DerekRose.com : #GoDaddy auction sale ends up in #domain loss via the #UDRP process

The auction high bidder of DerekRose.com, a domain registered in 1999, didn’t seem to have fully researched the “Derek Rose” keywords for trademark issues.

Last year, the domain was sold in a GoDaddy auction for the price of $597 dollars – a low price for an aged, .com domain name. This is indicative of how GoDaddy auctions attract domain investors and speculators mostly.

Derek Rose is a British luxury sleepwear and lounge wear brand, operating from Derek-Rose.com. While the domain was registered in 2001, the brand has a long history going back to 1926.

Why didn’t Derek Rose pursuit the domain DerekRose.com in the GoDaddy auction? Most likely, they were not aware of it, but domain investors perusing these investor-centric auctions bid on them purely with profit in mind.

The ensuing UDRP for DerekRose.com ended with the WIPO panel making a decision to transfer the domain to the Complainant.

Full details follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Derek Rose Limited v. Jinsoo Yoon
Case No. D2020-0330

1. The Parties

The Complainant is Derek Rose Limited, United Kingdom, represented by Fox Williams Solicitors, United Kingdom.

The Respondent is Jinsoo Yoon, United States of America (“United States” or “US”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 13, 2020, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Respondent sent email communications on February 21 and 26, 2020, requesting that Korean be the language of the proceeding. The Center notified the Parties of the commencement of panel appointment process on March 13, 2020.

The Center appointed John Swinson as the sole panelist in this matter on April 2, 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.

4. Factual Background

The Complainant is Derek Rose Limited, a company incorporated in England and Wales. The Complainant is a clothing company that sells nightwear, loungewear, leisurewear, resort wear and underwear through retailers, department stores and boutiques around the world and online. According to the Complainant, the Complainant is well known and has been operating as “Derek Rose” since at least 1981.

The Complainant is the owner of a number of trade mark registrations for logo including United States registered trade mark number 4473521, registered on January 28, 2014 (the “Trade Mark”). The Complainant also owns the domain name <derek-rose.com>, which incorporates the Trade Mark. This domain name was registered on November 21, 2001.

The Respondent is Jinsoo Yoon, an individual of the United States. No formal response was received from the Respondent, so little is known about the Respondent. According to the Respondent’s informal email communications, the Respondent lives in Korea and knows little English. The Disputed Domain Name resolves to a parking page that displays pay-per-click (“PPC”) links relating to the Complainant’s field of activity, such as links relating to pajamas. The website also advertises the Disputed Domain Name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant has both registered and unregistered rights for DEREK ROSE. The Rose family have been designing and manufacturing clothes since 1926 and the Complainant’s company name has included DEREK ROSE since 1981. The Complainant’s products are stocked in retailers, department stores and boutiques around the world. The Complainant has owned and used the domain name <derek-rose.com> since November 21, 2001. The Complainant also owns various registered trade marks, including in the UK, US, Canada and Mexico.

The Disputed Domain Name is identical or at least confusingly similar to the Trade Mark as (other than the “London” part) it incorporates the entirety of the Trade Mark. It is identical to the unregistered mark for DEREK ROSE and to the Complainant’s domain name (other than the hyphen). The Disputed Domain Name is an obvious or intentional change similar to typosquatting.

Rights or Legitimate Interests

The Respondent’s name is Jinsoo Yoon. This, and the Respondent’s email address, is markedly different to “Derek Rose”. There is no evidence on the website at the Disputed Domain Name that the Respondent is commonly known as “Derek Rose” or has used “Derek Rose” as a trading name. The Respondent does not appear to have any trade marks for DEREK ROSE.

The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name is for sale, and the minimum offer is USD 9,900. The rest of the website at the Disputed Domain Name is a parked page with PPC links to clothing including pyjamas, nightwear, cotton pajamas etc. which are identical or highly similar to the Complainant’s goods.

The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name is identical or highly similar to the Trade Mark. The Respondent has no connection or affiliation with the Complainant and has received no licence or consent to use the Trade Mark.

Registered and Used in Bad Faith

There are circumstances indicating the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant (or to a competitor of the Complainant), for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.

The Complainant’s representative contacted the Respondent (on behalf of the Complainant) and offered USD 5,000 to purchase the Disputed Domain Name. The Respondent then asked for USD 24,500. The website at the Disputed Domain Name contains a link to a page offering to sell the Disputed Domain Name and inviting offers above USD 9,900. The Wayback Machine shows the Disputed Domain Name was very recently used by a different person as a personal website (or alternatively recently the purpose changed to a use in bad faith).

The Respondent is also trying to make money from PPC links to goods or services identical or similar to the Complainant’s goods/services. Therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Trade Mark. The Respondent is also preventing the Complainant from obtaining the “.com” domain for the Trade Mark. The Respondent is also disrupting the Complainant’s business as the Complainant has no control over the goods or services offered at the PPC links, and this will cause the Complainant’s reputation and goodwill to suffer damage.

