WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SK Lubricants Co., Ltd. v. Amir Mohammad Amini (MOHAMMAD89375)

Case No. D2020-2993

1. The Parties

The Complainant is SK Lubricants Co., Ltd., Republic of Korea, represented by Yoon & Yang (IP) LLC, Republic of Korea.

The Respondent is Amir Mohammad Amini (MOHAMMAD89375), Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <skzic.support> is registered with Ascio Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2020. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 12, 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 November 13, 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 November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2020.

The Center appointed David Taylor as the sole panelist in this matter on January 5, 2021. 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.

On January 11, 2021, the Center received an informal email communication from the Respondent indicating that the disputed domain name will remain “closed”.

4. Factual Background

The Complainant, SK Lubricants Co., Ltd. is a subsidiary of the SK Group, a conglomerate based in the Republic of Korea, primarily involved in the chemical, petroleum, and energy industries. The Complainant distributes lube base oil, lubricant oil, and other products. For use in connection with its goods and services, the Complainant is the owner of a number of trademarks for ZIC, registered in jurisdictions throughout the world, including the following:

- Hong Kong, China Trademark Registration No. 199701213, ZIC, registered on December 5, 1995;

- Republic of Korea Trademark Registration No. 40-0345845, ZIC, registered on August 19, 1996;

- United States of America Trademark Registration No. 3,496,951, ZIC, registered on September 2, 2008;

- European Union Trade Mark No. 11145968, ZIC, registered on January 24, 2013; and

- International Trademark Registration No. 1173872, ZIC, registered on March 28, 2013.

The Complainant is also the owner of a trademark registration for SK ZIC in Paraguay (Registration No. 396285, registered on May 7, 2014). In addition, the Complainant is the registrant of the domain name <skzic.com>, from which it operates a public-facing commercial website.

The disputed domain name was registered on June 20, 2017. Historic screen captures submitted in evidence by the Complainant indicate that on September 1, 2018, the disputed domain name resolved to a website that displayed the Complainant’s trademark, together with images of its products, with descriptions of the Complainant and its products. The website content was subsequently removed. At the time of this decision, the disputed domain name resolves to a blank web page, that simply displays “SKZIC.Support” in the center of the page.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the ZIC and SK ZIC trademarks. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks, in that the disputed domain name comprises “SK”, the key part of the Complainant’s company name, together with its ZIC trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that it is not related to the Respondent in any way, nor has the Complainant granted any permission to the Respondent to use or register the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant notes that its ZIC trademark has been registered since 1995, some 22 years prior to the registration of the disputed domain name. The Complainant asserts that its ZIC trademark is a famous mark that has grown into a leading brand in the global lubricant oil industry. The Complainant observes that in September 2018, the disputed domain name resolved to a website that gave the appearance of being the Complainant’s official website, or a website operated by persons related to the Complainant. The Complainant asserts that the website was taken down after the Complainant contacted the Registrar regarding the website to which the disputed domain name previously resolved. The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith, with the intention to sell the disputed domain name to the Complainant or a third-party buyer, to obstruct the Complainant’s business, or to deliberately lure Internet users to the corresponding website for commercial gain by creating confusion with the Complainant’s trademark and the source of the goods or services in question.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent an email communication to the Center on January 11, 2021, stating that the disputed domain name will remain “closed”.

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of 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;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iiii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the ZIC and SK ZIC trademarks, the registration details of which are provided in the factual-background section above. The disputed domain name comprises the Complainant’s ZIC trademark in its entirety, together with the letters “SK” as a prefix under the generic Top-Level Domain (“gTLD”) “.support”. The disputed domain name also comprises the Complainant’s SK ZIC trademark in its entirety, omitting the space between the two elements making up the mark. The Panel finds that the addition of the letters “SK” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s ZIC trademark; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Similarly, the omission of the space from the SK ZIC trademark does not prevent a finding of confusing similarity with the Complainant’s SK ZIC trademark. The Panel finds the disputed domain name to be confusingly similar to trademarks in which the Complainant has rights.

The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

At the time of this decision, the disputed domain name resolves to a blank web page lacking any substantive content. The Panel considers that the Respondent’s use of the disputed domain name in September 2018, as described above, created a misleading impression that the website at the disputed domain name was operated by the Complainant, or was otherwise affiliated with or endorsed by the Complainant. There does not appear to be any relationship between the Parties, nor is there evidence of any authorization for the Respondent to make use of the Complainant’s trademarks, in a domain name or otherwise. The Panel finds that the Respondent has not made use of 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.

The Respondent is identified as “Amir Mohammad Amini, (MOHAMMAD89375)”, which bears no resemblance to the disputed domain name. The Respondent has not come forward with evidence to support a claim of being commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.

Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name in accordance with paragraph 4(c)(iii) of the Policy.

In light of the above, the Panel accepts the Complainant’s assertion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not come forward with any arguments or supporting evidence to rebut the Complainant’s arguments under this element of the Policy; see WIPO Overview 3.0, section 2.1.

The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has submitted evidence of its trademark rights, registered in jurisdictions throughout the world, which substantially predate the Respondent’s registration of the disputed domain name on June 20, 2017. The Respondent’s knowledge of the Complainant and its trademarks can be inferred from the content of the website to which the disputed domain name resolved in September 2018, which made prominent reference to the Complainant, the Complainant’s trademarks, and its products. The Respondent’s intent to target the Complainant is further evidenced by the nature of the disputed domain name itself, which differs from the Complainant’s official domain name <skzic.com> only in terms of the applicable gTLD (in this case “.support”). The Panel finds that the Respondent registered the disputed domain name, with knowledge of the Complainant’s trademark rights, having no affiliation with or authorization from the Complainant, in bad faith.

The disputed domain name resolves to a blank web page, lacking any substantive content, other than displaying “SKZIC.Support” in the center of the page. Prior UDRP panels have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding; see WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds that the Complainant has well-established rights in the ZIC trademark, having acquired registrations for the mark in many jurisdictions across the globe. The Respondent has not come forward to file a Response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name. As stated above, the Panel does not consider the Respondent’s prior use of the disputed domain name in September 2018 to be bona fide. Noting the degree of similarity between the disputed domain name, the Complainant’s company name, the Complainant’s trademarks, and the Complainant’s official domain name, there is no apparent good-faith use to which the disputed domain name could be put by the Respondent, that would not have the effect of misleading Internet users as to the source of the disputed domain name. The Panel finds that the disputed domain name is being used in bad faith.

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 <skzic.support> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: January 18, 2021