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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Innisfree Corporation v. Lequang Chau

Case No. D2021-3725

1. The Parties

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

The Respondent is Lequang Chau, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <innisfreestore.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 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 November 16, 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 November 17, 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 proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on December 21, 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, founded in 2000 and based in the Republic of Korea sells cosmetics in that country and in various Asian countries under the INNISFREE brand. It sells from 434 locations in the Republic of Korea and operates more than 80 stores in Asia. It has promoted its products in Viet Nam through a Vietnamese company since 2010. It has also promoted its products online through its website at <innisfree.com> and through various country specific websites. It owns numerous trade mark registrations for its INNISFREE mark including Vietnamese trade mark registrations 35428 for INNISFREE registered on November 13, 2000 and 210524 for the INNISFREE word mark in fancy font and bouquet logo registered on August 13, 2013.

The disputed domain name was registered on September 23, 2015 and it resolves to a website under the name “Innisfree Store” that promotes and sells INNISFREE branded cosmetic products, reproduces INNISFREE in the Complainant’s distinctive fancy font and also the Complainant’s bouquet logo and also sets out a considerable amount of information about the Complainant’s Innisfree brand.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns trade mark registrations for its INNISFREE mark as set out above and that the disputed domain name wholly incorporates its INNISFREE mark together with the common word “store”. It says that the disputed domain name is therefore confusingly similar to its INNISFREE mark.

The Complainant also asserts that it has not authorised or permitted the Respondent to register the disputed domain name and that the Complainant’s rights in the INNISFREE mark predate the registration of the disputed domain name. The Complainant further submits that the Respondent is not commonly known by the disputed domain name and has not made preparations to use the disputed domain name or a name corresponding to it in relation to a bona fide offering of goods or services.

It asserts that there is no disclaimer on the website to which the disputed domain name resolves and that the Respondent is using the disputed domain name to resolve to a website which is designed to cause Internet users to confuse, or falsely associate it with, or think that it is endorsed by the Complainant. It notes that the website at the disputed domain name features the Complainant’s INNISFREE and INNISFREE and bouquet logo trade marks and sells cosmetics bearing the INNISFREE trade marks and that it is only right at the very end of the site that it becomes apparent that the products are being sold by “Lotte Shop”.

As far as bad faith is concerned the Complainant says that the Respondent must have been aware of the Complainant and of its marks at the time of registration of the disputed domain name because it is using the Complainant’s marks on its website at the disputed domain name together with information about the Complainant’s history and products in addition to offering the Complainant’s products for sale from the website.

It further says that the Complainant’s use of its very well reputed INNISFREE mark and registration of it in the disputed domain name in order to unfairly create an impression of false association with the Complainant is of itself evidence of bad faith. It asserts that this is a case fulfilling the requirements of paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally used the disputed domain name to attract Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant also notes that it has received no response to the cease and desist letter sent to the Respondent on June 9, 2020 and the fact that the Respondent used a privacy service to try to hide information on its registration of the disputed domain name is also indicative of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights in Vietnamese trade mark registration 35428 for INNISFREE registered on November 13, 2000. The disputed domain name wholly incorporates the word “Innisfree” and is therefore confusingly similar to the Complainant’s registered trade mark. The additional inclusion in the disputed domain name of the common English word “store” before the Top Level Domain “.com” element does not prevent a finding of confusing similarity.

As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not authorised or permitted the Respondent to register the disputed domain name and that the Complainant’s rights in the INNISFREE mark predate the registration of the disputed domain name. The Complainant has also submitted that the Respondent is not commonly known by the disputed domain name and has not made preparations to use the disputed domain name or a name corresponding to it in relation to a bona fide offering of goods or services. The Panel notes that the Complainant has promoted and sold its products under the INNISFREE mark since 2010 in Viet Nam through a local company.

Noting that there is no disclaimer on the website to which the disputed domain name resolves indicating that the site is not endorsed by or affiliated with the Complainant, the Complainant has also submitted that the Respondent is using the disputed domain name illegitimately to resolve to a website which is designed to cause Internet users to confuse, or falsely associate it with, or think that it is endorsed by the Complainant. It has noted in this regards that the website at the disputed domain name features Internet users that the offered INNISFREE products are being sold by “Lotte Shop”. This says the Complainant is not bona fide conduct.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to respond to or to rebut this case. For this reason and as set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on September 23, 2015 long after the Complainant registered Vietnamese trade mark 35428 for INNISFREE on November 13, 2000 and after the Complainant’s Vietnamese agent commenced promotion and sales of its INNISFREE products in 2010. The Complainant’s mark is highly distinctive in relation to cosmetic products. The fact that by that time the Complainant’s business under its INISFREE mark was very well established in Asia and that the website to which the disputed domain name resolves features the Complainant’s INNISFREE and INNISFREE and bouquet logo trade marks and sells cosmetics bearing the INNISFREE trade marks, strongly suggests that the Viet Nam based Respondent was more likely than not well aware of the Complainant’s INNISFREE mark when it registered the disputed domain name.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

As described under Part B above, the Respondent has intentionally used the disputed domain name to confuse and divert Internet users to its own website in circumstances that they may very well think that the disputed domain name incorporating the INNISFREE mark would take them to the Complainant’s site. The website at the disputed domain name features the Complainant’s INNISFREE and INNISFREE and bouquet logo trade marks and sells cosmetics bearing the INNISFREE trade marks. It is only if Internet users go right at the very end of the site that it may become apparent to them that the offered INNISFREE products are being sold by “Lotte Shop” and even then, they may be uncertain as to whether the Complainant has authorised or endorsed the website. It is apparent that the Respondent is using the disputed domain name intentionally to confuse or deceive Internet users in this regard for its own commercial gain and that the requirements of paragraph 4(b)(iv) of the Policy are fulfilled in this case.

The fact that the Complainant received no response to the cease and desist letter sent to the Respondent on June 9, 2020 supports an inference of bad faith.

Accordingly, the Panel therefore finds that the disputed domain name has been both registered and used in bad faith and that the Complaint also succeeds under this element 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 disputed domain name <innisfreestore.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: January 4, 2022

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