DECISION

 

Helen of Troy Limited v. Kim Ju Man

Claim Number: FA2112001977582

 

PARTIES

Complainant is Helen of Troy Limited (ďComplainantĒ), represented by Christina Loza of Loza & Loza, LLP, California, USA.† Respondent is Kim Ju Man (ďRespondentĒ), Korea.

 

REGISTRAR AND Dispute Domain Name

The domain name at issue is <oxokorea.com>, registered with Gabia, Inc. (the ďDisputed Domain NameĒ).

 

PANEL

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.

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 17, 2021; the Forum received payment on December 17, 2021. The Complaint was received in both Korean and English

 

On December 28, 2021, Gabia, Inc. confirmed by e-mail to the Forum that the <oxokorea.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).

 

On December 29, 2021, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of January 18, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to postmaster@oxokorea.com.† Also on December 29, 2021, the Korean 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 Respondentís registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on January 17, 2022.

 

Complainant filed an Additional Submission on or about January 21, 2022, and the Panel has considered this Additional Submission.

 

On January 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Respondent requests the Panel deny Complainantís request for relief.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant is a manufacturer and seller of various consumer goods generally consisting of or related to handheld kitchen devices and appliances. These goods are marketed on a worldwide basis under Complainantís famous OXO trademark.

 

Complainant is the owner of several US trademark registration for the OXO trademark, including US registration number 1,917,087, which was issued on September 5, 1995, and Korean registration number 962635, which was issued on January 7, 2010 [Individually and collectively, the ďComplainantís MarkĒ].

 

The Disputed Domain Name is virtually identical to the Complainantís Mark because it includes the whole thereof, OXO, with the addition of the geographic term ďKoreaĒ and the TLD ď.com,Ē neither of which adds distinctiveness.

 

Respondent does not have rights or legitimate interests in the Disputed Domain Name.

 

By way of background, an entity affiliated with Complainantís had a Distribution Services Agreement with Cosmo Corporation Co. (ďCosmoĒ)[ and the ďCosmo AgreementĒ]. Respondent, Kim Ju Man, was Cosmoís online vendor during the term of the Cosmo Agreement. Accordingly, Cosmo and the Respondent, as Cosmoís vender, used the domain names with permission before the Cosmo Agreement terminated on March 31, 2018.

 

However, Respondent, was never independently licensed or authorized to use the OXO trademark or the Disputed Domain Name. Any permission Respondent may have had in these regards terminated when the Cosmo Agreement terminated.

 

Upon termination of the Cosmo Agreement, and pursuant to the express terms thereof, all rights granted to Cosmo thereunder reverted to Complainant and any web domains incorporation Complainantís intellectual property were to be transferred to Complainant.

 

The Respondent is not commonly known by the Disputed Domain Name. The Respondent is Kim Ju Man, which bears no resemblance to OXO.

 

Respondent has no rights or legitimate interests in the Disputed Domain Name because his permission to use the Complainantís Mark during the term of the Cosmo Agreement ended when that agreement terminated in 2018.

 

Further, Respondent is not making a bona fide offering of goods and services because Respondentís actions constitute bad faith under Policy ∂4, which is incompatible with a finding of a bona fide offering. More specifically, Respondent is using Complainantís Mark without its consent to attract Internet users to Respondentís website, he is passing-off his products as those of Complainant, he has appropriated the look and feel of Complainantís website, he has appropriated some of Complainantís other trademarks, and he has appropriated photographs and text that appear on Complainantís website. Respondent is also doing these identical things on his website under another domain name, <oxokorean.com.kr>.

 

Finally, Respondent has engaged in bad faith conduct by demanding an amount for the sale of the Disputed Domain Name in excess his out-of-pocket costs. After the termination of the Cosmo Agreement, Complainant contacted Cosmo about the return of the Disputed Domain Name to Complainant. Cosmo contacted Respondent, who responded that he would sell the Disputed Domain Name for 20 million won (approximately $18,000).

