PARTIES' CONTENTIONS:
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
COMPLAINANT:
Language of proceedings
To the best of the Complainant’s knowledge, the language of the Registration Agreement is Korean. However, the Panel has authority to determine the language of proceedings. In many cases, UDRP Panels have adopted English as the language of proceedings, even if the Registration agreement of the registrar was exclusively in another language. In the absence of an agreement, the language of the registration agreement shall normally dictate the language of the proceedings. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case. This has been confirmed in WIPO Case no. D2014-1889, where the Panel also stated: “One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.” English was also accepted as the language of proceedings at the Czech Arbitration Court (CAC), for example Case No. 101940 (<jimdo.top>), or Case No. 102076 (<perspire.xyz>).
The Complainant has undertaken a reverse WHOIS search for domain names owned by the Respondent and found a very large number of domain names containing English words. This must be seen as an indication that the Respondent is in position to understand the English language. The Complainant contends that the Respondent is able to undergo UDRP proceedings in English. Therefore, it would not be unfair to the Respondent to conduct these proceedings in English. The same was already decided in UDRP cases. For example, in WIPO Case No. D2015-1466, the Panel decided that “the Respondent's other domain name registrations contain generic English terms such as "outlet" and "replica". These circumstances lead the Panel to the belief that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.” On the contrary, the Complainant is not able to communicate in Korean. Being an Italian entity, the Complainant is not in position to conduct these proceedings in Korean without a great deal of additional expense and delay due to the need for translation of the Complaint. English is not the native language of the Complainant or its representative, therefore it would not give him unfair advantage over the Respondent. Paragraph 10 (c) of the UDRP Rules provides that the Panel shall ensure that the administrative proceeding takes place with due expedition. Conducting the proceedings in Korean would contravene this provision for the reasons stated above. Therefore, the Complainant kindly requests that the Panel agree to conduct these proceedings in English.
Rights
The Complainant submits that the disputed domain name is identical or similar, to the point of confusion, to the earlier trade marks of the Complainant. Indeed, the GEOX word mark is fully incorporated within the disputed domain name and followed by the generic English term “shop”. The word mark, GEOX, appears at the start of the domain name and the average and ordinarily cautious user will likely believe that the disputed domain name resolves or connects to an online store of Geox products. Panels widely accept that the addition of a generic term in general, and of the term “shop” in particular, to a brand, does not diminish the identity or similarity between a domain name and a trademark. See for example WIPO Case D2008-1191 where the Panel stated: “the additional word “shop” does not negate the confusing similarity between the domain name and the Complainant's trademarks. On the contrary, it does suggest that it is related to the Complainant's website.. which is likely to cause consumers' confusion.” Equally, the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is disregarded under the first element’s similarity test, as indicated by the WIPO Jurisprudential Overview 3.0. Therefore, the Complainant says the disputed domain name is identical or confusingly similar to the name and marks of the Complainant. The first element of the Policy is therefore deemed satisfied.
Legitimate interests
The Respondent in this administrative proceeding was confirmed as such by the relevant Registrar. The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name and has acquired no trade mark or service mark rights in the word or term “GEOX.” Firstly, the Respondent is not commonly known by the disputed domain name. The Complainant has conducted trade mark searches and found no registered GEOX trade mark or right owned by the Respondent. Moreover, having made no use of the disputed domain name over the years, the Respondent cannot be seen as commonly known by the disputed domain name. Indeed, the disputed domain name redirects to www.myboots.com, which displays a parking page with pay-per-click commercial links. Secondly, the Respondent reproduces the Complainant’s word mark without any license or authorization from the Complainant, which is strong evidence of the lack of legitimate interest. The Complainant asserts that the Respondent is neither a contractor, authorized distributor, employee, licensee, dealer or other kind of business partner of the Complainant. The Complainant has no contractual or business relations with the Respondent. Thirdly, the Respondent’s has not used the disputed domain name nor made any preparation to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, as stated above, the disputed domain name has been redirected to a parking page of pay-per-click commercial links. Their ability to generate revenue depends in turn on the ability of the disputed domain name to attract users seeking information on the owner of the trade mark. As the disputed domain name comprises only the Complainant’s trade mark, it is very likely to attract Internet users. Fourthly, since the adoption and extensive use by the Complainant of the trade mark predates the registration in the name of the Respondent of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests (if any) the Respondent may have in the disputed domain name. None of the circumstances by which a respondent can prove his rights or legitimate interests, are present in this case. In light of all the elements mentioned above, the Respondent should be considered to have no rights or legitimate interests in respect of the disputed domain name. Given that the Complainant has made a prima facie case that the Respondent lacks legitimate rights or interests in the disputed domain name, the burden of proof shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. The second condition under the Policy should be deemed satisfied.
