WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Innisfree Corporation v. Domain Administrator, See PrivacyGuardian.org / Phan Ky

Case No. D2020-2161

1. The Parties

The Complainant is Innisfree Corporation, Republic of Korea (“Korea”), represented by T&G Law Firm LLC, Viet Nam.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Phan Ky, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <myphaminnisfree.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 31, 2020.

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 September 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2020. On September 1, 2020, the Respondent requested an extension to file a Response. The Center granted the extension of the time until September 30, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on October 1, 2020, that the Center would proceed to panel appointment. The Center received an informal email communication from the Respondent on October 1, 2020.

The Center appointed Nicholas Weston as the sole panelist in this matter on October 14, 2020. 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.

By paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is English, the language of the registration agreement in this proceeding, subject to the authority of the Panel to determine otherwise. The Panel has considered the correspondence received by the Center from the Respondent and finds that the Respondent appears to reasonably understand the nature of the proceedings. The Panel considers it appropriate to proceed in English.

4. Factual Background

The Complainant is a corporation organized under the laws of Korea that operates a cosmetics business in Asia with revenue exceeding KRW 140,5 billion (USD 123,1 million) in 2011. The Complainant holds registrations for the trademark INNISFREE in several countries, including Viet Nam, where the Respondent is located, which it uses to designate cosmetics and retail store services featuring cosmetics. Viet Nam Trademark Registration No. 35428, for example, was registered on November 13, 2000.

The Complainant owns several domain names that comprise of, or contain, the trademark INNISFREE, including the domain name <innesfree.com>.

The Respondent registered the Disputed Domain Name on March 21, 2019. The Disputed Domain Name resolved to a web page containing advertisements for various brands of cosmetics including that of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations of the trademark INNISFREE in Korea and Viet Nam as prima facie evidence of ownership.

The Complainant submits that the mark INNISFREE, is well known and that its rights in that mark predate the registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the INNISFREE trademark and that the confusing similarity is not removed by the addition of the Vietnamese word “mypham”, which means “cosmetic” in English.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “the Respondent is not a licensee of or otherwise affiliated with Innisfree Corporation. The Complainant has never authorized, otherwise condoned or consented to the Respondent's registration of the Disputed Domain Name”. The Complainant also contends that use, which intentionally trades on the fame its trademarks to divert traffic to the Respondent’s website does not meet the criteria of a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.

B. Respondent

The Respondent did not file a formal Response to the Complainant’s contentions. On September 1, 2020 the Respondent sent an email communication to the Center in English of a paragraph in length, requesting this proceeding be delayed “till (sic) the end of this month”. On October 1, 2020, the Respondent again sent an email to the Center, which was out of time and did not amount to a formal Response, in any event.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark INNISFREE in numerous countries including the Respondent’s apparent location, Viet Nam. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the INNISFREE trademark, the Panel observes that the Disputed Domain Name comprises: (a) the word “mypham” (b); followed by an exact reproduction of the Complainant’s trademark INNISFREE; (c) followed by the general Top-Level Domain (“gTLD”) “.com”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “myphaminnisfree”.

This Panel accepts the evidence that the Vietnamese term “mỹ phẩm” means “cosmetic” in English. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “mypham” which is descriptive of the trade sector in which the Complainant operates: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

This Panel accepts the Complainant’s contention that the addition of the Vietnamese term “mypham” does not prevent a finding of confusing similarity. See: The Procter & Gamble Company v. Tuan Nguyen Xuan, NHTM / Tuan Nguyen, WIPO Case No. D2016-0081 (“The additional element in the fourth domain name <myphamskii.com> is the term “mypham” meaning “cosmetics” in Vietnamese. This is a generic description of the goods sold under the Complainant’s SK-II mark and would not differentiate this domain name from this mark in the eyes of Vietnamese Internet users”); see also, L’Oréal v. Toan Nguyen, WIPO Case No. D2016-1740.

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of Respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

The Complainant has supplied evidence that the Respondent’s website offers for sale cosmetics of several different brands, including that of the Complainant. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page dominated by images of the Complainant’s trademark, as well as third party trademarks, and goods that seek to illegitimately pass off the owner’s goodwill and reputation for the Respondent’s benefit. The Complainant has not licensed, permitted, or authorized the Respondent to use the Complainant’s trademark and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy.

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-090. The Respondent specifically fails two of the tests set out in that case, as it does not use the website to sell only the trademarked goods or services, and the website does not accurately and prominently disclose the Respondent’s relationship with the trademark owner. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.

This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, and displaying a commercial banner advertisement, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, this Panel finds that the composition of the Disputed Domain Name makes it highly probable that the Respondent knew of the Complainant’s trademark INNISFREE, and had it in mind at the time of registration. This Panel accepts the Complainant’s uncontested evidence that the Respondent’s website clearly demonstrates actual knowledge of the Complainant and its trademark, as it makes multiple references to the Complainant. Given the Complainant’s products are offered for sale on the Respondent’s website, this Panel infers that the Respondent was well aware of the Complainant’s trademark at the time of registration of the Disputed Domain Name.

The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Name twenty years after the Complainant first established trademark rights in the INNISFREE mark.

On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent. The Panel finds that the evidence does support a finding that the Respondent has registered the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, by: (i) seeking to cause confusion for the Respondent’s commercial benefit, including the display of the Complainant’s trademark alongside competing brands; (ii) the lack of the Respondent’s own rights to, or legitimate interests in, the Disputed Domain Name; (iii) the lack of any form of disclaimer; and (iv) the failure of the Respondent to file a Response (see WIPO Overview 3.0, section 2.5.3).

The Panel has also considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. The Respondent is the same respondent as that in Innisfree Corporation v. Domain Administrator, See PrivacyGuardian.org / Phan Ky, WIPO Case No. D2019-3158 which also involved the Complainant. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same registrant (see Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).

In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark INNISFREE and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a web page for commercial gain, and has used a privacy service in an attempt to cover his tracks.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <myphaminnisfree.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: October 19, 2020