WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bio Veda Action Research Private Limited v. H.W. Cheong, Bsuntransport

Case No. D2017-0221

1. The Parties

The Complainant is Bio Veda Action Research Private Limited of Noida, India, represented by Anand & Anand, India.

The Respondent is H.W. Cheong, Bsuntransport of Incheon, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <biotiquekorea.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2017. On February 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2017, 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 February 13, 2017, 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 February 21, 2017, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply. On February 24, 2017, the Complainant filed an amended Complaint.

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 February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2017.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 30, 2017. 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, Bio Veda Action Research Private Limited is a private limited company. It was incorporated in India on the March 15, 2000. The company was originally founded in 1992 and formerly known as Biotique Private Limited. The Complainant changed its name to Bio Veda Action Research Private Limited in 2000.

The Complainant offers skin care, hair care, body care, and baby care products under the BIOTIQUE brand name. Through the Complainant’s extensive and continuous use of the trademark BIOTIQUE since its inception in India as well as internationally, the trademark BIOTIQUE has acquired distinctiveness and is a well-known trademark associated exclusively with the Complainant and its business.

In addition to the Complainant’s common law rights to the BIOTIQUE mark, the Complainant also has registered rights to said mark in India, Australia, Canada, Singapore, New Zealand, China, the Czech Republic, South Africa, and the United States of America, earliest registration dating back to 1997. Further, the Complainant has a vast online presence, including through its website at “www.biotique.com”, as well as major websites such as “www.amazon.com”, “www.flipkart.com”, “www.snapdeal.com”, “www.nykaa.com”, “www.healthkart.com”, “www.newu.com”, “www.bigbazaar.com”, “www.firstcry.com”, “www.aliexpress.com”, and “www.global.gmarket.co.kr”.

The Respondent has not responded to the Complaint.

The disputed domain name <biotiquekorea.com> was registered by the Respondent on June 16, 2016. The disputed domain name does not resolve to an active website.

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 <biotiquekorea.com> is identical and confusingly similar to the Complainant’s BIOTIQUE trademark and infringes upon the Complainant’s exclusive and indisputable common law and registered rights in and to the mark. The Respondent used the Complainant’s trademark BIOTIQUE in the disputed domain name in its entirety to induce Internet users into believing that the Respondent has a trade connection, association, relationship or approval with/of the Complainant.

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the mark BIOTIQUE. The Respondent shows no evidence that it has made use of or intends to make use of the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent does not develop a business nor engage in any commercial activity on the website. In addition, a general search of the disputed domain name revealed no entity, product or service using the BIOTIQUE mark other than entities affiliated with the Complainant.

3) the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark BIOTIQUE was used by the Complainant first and was registered well before the Respondent became the owner of the disputed domain name <biotiquekorea.com> in 2016. The Complainant claims that the Respondent’s bad faith is evidenced by the fact that despite being served with a cease-and-desist notice from the Complainant, the Respondent failed to transfer the disputed domain name to the Complainant.

4) The Complainant’s BIOTIQUE mark is well-known and it is obvious that the Respondent registered the disputed domain name without the Complainant’s authorization despite being aware of the Complainant’s exclusive rights to the mark and its global reputation. The Complainant further claims that the Respondent has registered or has acquired the disputed domain name for the purpose of transferring the disputed domain name to the Complainant or to a competitor of the Complainant for valuable consideration. The Complainant also claims that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name.

B. Respondent

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

6. 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 administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account: Although the Complainant submitted the Complaint in English, the proceeding was notified to the Respondent in both English and Korean, and the Respondent has chosen not to participate in the proceeding despite having the opportunity to do so (by either requesting that the proceeding be conducted in Korean or submitting a response to the Complaint).

In light of these circumstances, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.

7. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (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.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.

A. 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 BIOTIQUE and that the disputed domain name is confusingly similar to the Complainant’s trademark BIOTIQUE. The disputed domain name incorporates the Complainant’s trademark BIOTIQUE in its entirety, and the added word “Korea” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark.

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

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) 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 may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

Here, the Panel finds that the Complainant has made out an unrebutted 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. 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 as they have not been denied by the Respondent.

The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks, which is not descriptive or generic as it relates to beauty products in order to free ride on the notoriety of the Complainant’s mark. The Panel finds that this conduct does not provide a right or legitimate interest in the disputed domain name under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592).

The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name “biotique”.

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.

C. 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 the 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) and (ii), by using the disputed domain name for the purpose of selling, or transferring the domain name registration to the complainant and to prevent the Complainant, the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds that the Complainant’s trademark BIOTIQUE was registered well before the Respondent registered the disputed domain name <biotiquekorea.com>. Given that the disputed domain name merely adds a geographical term to the Complainant’s Mark, it is not likely that the Respondent came up with the disputed domain name independently without the Complainant’s trademark in mind.

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark BIOTIQUE. It may also be that the Respondent likely sought to prevent the Complainant from reflecting the mark in a corresponding domain name or otherwise to disrupt the business of the Complainant. Moreover the Respondent’s passive holding of the disputed domain name does not prevent a bad faith finding under the circumstances..

The conduct described above falls within paragraph 4(b) of the Policy and 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).

8. 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 <biotiquekorea.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: April 17, 2017