Goodai Global Inc. v Muhammad Akram, Pkwebhost Pvt Ltd /

WIPO Case No. DAE2024-0020

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Goodai Global Inc. v. Muhammad Akram, Pkwebhost Pvt Ltd /
Muhammad Nadeem

Case No. DAE2024-0020

1. The Parties

The Complainant is Goodai Global Inc., Republic of Korea, represented by KAI IP Law LLC,

Republic of Korea.

The Respondent is Muhammad Akram, Pkwebhost Pvt Ltd, Pakistan / Muhammad Nadeem.

2. The Domain Name and Registrar

The disputed domain name <beautyofjoseon.ae> is registered with .AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, contact details.
2024. On December 11, 2024, the Center transmitted by e-mail to .aeDA a request for registrant verification

in connection with the disputed domain name. On December 12, 2024, .aeDA transmitted by e-mail to the

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute
Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2025. A third party sent an informal e-mail communication to the Center on December 18, 2024, and the Respondent sent an informal e-mail communication on December 27, 2024. The Respondent did not submit a formal Response.

The Center appointed Catherine Slater as the sole panelist in this matter on January 22, 2025. 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.

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4. Factual Background

The Complainant is a company registered in the Republic of Korea. Since 2013, it has been engaged in the development, production and sale of cosmetic products under the trademark BEAUTY OF JOSEON. These products are sold in more than 100 countries, have appeared in various magazines “best of” articles and

were the bestseller in the suncare category on Amazon (United States of America) during Black Friday 2022.

The Complainant is the proprietor of various trademark registrations around the world including International hereinafter referred to as the “Complainant’s Trademark”.

The Complainant is the proprietor of various domain names including <beautyofjoseon.com> which was
registered on March 2, 2017, and which resolves to the Complainant’s principal website (the “Complainant’s
Website”).

The Respondent registered the disputed domain name on October 23, 2024. At the time of filing of the Complaint, the disputed domain name resolved to a website (“the Respondent’s Website”) which offered for sale the Complainant’s products, utilized imagery from the Complainant’s Website and utilized a similar layout to the Complainant’s Website.

At the date of this Decision, the disputed domain name resolves to a website that purports to be a blog about philosophy and contains links to three articles about digital marketing and/or social media.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Complainant’s trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In this regard, it says that the Complainant and the Respondent are unrelated, that there has been no permission granted to the Respondent to register or use the disputed domain name.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith. In this regard, it says that the Respondent must have been aware of the Complainant’s Trademark when registering the disputed domain name because the Complainant’s Trademark is so well known, the Respondent’s Website deceives customers by impersonating the Complainant’s Website, that the Respondent’s Website gives the false impression that it is operated by, or affiliated with, the Complainant, that the Respondent has registered and is using the disputed domain name with the intention to obstruct the Complainant’s business or gain profits illegally or mislead Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website or products.

B. Respondent

The Respondent did not file a formal Response. However, two e-mails were sent in response to the Complaint. The first of those e-mails identified the sender as “Nadeem” and stated, “In response to the complaint regarding the domain name beautyofjoseon.ae, I acknowledge your concerns and the points raised about the potential confusion with your trademark and brand identity. To address your complaint, I would like to inform you that all images and content associated with your brand and trademark have been removed from the website linked to this domain. This step ensures there is no further misuse or misrepresentation of your brand”.

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The second e-mail sent by the Respondent MUHAMMAD AKRAM, Pkwebhost Pvt Ltd made a bare assertion that the registration and use of the disputed domain name were done in good faith and offered to sell the disputed domain name to the Complainant. Beyond these statements, neither e-mail makes any substantive response to the Complaint.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

The Panel notes that the Policy is substantially similar to (though not identical to) the Uniform Domain Name Numbers (“ICANN”). In determining this dispute, the Panel will therefore and where appropriate apply principles that have been established in relation to the UDRP, including those set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”).

Paragraph 6(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights;

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

(iii) that the disputed domain name has been registered or is being used in bad faith.

Preliminary Issue: Identity of the Respondent

The Panel notes that the named Respondent MUHAMMAD AKRAM, Pkwebhost Pvt Ltd claims to have registered the disputed domain name on behalf of another party, namely “Muhammad Nadeem”.

