations for the Trade Mark, including United States registration No. 5666738, with a registration date of January 29, 2019.
The Respondent is apparently based in the United States.
C. The Disputed Domain Name
The disputed domain name was registered on January 18, 2021.
D. Use of the Disputed Domain Name
The disputed domain name was previously resolved to an English language website containing the Complainant’s Trade Mark and logo and, at first glance, apparently promoting and offering for sale mobile phones and accessories, but which website largely contains nonsensical placeholder text.
The disputed domain name was subsequently passively held, at which time the landing page for the disputed domain name using the Chrome search engine suggested that attackers might be using the website at “www.spigencase.com” to try to steal users’ information (for example, passwords, messages, or credit cards).
As at the date of this Decision, the disputed domain is resolved to a website containing the Complainant’s Trade Mark and logo which copies the look and feel of the Complainant’s official website, and appears to offer for sale the Complainant’s mobile phone cases under the Trade Mark.
Both versions of the Respondent’s website invite users to provide their personal contact information, on the “Contact Us” page.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. The Complainant also contends that it has received complaints from its customers that the Respondent’s website has been used to engage in fraudulent transactions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “case”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has made use of the disputed domain name in order to pass off its website as a website of the Complainant, and fraudulently lure Internet users into providing personal information to an unauthorised source that is not associated with the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the manner of the use of the disputed domain name highlighted in Section 6.2.B. above, the Panel finds that the Respondent knew about the Trade Mark of the Complainant when registering the disputed domain name, and registered and used the disputed domain name to impersonate the Complainant and fraudulently lure Internet users into providing sensitive information. Therefore, the requisite element of bad faith has been made out.
The Panel therefore finds that the disputed domain name has been registered and is being used 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 <spigencase.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: June 10, 2021