 

B.   Respondent

Cosmo and Respondent had an agreement whereby Respondent was to promote and distribute the Complainantís branded OXO goods in Korea. In furtherance of this agreement, Respondent invested a significant amount of time, money, and manpower to promote the Complainantís brand name and entire line of OXO products online since late 2016.

 

In furtherance of this agreement, Respondent purchased and maintained in Korea a stock of OXO products.

 

In furtherance of this agreement, Respondent maintained an open relationship with Cosmo, reporting directly to Cosmo.

 

In furtherance of this agreement, Respondent made extensive and diligent efforts to advertise and promote Complainantís product in Korea, including hiring advertising designers and sales staff at Respondentís own expense.

 

In furtherance of this agreement, Respondent promoted Complainantís products to many sales companies operating in Korea, including Amazon.com and Alibaba.

 

The success and market recognition of Complainantís Mark and its products in Korea are, in part, the result of Respondentís efforts.

 

Respondent has rights and legitimate interests in the Disputed Domain Name as a result of these efforts.

 

With respect to the Cosmo Agreement, Respondent was not a party to this agreement. He never saw it. He did not know its content. And he was not made aware of its termination until this current dispute arose. For these reasons, the provisions of the Cosmo Agreement with respect to any reversion of rights and a required transfer of any domain name to Complainant do not apply to Respondent.

 

Respondent currently has a significant amount of inventory of Complainantís products on hand.

 

Complainantís asserted proof that Respondent demanded money for the sale of the Disputed Domain Name is inadmissible because by its own terms it does not indicate who made the purported demand; it does not identify Respondent as having done so. And further, even if such a demand was made, it was not made to Complainant. As such, the Complainant has provided no proof that Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting, or transferring the Disputed Domain Name to Complainant for a price in excess of Respondentís out-of-pocket costs.

 

C.   Complainantís Additional Submission

Respondent is attempting to pass himself off as Complainant by selling products under and exhibiting Complainantís Mark without authorization to do so from Complainant, which is incompatible with a finding of a bona fide offering of goods.

 

Respondent admits in his response that he purchased the Disputed Domain Name in May 2016, which was prior to any agreement Respondent had with Cosmo, and consequently Respondent could not have had the authority to so at the time.

 

FINDINGS

Complainant is the owner of US trademark registration number 1,917,087, which was issued on September 5, 1995, and Korean registration number 962635, which was issued on January 7, 2010.

 

Respondent registered the domain name <oxokorea.com> on May 26, 2016.

 

Respondent registered the Disputed Domain Name in furtherance of a business arrangement between and among Complainant, Cosmo Corporation Co., and Respondent whereby Respondent was to act as the on-line retailer of Complainantís products in Korea.

 

DISCUSSION

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.

 

Preliminary Issue: Legal and Equitable Issues

The record in this case appears to present a number of legal and equitable issues that are outside the scope of the Policy. It would require the processes available in a court action to resolve these issues. In such a circumstance, it can be appropriate for a panel to dismiss the administrative UDRP action. See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), and see Love v. Barnett, FA 944826 (Forum May 14, 2007).

 

However, the Panel retains jurisdiction in this case because it believes an analysis under the Policy is both possible and potentially useful, despite such legal and equitable issues.

 

Identicality or Confusingly Similarity

To clear this threshold element, Complainant must show that it has rights in a trademark and that the Disputed Domain Name is identical or confusingly similar to it.

 

Complainant has demonstrated that it owns several trademark registrations for the OXO trademark, including US trademark registration number 1,917,087 and Korean registration number 962635. Either of these alone is sufficient.

 

The question of whether the Disputed Domain Name is identical or confusingly similar to Complainantís Mark is answered by the Panel by making a simple comparison of the two. Here, Complainantís Mark is OXO, and the Disputed Domain Name is <oxokorea.com>.

