WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mysuelly v. Yang Kyung Won
Case No. D2013-1145
1. The Parties
The Complainant is Mysuelly of Paris, France, represented by Cabinet Bruno Lhermet, France.
The Respondent is Yang Kyung Won of Seoul, Republic of Korea, represented by Jun-Ha Lim, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <mysuelly.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2013. On June 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2013, 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 June 28, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 28, 2013, the Respondent requested that Korean be the language of the proceeding. On the same date, the Complainant requested English to be the language of the proceeding.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2013. The Response was filed with the Center on July 23, 2013.
The Center appointed Young Kim as the sole panelist in this matter on July 26, 2013. 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 paragraph 7 of the Rules.
Pursuant to paragraph 11(a) of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel (once appointed) to determine otherwise. As discussed below, the Panel has determined that the language of this administrative proceeding is English.
4. Factual Background
The Complainant is a French company called “Mysuelly” which was launched in 2009 and sells leather articles, specifically bags and shoes. The Complainant owns the French trademark registration no. 3845314 for MYSUELLY dated July 8, 2011 in classes 18, 25, and 35. The Complainant also owns the domain name <mysuelly.fr> registered since October 14, 2009.
According to the Respondent, who resides in Republic of Korea, he purchased the disputed domain name on April 17, 2012.
5. Parties’ Contentions
A. Complainant
The Complainant, Mysuelly, was launched in 2009 and since then, Mysuelly products have been the subject of extensive media coverage, especially through press articles and the Internet (Annex 8 to the Complaint).
The information concerning the traffic on the Complainant’s website “www.mysuelly.fr” shows that this website has been active since its creation in 2009 and has been widely and consistently visited by many visitors from many countries in the world (Annex 8 to the Complaint).
The Complainant’s turnover has consistently increased since 2009 as follows (Annex 8 to the Complaint):
In 2009: EUR 29,728
In 2010: EUR 205,039
In 2011: EUR 754,899
The above increased turnover shows that the reputation of Mysuelly products has increased rapidly.
The development of this reputation is not limited to France since the Complainant’s products bearing the trademark MYSUELLY are distributed across many countries. In particular, the reputation of the trademark MYSUELLY and its products has reached Republic of Korea where celebrities carry Mysuelly bags (Annex 9 to the Complaint) and consumers are aware of the Complainant’s website and products. Indeed, the information concerning the traffic on the website “www.mysuelly.fr” shows that Korean Internet users have been visiting the Complainant’s website since 2010 (Annex 8 to the Complaint).
The Complainant found out that the disputed domain name was registered in the name of the Respondent, who uses the disputed domain name for a parking website containing the trademark MYSUELLY and several hyperlinks dedicated to bags which redirect to competitors’ websites.
The Complainant contacted the Respondent in order to ask him to transfer the disputed domain name to the Complainant (Annex 4 to the Complaint). However, the Complainant only received provocative answers first from the Respondent and then from his legal counsel (Annex 4 to the Complaint).
The Complainant owns the French trademark registration no. 3845314 for MYSUELLY dated July 8, 2011 in classes 18, 25, and 35. The Complainant also owns the domain name <mysuelly.fr> registered on October 14, 2009. Thus, the Complainant has rights to the trademark MYSUELLY.
The disputed domain name is exclusively composed of the term “mysuelly”, which is identical to the trademark MYSUELLY of the Complainant. Thus, the disputed domain name <mysuelly.com> is confusingly similar to the trademark MYSUELLY, the trade name Mysuelly, and the domain name <mysuelly.fr>, and thus misleads Internet users and consumers into believing that the disputed domain name and the website under it have a connection with the Complainant, which is not the case.
The Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
(a) The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark MYSUELLY in connection with the disputed domain name.
(b) The Respondent has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods and services. On the contrary, the registration and use by the Respondent of the disputed domain name are manifestly in bad faith.
(c) The Respondent does not own any trademark for MYSUELLY and is not commonly known by the name “Mysuelly”.
(d) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Indeed, the website contains what appear to be sponsored links that likely provide the Respondent with click-through revenues from website visitors.
Further, the disputed domain name was registered and is being used in bad faith for the following reasons:
The term “mysuelly” is a neologism created by the Complainant, which has no meaning in any language and especially no meaning in French, English, or Korean. Further, the term “mysuelly” is completely arbitrary in the field of fashion and especially completely arbitrary to designate bags, shoes, and/or clothing. In view of the foregoing, the Respondent was aware of the Complainant, its products, and its trademark.
