WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carver Korea Co., Ltd. v. cai jiang nan cai jiang nan, cai jiang nan

Case No. D2016-0978

1. The Parties

The Complainant is Carver Korea Co., Ltd. of Seoul, Republic of Korea, represented by Y.P. Lee, Mock & Partners, Republic of Korea.

The Respondent is cai jiang nan cai jiang nan, cai jiang nan of Changsha, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <ahcchinas.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2016, 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 19, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 20, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

On May 19, 2016, the Complainant indicated that it would like to request for a transfer of the disputed domain name to it.

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 both Chinese and English of the Complaint, and the proceeding commenced on May 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2016.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 22, 2016. 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 cosmetics company headquartered in Seoul, Republic of Korea, and was established in 1999. It has extended its business beyond the Republic of Korea to other Asian countries, including China, Japan, Thailand, and Taiwan Province of China to Australia, to Europe, including France and Spain, and to North America, including the United States of America ("United States") and Canada. The Complainant sells its products not only to aesthetic specialist institutions, such as skin care shops or dermatology clinics, but also directly to consumers. The Complainant has used A.H.C as its aesthetic cosmetic brand since 1999.

The representative director of the Complainant, Sang Rok Lee, obtained more than 70 trademark registrations for the A.H.C mark or marks having A.H.C as a prominent part for use with cosmetics and retail store services, with the earliest registration obtained at least as early as 2005. The rights were then transferred to the Complainant in the Republic of Korea. Among the registrations are Korean Trademark Registration Nos. 40-0640821 (A.H.C and design in International Class 3), 40-1002421 (A.H.C in International Class 3), and 41-0219632 (A.H.C and design in International Class 35). The Complainant's representative director also owns Trademark Registration No. 5417025 (A.H.C and design in International Class 3) in China where the Respondent is located.

The Complainant uses the A.H.C marks to identify its cosmetic products on its websites which include "www.hydration.co.kr" and "www.etics.co.kr". The Complainant also offers beauty services related to spa, skincare, and makeup under the A.H.C marks through the website "www.ahcplayzone.co.kr". The Complainant has entered into modeling contracts with popular Korean actresses, including among them Kang So-ra, to market its products.

The Complainant has extended its business into China, where the Respondent is located. In particular, it is in the process of obtaining a sanitary license required in China for selling certain A.H.C-branded products and is in the process of obtaining additional sanitary licenses required for others. The Complainant sells these products through Chinese online shopping malls such as Taobao (淘宝), Jumeiyoupin (棸美优品), and Weipinhui (唯品会). It opened a flagship store to sell the A.H.C-branded products in Tmall (天猫). The Complainant has marketed its products on popular Chinese social network services such as Weibo and Weixin. The Complainant has attended several exhibitions related to the Chinese market since as early as 2006. The Complainant has been recognized in the beauty field with more than twenty industry awards.

The Respondent registered the disputed domain name on January 10, 2016. At the time the Complaint was filed, the disputed domain name resolved to a website advertising and selling the Complainant's A.H.C-branded products. The Respondent's website included the A.H.C logo in the top left corner and included "AHC" in capital letters in the center of the main page. The Respondent's website also featured a picture of Kang So-ra, the same actress whom the Complainant has engaged as a model to market the Complainant's products.

5. Parties' Contentions

A. Complainant

The Complainant states that it is well known as a cosmetics manufacturer in the Republic of Korea and internationally. It has been researching, developing, manufacturing, and selling products for over 17 years. The Complainant holds rights in the A.H.C marks and uses the A.H.C marks as the main brand for its cosmetic products and its beauty services. The Complainant is the owner of multiple registrations for the mark A.H.C and marks containing the A.C.H mark as a prominent part in the Republic of Korea in Class 3 (for use with cosmetics or similar goods) or Class 35 (for use with retail store services featuring cosmetics and similar goods). The Complainant's representative director owns the trademark registration in China cited above. The Complainant is preparing to transfer the Chinese trademark registration to the Complainant and when the transfer process is complete the Complainant will be the final owner of the Chinese trademark registration for the A.H.C and design mark. Currently the Complainant's use of the A.H.C marks is based on its own trademark rights or with the consent of the representative director of the Complainant. The Complainant is the legitimate user of the A.H.C marks.