 

The Panel finds that the addition of ďKoreaĒ to ďoxoĒ does not create a meaningful distinction, and the addition of ď.comĒ is typically ignored for purposes of making this comparison.

 

As such, Complainant has established that the Disputed Domain Name is confusingly similar to the Complainantís Mark.

 

As such, Complainant has established the first element.

 

Rights or Legitimate Interest

Complainant has the initial burden of making a prima facia showing that Respondent does not have rights or legitimate interests, and then the burden shifts to Respondent to demonstrate that he does.

 

Complainant has made the required prima facia showing. Complainant argues and provides some evidence for the following propositions: Respondent is not known by OXO; Complainant did not give Respondent permission to use the Complainantís Mark; and Respondentís registration and use of the Disputed Domain Name has been in bad faith.

 

Respondent has failed to establish his rights or legitimate interests to the Disputed Domain Name.

 

Respondent argues that he has rights and legitimate interests in the Disputed Domain Name because he has expended, in good faith, considerable expense and effort in furtherance with the business arrangement between and among the Complainant, Cosmo, and himself. His efforts have been extensive, and they have been responsible, at least in part, for Complainantís current market recognition in Korea.

However, such expenditures and efforts do not in themselves support a claim for rights and legitimate interests under the Policy.

 

Respondentís best argument is, perhaps, that he has nominal fair use rights as a seller of Complainantís goods. However, this argument would not be successful because the Disputed Domain Name itself and the content of Respondentís website create the strong impression that they belong to Complainant or, at the least, that Respondent is acting in an authorized capacity. See Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001), and see WIPO Overview 3.0, section 2.8.

 

As such, Complainant has established the second element of the Policy.

 

Registration and Use in Bad Faith

In order to establish bad faith, Complainant must demonstrate that Respondent registered and has used the Disputed Domain Name in bad faith. Both are required.

 

Complainant has demonstrated that Respondent is using the Disputed Domain Name, which is confusingly similar to Complainantís Mark, without Complainantís permission for the purpose of intentionally creating a likelihood of confusion with the Complainantís Mark as to the source, sponsorship, affiliation, or endorsement of his website. Indeed, Respondent states he is using the Disputed Domain Name to sell his inventory of Complainantís products. This conduct falls within the scope of Policy ∂ 4(b)(iv).

 

However, Respondentís registration of the Disputed Domain Name on or about May 16, 2016, was not in bad faith. The record herein is thin with respect to the nature of the agreements, expectations, and understandings between and/or among Complainant, Cosmo, and Respondent at the time their business arrangement was being formed, and as such the Panel cannot determine whether Respondent had the express authority or tacit approval to register the Disputed Domain Name from either Complainant or Cosmo.† However, it is nevertheless clear that some business arrangement was being undertaken that contemplated Respondent playing an integral role. Complainant even stated that Respondent had permission to use the Disputed Domain Name during the term of the Cosmo Agreement.

 

In this context, it is more likely than not that Respondentís intention at the time he registered the Disputed Domain Name was to further this business arrangement rather than to target Complainant and Complainantís Mark so as to cybersquat on Complainantís rights at some time in the future if and when the Cosmo Agreement came to an end.

 

Complainant further argues that Respondentís registration and use of the Disputed Domain Name was in bad faith because Respondent demanded a price in excess of his out-of-pocket costs for the sale of the Disputed Domain Name. Even assuming arguendo that Respondent made such a demand, and further assuming that Respondent intended this demand to be conveyed by Cosmo back to Complainant, Policy ∂ 4(b)(i) requires that Respondent have registered the Disputed Domain Name primarily for the propose of making such a demand. As noted above, this was not likely Respondentís intention at the time he registered the Disputed Domain Name.

 

††††††††††† As such, Complainant has failed to establish the third element of the Policy.

DECISION

Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <oxokorea.com> domain name REMAIN WITH Respondent.

 

 

Kendall C. Reed, Panelist

Dated: February 7, 2022

 

 

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