The Respondent’s parking website has links to the Complainant’s competitors (Annex 5 to the Complaint). This shows the Respondent’s attempt to obtain improper revenue from the fame and goodwill of the trademark MYSUELLY. The sponsored links on the parking website directly lead to the websites selling the Complainant competitors’ bags.
In view of the foregoing, the Respondent registered and is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark.
B. Respondent
Even if the disputed domain name is identical or confusingly similar to the Complainant’s trademark, it was not registered in bad faith. It was purchased for future use through Sedo, a domain name marketplace, on April 17, 2012 (Annex 1 to the Response).
The Respondent is actively operating a web agency and IT Internet business in Republic of Korea. Since the Respondent purchased the disputed domain name at a fair price for future use, he has continuously rejected several offers for the sale of the disputed domain name as shown in Annex 2 to the Response.
The Respondent has never heard of the trademark or service mark for MYSUELLY and thus, has never used it for improper purposes. The Respondent was unaware of the existence of the trademark for MYSUELLY or the Complainant. No one in the world, including Koreans, would know about the existence of “Mysuelly” name and consider that the trademark MYSUELLY has a considerable reputation across the world. Moreover, the Complainant has not filed an application for any related trademark in Republic of Korea.
In view of the foregoing, it is clear that the trademark MYSUELLY is not well-known and the present Complaint is only regarding a domain name hijacking to deprive it from the Respondent.
6. Discussion and Findings
A. Language of the Proceeding
The Complaint was filed in English. The Respondent argues that the language of the present administrative proceeding should be Korean since the language of the Registration Agreement for the disputed domain name is Korean. The Complainant argues that the language of the proceeding should be English since the Respondent is able to communicate in English. On the other hand, the Complainant is not able to communicate in Korean and, therefore, if the Complainant were required to submit all documents in Korean, the administrative proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for the translation.
According to paragraph 11(a) of the Rules, in the absence of any agreement between the parties, or unless otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement subject to the authority of the Panel to determine otherwise.
The Panel notes that the language of the proceeding for this case would be Korean as it is the language of the relevant Registration Agreement in the absence of any express agreement to the contrary by the parties. Under paragraph 11(a) of the Rules, however, the Panel has the authority to determine the language of the proceeding, having regard to the circumstances of the administrative proceeding. The Complainant has submitted a request that English be the language of the proceeding. The Panel notes that the Respondent is operating the website under the disputed domain name in English. Further, before this proceeding, the Respondent has communicated with the Complainant in English either directly or through his legal representative. In Annex 2 to the Response, the Respondent also communicated in English with a person who contacted the Respondent to purchase the disputed domain name. It is also noted that English is not the mother language of either party. Further, it will be a substantial burden for the Complainant if the Complainant is required to submit Korean translations of all documents and evidentiary materials.
The Panel has considered the particular circumstances of this case carefully as well as the discretion provided under paragraph 11(a) of the Rules. The Panel hereby determines that English shall be the language of the administrative proceeding in this case, but under the condition that the Respondent shall be permitted to submit any assertions, documents, or materials in Korean.
B. Requirements under Paragraph 4(a) of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark to which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of these three elements is discussed below.
C. Identical or Confusingly Similar
The Complainant launched its business under the company name Mysuelly in France in 2009 and has been selling leather articles, specifically bags and shoes. The Complainant owns the French trademark registration no. 3845314 for MYSUELLY dated July 8, 2011 in classes 18, 25, and 35. The Complainant also owns the domain name <mysuelly.fr> registered on October 14, 2009. Thus, the Complainant has established that it has rights to the trademark MYSUELLY.
In this regard, the Respondent argues that the Complainant has not filed an application for any related trademark in Republic of Korea. However, in accordance with UDRP jurisprudence, the fact that the Complainant did not file a trademark application for MYSUELLY in the Respondent’s country does not negate that the Complainant has rights to the trademark MYSUELLY.
The Panel finds that the disputed domain name <mysuelly.com> is identical to the trademark MYSUELLY, except for generic Top-Level Domain (gTLD) “.com” which may be disregarded.
Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark MYSUELLY.
