WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SnoopyBy Co Ltd. v. Zou Xiaobao
Case No. DCC2016-0004
1. The Parties
The Complainant is SnoopyBy Co Ltd. of Seoul, Republic of Korea, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Zou Xiaobao of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <gentlemonster.cc> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 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. In response to an invitation by the Center to amend a deficiency in the Complaint, the Complainant filed an amended Complaint on February 18, 2016.
On February 16, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 18 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 March 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on April 6, 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 designs, manufactures and commercializes glasses under the trade mark GENTLE MONSTER. The Complainant has a Korean and an International trade mark registration for GENTLE MONSTER. These registrations date from July 10, 2013 and June 7, 2012, respectively.
The Complainant actively promotes its GENTLE MONSTER trade mark through its website linked to the domain name <gentlemonster.com>. Its products are popular with trendsetting celebrities.
The disputed domain name was registered on October 25, 2015. The Respondent uses the disputed domain name to sell allegedly counterfeit goods under the Complainant's GENTLE MONSTER trade mark.
5. Parties' Contentions
A. Complainant
1. The disputed domain name is identical or confusingly to the Complainant's GENTLE MONSTER trade mark which it has continuously used since 2012. It is well established that the addition of Top Level Domains can be disregarded when comparing the similarities between a domain name and a trade mark. The Complainant's trade mark is incorporated in its entirety in the disputed domain name.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. This is supported by the fact that: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Respondent has not acquired trade mark or service mark rights; (iii) the Respondent has not been authorized by the Complainant to use its well-known mark; (iv) no actual or contemplated bona fide or legitimate use of the disputed domain name can be claimed since the Respondent is not licensed or permitted by the Complainant to use its mark; and (v) the disputed domain name is used to host a website copying the GENTLE MONSTER trade mark and running an online store selling counterfeit goods based on the Complainant's products.
3. The disputed domain name was registered and is being used in bad faith. At the time of registration of the disputed domain name, the Respondent must have known of the Complainant and its trade marks. The Respondent has used the overall "look and feel" of the Complainant's website and mentions the address of the Complainant's registered offices. The Respondent has simply copied the Complainant's trade mark and products on its website. A simple trade mark search would have revealed the Complainant's trade mark registrations, as would have a simple search on the Internet. Further, the Respondent's website is used to sell counterfeit goods based on the Complainant's products; the website menu and product pages are almost identical to the Complainant's website. The confusion is added by the fact that the Respondent's website mentions the address of the Complainant's registered offices. The Respondent is therefore using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship or endorsement of the website. The Respondent's registration of the disputed domain name also prevents the Complainant from reflecting its trade mark in the corresponding domain name, and this affects the Complainant's business.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement is Chinese whereas the Complaint was filed in English. The Complainant requested that English be the language of the proceeding for the reason that the Respondent has a sufficient understanding of the English language to be able to register and operate the disputed domain name. The disputed domain name is composed exclusively of English words, the combination of which is distinctive and refers to the Complainant's trade mark. The website at the disputed domain name contains words and phrases in English. The Complainant would be disadvantaged if required to translate the Complaint and supporting evidence.
Paragraph 11(a) of the Rules stipulates that:
"Unless otherwise agreed by the Parties, or 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 Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Respondent did not respond on the issue of the language of the proceeding.
Pursuant to paragraph 11 of the Rules, the Panel finds it appropriate to hold that English shall be the language of the administrative proceeding. The Respondent's choice of this term reflects a familiarity and comfort with the English language and an intention to target English-speaking customers and/or those familiar with the Complainant's GENTLE MONSTER products.
The Panel takes the view that if the Complainant were required to have the Complaint and all the documents translated into Chinese, it would unduly delay the proceeding, which is contrary to paragraph 10(c) of the Rules which prescribes that "the Panel shall ensure that the administrative proceeding takes place with due expedition".
The Respondent did not respond on the issue of the language of the proceeding although given the opportunity to. Since all relevant communications sent by the Center to the parties were sent in both the Chinese and English languages, the Panel finds that the Respondent has been given a fair opportunity to voice its objections on the matter and to understand the nature of the administrative proceeding and the relevant deadlines.
The Panel therefore determines that English should be the language of the proceeding and believes the Respondent would not be prejudiced thereby.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. The Complainant has shown it has rights in the trade mark GENTLE MONSTER. This trade mark has been incorporated in its entirety in the disputed domain name. It is a well-established principle that the generic Top-Level Domain is generally to be disregarded when considering the issue of whether a disputed domain name is identical or similar to a complainant's trade mark. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The disputed domain name is therefore identical to the Complainant's said trade mark.
C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states the consensus view of UDRP panelists as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP
The Panel finds that there is indeed a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; nor that the Respondent has been commonly known by the disputed domain name. On the contrary, what appears to be the case is that the Respondent is far from 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 trade mark at issue. There appears to be bad faith use of the Complainant's trade mark in the disputed domain name in view of the manner in which the Respondent's website appears. The Complainant's products and trade marks have been reproduced on the Respondent's website and made to look as if the Respondent's website is the genuine website of, or is authorized by the Complainant. The Complainant has also expressed its view that the goods offered for sale on the Respondent's website are counterfeit, although no direct evidence has been submitted in this proceeding. Notwithstanding, the Panel is satisfied that a prima facie case has been established by the Complainant. As this case has not been rebutted by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
For the reasons mentioned above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. The circumstances of this case are consistent with what is described in paragraph 4(b)(iv) of the Policy:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
It is obvious that the Respondent is familiar with the Complainant, its GENTLE MONSTER trade mark and its product line and is a cybersquatter seeking to profit from the goodwill and reputation associated with the Complainant's trade mark within the meaning of paragraph 4(b)(iv) of the Policy. Paragraph 4(a)(iii) of the Policy has been satisfied.
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, <gentlemonster.cc>, be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: April 11, 2016
