AVON Products, Inc. v. JUNGYUHKOOK
Claim Number: FA2203001989353
Complainant is AVON Products, Inc. (“Complainant”), represented by CitizenHawk, Inc., Texas, USA. Respondent is JUNGYUHKOOK (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avonshop.com>, registered with Megazone Corp., dba HOSTING.KR.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2022; the Forum received payment on March 22, 2022.
On March 23, 2022, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <avonshop.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 30, 2022, the Forum served the Complaint and all Annexes, including a Korean and English language Written Notice of the Complaint, setting a deadline of April 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@avonshop.com. Also on March 30, 2022, the Korean and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
In the present proceeding, the language of the Registration Agreement is Korean and, accordingly, the presumption is that the proceeding should be conducted in that language. However, pursuant to UDRP Rule 11(a) the Panel has a discretion to determine that a different language is a more appropriate language in which to conduct the proceeding. The Panel has this discretion under Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. In support of that submission, Complainant contends that Respondent’s website available at the disputed domain name uses English characters and words therein, which it does extensively, suggesting that Respondent is proficient in the English language. Indeed, the Panel’s opinion of the website shows that it has been prepared by and is directed mainly at English-speaking users rather than Korean-speaking users. In any event, Complainant has shown that in prior decisions, Respondent has been found to have familiarity with and knowledge of the English language.
Further, Complainant contends, and the Panel agrees, that even if the proceeding were conducted in Korean, Complainant is not conversant nor proficient in that language and it would require delay and unnecessary costs to translate the documents into English for Complainant to use them.
Having regard to the evidence and all the circumstances, the Panel finds that Respondent has proficiency in the English language and that the proceeding should be conducted in English. The proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant is a prominent lifestyle products company. Complainant has rights in the AVON mark through its registration with various trademark agencies (e.g. European Union Intellectual Property Office (“EUIPO”) Reg. 139,188, registered May 10, 1999; World Intellectual Property Office (“WIPO”) Reg. 892,960, registered Feb. 15, 2006). See Compl. Exs. E and F. Respondent’s <avonshop.com> domain name is identical or confusingly similar to Complainant’s AVON mark as it incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <avonshop.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AVON mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers parked, pay-per-click links on the disputed domain names’ resolving websites.
Respondent registered and uses the <avonshop.com> domain name in bad faith. Respondent offers the disputed domain name for sale online. Respondent exhibits a pattern of bad faith registration and use. Respondent attracts internet users for commercial gain to the disputed domain name’s resolving website, where it hosts parked, pay-per-click links. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the AVON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the provision of lifestyle products and related goods and services.
2. Complainant has established its rights in the AVON mark through its registration of the mark with various trademark agencies (e.g. European Union Intellectual Property Office (“EUIPO”) Reg. 139,188, registered May 10, 1999; World Intellectual Property Office (“WIPO”) Reg. 892,960, registered Feb. 15, 2006).
3. Respondent registered the disputed domain name on April 10, 2019.
4. Respondent has caused the disputed domain name to be used to offer parked, pay-per-click links on the disputed domain name’s resolving websites which shows that Respondent has no right or legitimate interests in the domain name and that it registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the AVON mark through its registration of the mark with various trademark agencies (e.g. EUIPO Reg. 139,188, registered May 10, 1999; WIPO Reg. 892,960, registered Feb. 15, 2006). See Compl. Exs. E and F. Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a disputed domain name under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AVON mark. Complainant argues that Respondent’s <avonshop.com> domain name is confusingly similar to Complainant’s AVON mark. Under Policy ¶ 4(a)(i), adding a generic word along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The disputed domain name incorporates the AVON mark and adds the word “shop”, along with the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s AVON mark and to use it in its domain name, adding the word “shop” to the mark, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the domain name on April 10, 2019;
(c) Respondent has caused the disputed domain name to be used to offer parked, pay-per-click links on the disputed domain name’s resolving websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <avonshop.com> domain names, nor has Complainant authorized Respondent to use its AVON mark. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertions that it never authorized or licensed Respondent to use its marks in a disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS of record, along with Respondent’s correspondence emails identify Respondent as “JUNGHUHKOOK”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Registrar Verification Emails. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <avonshop.com> domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked, competing, pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes Complainant’s screenshots of the disputed domain name’s resolving website, which features no content but parked pay-per-click links. See Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <avonshop.com> domain name in bad faith by offering it for sale online. Under Policy ¶ 4(a)(i), offering domain names for sale online may be demonstrative, together with other evidence, of bad faith where a Panel finds the domain names were registered with the intent to sell them. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides screenshots showing that the domain names are for sale online. See Compl. Ex. K. Therefore, as the Panel agrees and as this conclusion it is consistent with the evidence as a whole, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(i).
Secondly, Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Past adverse UDRP proceedings against a Respondent may demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Complainant provides a list of previous adverse cases in which Respondent was a party. See Compl. Ex. N. Therefore, as the Panel agrees, it finds Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent registered and uses the <avonshop.com> domain names for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click links is generally considered evidence of bad faith registration and use. See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). The Panel notes Complainant’s screenshots of the disputed domain name’s resolving websites, which feature no content but parked pay-per-click links. See Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Fourthly, Complainant argues that Respondent registered the <avonshop.com> domain name with bad faith actual knowledge of Complainant’s rights in the AVON mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established from incorporation of a well-known/registered mark into a domain name, as well as Respondent’s use of the domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel notes that Complainant’s registered AVON mark is incorporated into the disputed domain name, which features competing pay-per-click links. See Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avonshop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 26, 2022
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