The .aeDA has confirmed that the Respondent MUHAMMAD AKRAM, Pkwebhost Pvt Ltd is listed as the registrant of the disputed domain name. As noted above, an e-mail was received by the Center on December 18, 2024 from a person who identified themselves as “Nadeem”. On December 27, 2024 an e- mail was received from Muhammed Akram in which he identified himself as the “registrar” and confirmed that sender of the e-mail of December 18, 2024 and the true owner (i.e. the “beneficial holder”) of the disputed domain name is “Muhammad Nadeem” who has “authority to communicate and make decisions regarding this domain [name] in the context of the current proceedings”.

The Panel retains discretion to determine the respondent against which the case should proceed
(WIPO Overview 3.0, section 4.4.5).

A respondent is defined by the Rules (at paragraph 1) as: “[…] the holder of a Domain Name Registration against which a complaint is initiated.” In exercising their discretion in similar circumstances, previous panels have generally considered, among others, (i) whether the identity of the beneficial holder is disclosed, (ii) whether the beneficial holder submits arguments explaining its position, or (iii) whether the relationship between the registrant of the domain name and the beneficial holder is clear (Bryan Cave Leighton Paisner LLP v. Job, WIPO Case No. D2020-0592).

In this case, the identity of the beneficial holder has been disclosed, the beneficial holder has submitted a
communication explaining his position (which explanation disclosed his control over the use of the disputed
domain name) and the relationship between the registrant and the beneficial holder is clear. As such, the
Panel will exercise its discretion to find that the beneficial holder should be treated as a further Respondent.
Accordingly, both Respondents are collectively referred to and treated as the “Respondent” in this matter.

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A. Identical or Confusingly Similar

The Complainant has shown rights in respect of a trademark (the Complainant’s Trademark) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

It is accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

In this case, the entirety of the Complainant’s Trademark is reproduced within the disputed domain name
with no additional terms. Accordingly, the disputed domain name is identical to the Complainant’s

Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 6(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

The Panel finds that none of those circumstances apply in the present case. The Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use the Complainant’s Trademark. The Complainant has prior rights in the Complainant’s Trademark which predate the Respondent’s registration of the disputed domain name. The Complainant has therefore made out a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and therefore the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. WIPO Overview 3.0, section 2.1.

The Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered or Is Being Used in Bad Faith

The Panel notes that, for the purposes of paragraph 6(a)(iii) of the Policy, paragraph 6(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 6(b)(iv) of the Policy sets out the following circumstance that amounts to use in bad faith:

“by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users
to your website 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 website or location or of a product or service
on your website or location.”

The Respondent used the disputed domain name to point to the Respondent’s Website which, because of its previously exhibited content as noted above, falsely gave Internet users the impression that it was the Complainant’s online store in the United Arab Emirates market (i.e., that it was operated by the Complainant or was affiliated with/endorsed by the Complainant) and in so doing the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of its website. The Panel therefore finds that the disputed domain name has been used in bad

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faith in accordance with the circumstances set out in paragraph 6(b)(iv) of the Policy.

Although it is sufficient for the Complainant to prove that either registration or use of the domain name is in bad faith, the Panel notes that the registration was also in bad faith because, at the time of registration, the Respondent was clearly aware of the Complainant and/or the Complainant’s Trademark as demonstrated

inter alia advertised the Complainant’s products for sale and used the Complainant’s imagery. In short, the	by the fact that shortly after registration, the Respondent pointed the disputed domain name to a website that impersonating (or at least giving the impression of a connection with) the Complainant which, as discussed above, amounts to “bad faith use”.
The Panel further notes that the change in use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this case. The Respondent’s acknowledgement of “[the Complainant’s] concerns and the points raised about the potential confusion with [the Complainant’s] trademark and brand identity” affirms in the Panel’s view that composition of the disputed domain name coupled with its prior use can mislead Internet users into believing that the Respondent’s Website is operated or endorsed by the Complainant.
Finally, the Panel notes that the Respondent has failed to avail himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
The Panel finds that the Complainant has established the third element of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <beautyofjoseon.ae> be transferred to the Complainant.
/Catherine Slater/ Catherine Slater Panelist Date: February 5, 2025