The main portion of the disputed domain name is similar to the main portion of the Complainant's trademarks. The prominent portion of the disputed domain name <ahcchinas.com> is "ahc". Both the Complainant's trademark and the disputed domain name have the same "ahc" alphabetical arrangement in their main parts, and they are similar to each other in terms of shape, pronunciation, and concept. Unlike the Complainant's mark, the disputed domain name does not include the punctuation mark "." between each letter in the disputed domain name. The absence of the punctuation marks can be regarded as excluded for convenience and is only a slight change that does not alter the impression of the disputed domain name. Although "china(s)", the English word (misspelled) for the country China, is added to the disputed domain name, it can be easily recognized as indicating the name of a country. The "china" part of the disputed domain name is a geographic term and lacks distinctiveness. This geographic term is highly likely to be perceived as indicating the region where the Complainant's products are manufactured, sold, or distributed. As a result, the prominent part of the disputed domain name is "ahc". The disputed domain name is therefore identical or highly similar to the Complainant's A.H.C mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has exclusive rights in the term A.H.C, which has no meaning other than as the Complainant's trademark. Therefore, in the absence of evidence to the contrary, it is not possible for any other entity, including the Respondent, to have rights or legitimate interests in the Complainant's mark. The Complainant has not licensed or permitted the Respondent to use its trademark A.H.C or to register any domain name incorporating the A.H.C trademark. There is no relationship or economic link between the Complainant and the Respondent. The Respondent has not at any time been commonly known by the disputed domain name and owns no trademarks that are identical or similar to the disputed domain name. Additionally, by registering the disputed domain name, the Respondent did not comply with the Respondent's contractual duty under the Registration Agreement to ensure that registration of the disputed domain name will not infringe upon or otherwise violate the rights of a third party.

The Respondent has registered and is using the disputed domain name in bad faith. The Complainant has widely used the A.H.C mark as a cosmetic brand for over 17 years. The mark has become popular in the Republic of Korea, which has allowed the Complainant to enter overseas markets such as China, the native country of the Respondent. It is hard to believe that the Respondent was not aware of the Complainant's A.H.C mark when it registered the disputed domain name, particularly given that the Respondent sells the Complainant's beauty products. Moreover, the Respondent uses the A.H.C mark as the name of its website. The Respondent uses a picture of the same prominent actress engaged by the Complainant, and the Respondent sells the Complainant's products. Given these facts, it is evident that the Respondent intended to confuse consumers and mislead them into mistakenly believing that the disputed domain name is associated with the Complainant for the Respondent's own economic gain.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 finds that the Complainant has met this burden.

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in the agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar's email correspondence of May 18, 2016 to the Center indicated that the language of the Registration Agreement as used by the Respondent is Chinese. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. If the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation because the Complainant is not able to communicate in Chinese. What is more, although the language of the Registration Agreement is Chinese and the Respondent is located in China, the Respondent's conduct suggests that the Respondent understands English. The disputed domain name is in English, as it includes the Latin characters "AHC" and word "China" the English word for the country China. For these reasons, the Panel determines that the language of the proceeding should be in English.

B. Identical or Confusingly Similar

The Complainant has rights in the A.H.C mark. The Complainant has established that it is the registered owner of more than 70 trademark registrations for the mark A.H.C or A.H.C-formative marks having A.H.C as the prominent part, registered well before the registration of the disputed domain name. The Panel accepts that the Complainant's A.H.C marks are internationally known.

The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks. The threshold question for confusing similarity under the UDRP involves the comparison between the trademark and the domain name itself to determine the likelihood of internet confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, and paragraph 1.2. The addition of the geographically descriptive term "China(s)" to the Complainant's trademark in the disputed domain name does not affect the assessment of whether the disputed domain name is similar to the Complainant's trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414; see also Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093. A country name included in a disputed domain name is not a prominent part because it is likely to be recognized as indicating an overseas website of the disputed domain name. See Inter IKEA Systems B.V. v. Muhannad Mayyas, WIPO Case No. D2016-0067 (<ikeajordan.com>); Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210 (<millenniumhotelindia.com>).

Additionally, the presence or absence of punctuation marks does not prevent Internet user confusion on its own. Although the disputed domain name differs from the Complainant's A.H.C mark because it lacks period punctuation marks between "a" and "h" and "h" and "c", punctuation is irrelevant in the confusing similarity analysis, especially when the disputed domain name includes the prominent feature of the trademark. See, e.g., Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, WIPO Case No. D2014-0714 (holding that the absence of the exclamation point at the end of "YAHOO" in the disputed domain names was irrelevant when comparing it to the trademark "YAHOO!" because the word "YAHOO" is the prominent feature of the trademark and had been completely incorporated into the disputed domain names). In this case, the letters "ahc" are the prominent feature of the Complainant's trademarks and have been incorporated entirely and in the same order into the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark.

C. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or

(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark 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 trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the A.H.C trademark or to register any domain name incorporating that trademark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Although at the time the Complaint was filed, the disputed domain name resolved to a website promoting and selling the Complainant's products, this is not a bona fide offering of goods and services as contemplated by paragraph 4(c)(i) of the Policy. The disputed domain name resolved to a website selling products under the A.H.C mark. The Complainant states that the use of its trademark is not authorized, but that the products Respondent sold are the Complainant's products. Under certain circumstances, a reseller of trademarked products may legitimately register a domain name incorporating the trademark. However, in this instance, the Panel finds that the Respondent's use of the disputed domain name was not legitimate.

The Panel finds that the Respondent's offering of goods was not bona fide. To be "bona fide", the resale offering ofgoods must meet the following requirements: (i) the Respondent must actually be offering the goods at issue; (ii) the Respondent must use the website to sell only the trademarked goods; (iii) the website must accurately disclose the Respondent's relationship with the trademark and may not, for example, falsely suggest that it is the trademark owner or that the website is an official website of the trademark owner; and (iv) the Respondent must not try to corner the market in all domains, thus depriving the trademark owner of reflecting its own mark in the domain names. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Though the Respondent is not an approved or authorized reseller of the Complainant's product, these criteria are nonetheless relevant because the Respondent operates a business genuinely revolving around the Complainant's goods. See BlackRock Institutional Trust Company N.A. v. Investors FastTrack, WIPO Case No. D2010-1038. Here, there is no evidence in the record indicating that the Respondent offered counterfeit goods or other third-party goods. The evidence indicates that the Respondent used the website only to sell the trademarked goods. Additionally, there is no evidence in the record to suggest that the Respondent has registered more than one domain name including the A.H.C trademark. However, the Panel finds that the website did not accurately disclose the Respondent's relationship with the trademark owner.

The Respondent's offering of goods was thus not bona fide because the website associated with the disputed domain name falsely suggested a relationship with the Complainant. The confusing similarity of the disputed domain name to the Complainant's trademark is highly likely to result in confusion of Internet users, particularly given that the Complainant's A.H.C marks are internationally known. The Respondent has no relationship with the Complainant. Not only did the Respondent fail to disclose that it is not associated with the Complainant, the Respondent affirmatively suggested such a relationship. The Respondent's website displayed the Complainant's A.H.C-formative logo as the website's name in the upper left corner of the page where a consumer may look to find the source of a website and the goods sold. The website also included the letters "AHC" prominently in the left-center of the main page. Finally, the Respondent's website featured a picture of the same model whom the Complainant has engaged in connection with marketing its products. Thanks to the Complainant's marketing campaigns featuring Kang So-ra, consumers have likely come to know her as a face of the Complainant and its products. It is readily apparent that the Respondent's website is meant to mislead consumers into believing it is a genuine website controlled by or associated with the Complainant. Such use of the disputed domain name is not consistent with fair use principles underlying the Oki Data criteria above. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, supra.

The Respondent's use of the disputed domain name to offer goods is not bona fide, and therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has 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 the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such web site or location or of a product or service on such web site or location.

The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent was undoubtedly aware of the Complainant and its trademark at the time of registration of the disputed domain name. The Complainant has extended its business to overseas markets such as China, where the Respondent is, as well as Thailand, Japan, and the United States due to its popularity in the Korean market, making it a globally growing brand. It is quite clear from the nature of the Respondent's business and use of the disputed domain name that the Respondent had the Complainant's trademark in mind when registering the disputed domain name. The Panel finds that the Respondent's registration of the disputed domain name incorporating the Complainant's mark, being fully aware of the Complainant's rights in the mark, without any right or legitimate interests in doing so is registration in bad faith.

As discussed above, the Respondent used the disputed domain name to direct Internet users to a website that sold the Complainant's products. The website incorporated the A.H.C trademark throughout, but it did not offer any statements indicating the Respondent's and/or the website's lack of affiliation with the Complainant. Indeed, by prominently placing the A.H.C-formative logo on the website where a consumer may look to find the source of the website, by using a picture of the same actress engaged by the Complainant to model its products, and by promoting the Complainant's products, the Respondent affirmatively created the false impression that the website is controlled by or affiliated with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's A.H.C marks as to the source, sponsorship, affiliation, or endorsement of such website. These activities amount to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

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 <ahcchinas.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: July 6, 2016