WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ResMed Pty. Ltd. v. Nam Jong Kang
Case No. DCO2021-0063
1. The Parties
The Complainant is ResMed Pty. Ltd., Australia, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Nam Jong Kang, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <resmed.co> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2021, 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.
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 of the Complaint, and the proceedings commenced on August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on September 6, 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 ResMed Pty, Ltd., a global leader in digital health and cloud-connected medical devices. Its solutions transform care for people with sleep apnea, chronic obstructive pulmonary disease and other chronic diseases. The Complainant employs more than 7,500 people and sells its products in approximately 140 countries, through a combination of wholly owned subsidiaries and independent distributors.
The Complainant owns several registrations for the mark RESMED, including the following:
- Republic of Korea registration no. 4009034210000, registered on February 8, 2012 in classes 09 and 10;
- Australia registration no. 818621, registered on January 12, 2021 in class 10;
- United States of America registration no. 2722982, registered on June 10, 2003 in class 10; and
- European Union registration no. 001455567, registered on February 20, 2001 in class 10.
The Complainant is also the owner of many domain names comprising “ResMed”, such as <resmed.com>, duly registered on December 9, 1995.
The disputed domain name was registered on July 3, 2015, and redirects to a website featuring links to third-party websites, some of which directly compete with Complainant’s business.
5. Parties’ Contentions
The Complaint mentions that the disputed domain name comprises the Complainant’s trademark RESMED in its entirety, resulting in a disputed domain name that is identical to the Complainant’s trademark.
The Complainant argues that the Respondent is not sponsored by or affiliated with the Complainant in any way, is not authorized to register or use the disputed domain name and has no rights or legitimate interests in the disputed domain name. The Complainant adds that the Respondent is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.
The Complainant claims that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant’s says that the disputed domain name redirects to third-party websites and some of them are the Complainant’s competitors, which proves that Respondent has full knowledge of the Complainant’s rights in the trademark RESMED and registered the disputed domain name aiming to take any kind of advantage of the Complainant’s good reputation in its trademark.
In addition to the above, the Complainant informs that the Respondent has previously been involved in several different UDRP cases, which provides evidence of the pattern of cybersquatting in which the Respondent has been engaging. Also, the Respondent currently holds registrations for several different domain names that misappropriate the trademarks of well-known brands and businesses.
According to the Complainant, given the reputation of the trademark RESMED, the disputed domain name was registered with the clear intention to create a likelihood of confusion with the Complainant’s trademark and domain name, aiming undue advantage.
The Complainant also mentions that the Respondent has ignored the Complainant’s attempts to solve this case by failing to respond to the cease and desist letter.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The evidence presented in the Complaint demonstrates that the Complainant is the owner of trademark registrations for RESMED in different jurisdictions.
The disputed domain name comprises the trademark RESMED in its entirety.
As numerous prior UDRP panels have already recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register a domain name containing the trademark RESMED and/or that the Respondent is commonly known by the disputed domain name.
There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. In this context, the Complaint showed evidence that the Respondent redirected the disputed domain name to other websites, probably with the intention to create confusion and/or association between the disputed domain name and the Complainant’s trademarks and activities, aiming profit.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark in its entirety, does not correspond to a bona fide use of the disputed domain name under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark RESMED is registered by the Complainant in different jurisdictions and has been used for years, enjoying a great reputation in its segment. Also, the Complainant registered the domain name <resmed.com>, which resolves to its official website. Most of these trademark registrations and the domain name <resmed.com> predate the registration date of the disputed domain name.
Noting all the evidence presented in the Complaint, including the fact that the Respondent has already registered several other domain names comprising well-known marks, there is no doubt that the disputed domain name represents an intentional reproduction of the Complainant’s mark and that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant’s RESMED mark is distinctive and has worldwide visibility. Thus, a domain name that blatantly reproduces such a known mark is already suggestive of the registrant’s bad faith. It is not conceivable that the Respondent would not have been aware of the Complainant’s services and its trademark rights at the time of the registration of the disputed domain name.
It does not seem to make any sense for the Respondent to register the disputed domain name, except to create some kind of confusion and/or association with the Complainant and its trademark, as well as potentially disrupt the Complainant’s business.
Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s attempt of taking unfair advantage of the trademark RESMED has been demonstrated.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations nor the cease and desist letter sent by the Complainant on June 1, 2021 and the subsequent reminders sent on June 11, 2021 (second notice) and June 21, 2021 (third and final notice).
In these circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name was 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, <resmed.co> be transferred to the Complainant.
Mario Soerensen Garcia
Date: September 20, 2021