Bad faith
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the domain was registered on 30 May 2000. However, the domain changed hands in 2007 according to the DomainTools Whois History tool. For the purpose of the proceedings, the Complainant will therefore consider that the domain was registered in 2007. Firstly, the GEOX trade marks have enjoyed wide-spread extensive use and are so widely well-known that it is inconceivable that the Respondent could have been ignorant of the Complainants’ earlier rights at that date. The Respondent must have had the Complainant’s trade marks in mind when registering the disputed domain name in his name in 2007. This cannot have been accidental and must have been influenced by the fame of the trade marks. Indeed, a simple search on an online search engine yields results only related to the Complainant. Consequently, it is asserted that the Respondent obviously knew of the earlier rights of the Complainant. The registration of a domain name reproducing the identical trade mark of the Complainant, clearly shows the Respondent had full knowledge of the earlier trade mark and registered the disputed domain name in that full knowledge and in contravention of the Complainant’s rights. Moreover, the Complainant contends that this finding also applies should the registration date be set to 2000 for the purpose of the proceedings. Secondly, the term “geox” is an arbitrary term with no meaning whatsoever. See https://en.wikipedia.org/ Therefore the Complainant submits the Respondent registered the domain name with the GEOX trade mark in mind. Thirdly, the Complainant sees no possible way whatsoever that the Respondent would use the domain name in connection with a bona fide offer of products or services. Indeed, any use of the GEOX trade mark would amount to trade mark infringement and damage to the repute of the trademark. The retention of the disputed domain name by the Respondent, is an attempt to prevent the Complainant from reflecting its trademark in the disputed domain name, and is strong evidence of bad faith. Furthermore, any actual use of the disputed domain name by the Respondent would de facto amount to bad faith use. Fourthly, the Complainant submits that there is a pattern of registration of domain names containing third party trade marks by the Respondent and that it’s email address is associated with the registrations of the domains amexsecurity.com, buyprovillus.com or cleanexcel.com which all reproduce trade marks of third parties. This shows that the Respondent acts in bad faith when registering and using the disputed domain names. Fifthly, the disputed domain name is listed for sale on Sedo, the world’s largest domain names marketplace. It is shown that more than 100 bids were placed on this domain name, none of which was accepted by the current owner. The Respondent is clearly attempting to make a large amount of money from the domain with the Complainant’s trade mark. This cannot be good faith. Sixthly, the Complainant’s research shows several domain disputes involving the Respondent and ordering that the domains be transferred to the corresponding complainants:
- WIPO Case D2017-0769 against domain name solarsense.com
- WIPO Case D2013-1263 against domain name cicstart.com
- WIPO Case D2013-0066 against domain name primagas.com
- WIPO Case D2011-0155 against domain name xpole.com
- WIPO Case D2008-1407 against domain name capitoltokyu.com
- WIPO Case D2007-1582 against domain name nutergia.com
The above clearly show that the Respondent is engaged in a pattern of behaviour and is trying to take advantage of trade mark owners.
Finally, the panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of cumulative circumstances may be found to be indicative of bad faith including a complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether a domain name is used in bad faith given the circumstances surrounding registration, and vice versa. The issue is not limited to positive acts in bad faith but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive course of action in bad faith and acting in bad faith may be a fine distinction, but inaction is also within the concept. For the foregoing reasons, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The final limb of the Policy is fulfilled.
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