D. Rights or Legitimate Interests
The Complainant asserts that (i) it has not licensed or otherwise consented to the Respondent’s use of the trademark MYSUELLY in connection with the disputed domain name; (ii) the Respondent has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods and services; (iii) the Respondent does not own any trademark for MYSUELLY and is not commonly known by the name “Mysuelly”; and (iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent argues that the disputed domain name was purchased for future use through Sedo, a domain name marketplace, on April 17, 2012 (Annex 1 to the Response). The Respondent also argues that he is actively operating a web agency and IT Internet business in Republic of Korea. He further states that since he purchased the disputed domain name at a fair price for future use, he has continuously rejected several offers for the sale of the disputed domain name as shown in Annex 2 to the Response.
While the Respondent asserts that he purchased the disputed domain name on April 17, 2012 (Annex 1 to the Response), the Registrar confirmed that the “Current registered date is Jul-22-2011.” In any event, the Panel notes that both dates postdate the registration of the Complainant’s trademark MYSUELLY. More importantly, the Panel notes that the term “mysuelly” is a coined word created by the Complainant and has no meaning in any language, especially no meaning in French, English, and Korean. The term “mysuelly” is completely arbitrary to designate products including bags, shoes, and/or clothing. On the other hand, although the Respondent alleges that he purchased the disputed domain name for future use, he has not provided any plausible explanation why he chose the disputed domain name. Further he only uses the disputed domain name for a parking website, where sponsored links redirect to websites of the Complainant’s competitors. In this circumstance, a mere assertion that the Respondent purchased the disputed domain name for future use does not support that he has rights or legitimate interests in the word “mysuelly” or the disputed domain name.
In view of the above, the Panel concludes that the Respondent has failed to successfully invoke any circumstances that could have demonstrated his rights or legitimate interests in respect of the disputed domain name under paragraph 4(c) of the Policy. Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(c) of the Policy.
E. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name was registered and is being used in bad faith for the following reasons: (i) the term “mysuelly” is a neologism created by the Complainant and has no meaning in any language and especially in French, English, and Korean; (ii) the term “mysuelly” is completely arbitrary in the field of fashion and especially completely arbitrary to designate bags, shoes, and/or clothing; (iii) the Respondent was aware of the Complainant, its products, and its trademark; and (iv) the Respondent’s parking website has links to the Complainant’s competitors, which diverts consumers from the Complainant’s website and products.
The Respondent asserts that he has never heard of the trademark MYSUELLY or the company called Mysuelly and that he purchased the disputed domain name for future use through Sedo, a domain name marketplace, on April 17, 2012.
Although the Respondent asserts that he purchased the disputed domain name through Sedo without the knowledge of the Complainant’s trademark, the Panel notes that the term “mysuelly” is a coined word and has no meaning in French, English or Korean and the Respondent has not provided any plausible explanation why the disputed domain name was chosen. Further, according to evidence submitted by the Complainant (Annex 9 to the Complaint), it is demonstrated that the trademark MYSUELLY and its products have reached Republic of Korea where celebrities have carried Mysuelly bags before the Respondent purchased the disputed domain name. Further, according to the information concerning the traffic on the website “www.mysuelly.fr” (Annex 8 to the Complaint), Korean Internet users have visited the Complainant’s website since 2010.
The Respondent also argues that he is actively operating a web agency and IT Internet business in Republic of Korea and that since he purchased the disputed domain name for future use, he has continuously rejected several offers for the sale of the disputed domain name. However, the evidence submitted by the Respondent (Annex 2 to the Response) only shows that the Respondent received and rejected an offer on July 4, 2013, after the Respondent received a notice on this case.
It is also noted that the Respondent’s parking website has links to the Complainant’s competitors (Annex 5 to the Complaint); thus, the sponsored links on the website under the disputed domain name lead directly to websites selling competitors’ bags.
In view of the foregoing, the Panel concludes that the Complainant has established that the disputed domain name was registered and is being used in bad faith.
Lastly, with regard to the Respondent’s allegation that the Complainant engaged in reverse domain name hijacking (“RDNH”), the Panel concludes that the Complaint was not brought in bad faith and thus does not constitute RDNH.
7. Decision
For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mysuelly.com> be transferred to the Complainant.
Young Kim
Sole Panelist
Date: August 20, 2013