The Respondent has been involved in numerous WIPO decisions, and in at least 11 of those decisions, the Respondent registered domain names that were confusingly similar to the complainants’ domain names/trade marks and the domains resolved to parked websites offering the domain for sale and/or that had pay-per-click or third party links. This shows the Respondent’s pattern of abusive domain name registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

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

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

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

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.

A. Procedural Issues

Language of the proceeding

The Respondent sent email communications to the Center on February 21 and 26, 2020, requesting that Korean be the language of the proceeding.

Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement. In this case, the language of the registration agreement is English. However, the Panel has authority to determine that a proceeding should be in a language other than the language of the registration agreement (see section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel is conscious of its obligation to ensure both parties to this proceeding are treated with equality, and that each party is given a fair opportunity to present its case. However, the Panel considers that the circumstances of this case do not warrant a departure from the default position that the language of the proceeding is the language of the registration agreement. In coming to this decision, the Panel has taken the following into account:

– the Disputed Domain Name is made up of an English name and the English word “rose”;
– the content of the website at the Disputed Domain Name is in English;
– the Complainant has provided a copy of an email from the Respondent to the Complainant’s agent written in English;
– the Respondent’s informal email communications were written, at least in part, in English;
– the contact address for the Respondent in the WhoIs record is a New York address;
– there is a link on the website at the Disputed Domain Name that directs to a webpage that states that the Disputed Domain Name is for sale. This website is in English, and invites offers in USD, EUR and GBP.

The Panel is satisfied that the language of the proceeding should be English.

Informal response

The informal email communications sent by the Respondent do not address the elements of the Policy. Part of these communications are written in Korean. The Panel has not taken these into account in making its decision.

The Respondent’s failure to file a formal response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a response.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name incorporates the textual element of the Trade Mark (minus the “London” part), which is the dominant feature of the Trade Mark (being DEREK ROSE LONDON with some minor design elements). Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview 3.0). The Disputed Domain Name is confusingly similar to the Trade Mark.

It is not necessary for the Panel to determine if the Complainant also has unregistered rights in DEREK ROSE (as asserted by the Complainant), because the Complainant has registered rights as discussed above.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

– The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name contains PPC links offering goods or services similar to the goods or services provided by the Complainant (namely pajamas). A number of these links direct Internet users to the Complainant’s competitors. This is not a bona fide use of the Disputed Domain Name under the Policy (see section 2.9 of WIPO Overview 3.0).

– The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.

– There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name.

– The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. It is likely that the Respondent is profiting from the PPC advertising on the website at the Disputed Domain Name. The website at the Disputed Domain Name also contains a link to another webpage offering the Disputed Domain Name for sale in excess of USD 9,900.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

According to the Complaint, the Complainant has been operating as DEREK ROSE since at least 1981, and has owned and used the domain name <derek-rose.com> since 2001. The Complainant’s earliest registered Trade Mark (as provided to the Panel) was filed on September 24, 2012.

It was not immediately clear from the Complaint when the Respondent registered or acquired the Disputed Domain Name. According to the WhoIs record, the Disputed Domain Name was created on October 25, 1999 and updated on December 3, 2019. The “update date” in the WhoIs record does not necessarily indicate an ownership change. However, in this case, the Complainant has provided evidence that the Disputed Domain Name resolved to a different website as recently as August 2019. The website previously hosted at the Disputed Domain Name appeared to be the personal website of an individual based in New York named Derek Rose. The website also provided a link to Derek Rose’s blog and flickr account, as well as a picture of the owner. In addition, the Complainant has provided evidence of an email communication from the Respondent to the Complainant dated January 30, 2020 in which the Respondent states that he bought the domain name via an auction. In these circumstances and in the absence of an assertion to the contrary by the Respondent, the Panel infers that the Respondent acquired the Disputed Domain Name some time after August 2019 (see section 3.9 of WIPO Overview 3.0).

As far as the Panel is aware, the Respondent has not used, and does not intend to use, the Disputed Domain Name other than to display PPC links or to sell the Disputed Domain Name. The Disputed Domain Name is not descriptive of the services advertised via the PPC links – or descriptive of any other good or service. There is no other obvious reason for the Respondent to register this particular domain name other than for the purpose of attempting to trade off the Complainant’s goodwill in the Trade Mark. However, the Disputed Domain Name is identical to the dominant element of the Trade Mark (being DEREK ROSE). As such, the Panel infers that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website. This amounts to evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Panel also notes that the website at the Disputed Domain Name links to another website inviting offers to buy the Disputed Domain Name above USD 9,900, and that the Respondent attempted to sell the Disputed Domain Name to the Complainant for USD 24,500. The Panel therefore finds that the Respondent registered the Disputed Domain Name primarily to sell the domain name to the Complainant for valuable consideration in excess of the Respondent’s costs related to the Disputed Domain Name. This amounts to evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy (see section 3.1.1 of WIPO Overview 3.0). This finding is supported by evidence provided by the Complainant that the Respondent has engaged in a pattern of other abusive registrations.

In light of the above, and in the absence of a reply from the Respondent to the Complainant’s contentions and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 <derekrose.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 16, 2020

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