Goodai Global Inc. v Umar Junaid

WIPO Case No. D2024-4984

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Goodai Global Inc. v. Umar Junaid

Case No. D2024-4984

1. The Parties

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

Republic of Korea.

The Respondent is Umar Junaid, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <beautyofjoseonuk.com> (the “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 December 3, 2024. On December 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent (Anonymous) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2024.

The Center verified that the Complaint together with the amendment to 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 December 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2024. The Respondent sent an email communication to the Center on December 26, 2024, indicating that it has “no intention to retain or use” the Domain Name, that it was unaware that it had registered the Domain Name and that it fully supports the removal or transfer of the Domain Name.

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The Center appointed Gregor Vos as the sole panelist in this matter on January 6, 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.

4. Factual Background

The Complainant was founded in 2013 and is active in the field of cosmetic products. The Complainant sells
more than 100 types of cosmetic products through its homepage connected to the domain name
<beautyofjoseon.com> and other online web shops in more than 100 countries globally.

The Complainant is the owner of inter alia the following trademark registration (hereinafter jointly referred to as the “Trademark”):

- United States of America Trademark registration No. 5829748 for	(“BEAUTY OF
JOSEON”), registered on August 6, 2019; and

- International Trademark registration No. 1755801 for BEAUTY OF JOSEON, registered on August 4, 2023.

The Domain Name was registered on November 9, 2024. At the time of filing the Complaint, the Domain identical to the Complainant’s products we purportedly offered for sale to consumers.

5. Parties’ Contentions

A. Complainant

With the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The
Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly
similar to the Trademark of the Complainant, the Respondent has no rights or legitimate interests in the

Domain Name, and the Domain Name has been registered and is being used in bad faith.

Firstly, according to the Complainant, the Domain Name is confusingly similar to its well-known Trademark. of a likelihood of confusion.

The Domain Name incorporates the Trademark in its entirety with the mere addition of the generic Top-Level

Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain the Domain Name.
Name. The Respondent has never received a license or any other form of authorization from the

Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. In light of the well-known character of the Complainant’s Trademark, it is inconceivable that the Respondent registered the Domain Name without knowledge of the Complainant and its Trademark. Also, according to the Complainant, the Domain Name is being used in bad faith. The Respondent is using the Domain Name with the intention to lead Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademark and business. In addition, the Respondent has attempted to sell the Domain Name to the Complainant prior to these proceedings in a negotiation through the Domain Name’s Registrar for an amount well in excess of the documented out-of-pocket costs of the Respondent.

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B. Respondent

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

However, on December 26, 2024, the Respondent sent an e-mail to the Center indicating that it has no
“intention to retain or use” the Domain Name, that it was unaware that it had registered the Domain Name

and that it fully supports the removal or transfer of the Domain Name.

6. Discussion and Findings

The Panel notes that consent to transfer by the Respondent can provide a basis for an order for transfer without a need for consideration of the UDRP grounds. Taking into account the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10 and Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips, WIPO Case No. D2015-0189, the Panel finds that when the Complainant seeks transfer of the Domain Name, and the Respondent agrees to transfer, the Panel may proceed immediately to make an order for transfer. In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits.

The Panel has decided to proceed to a substantive determination for the following reasons:

First, the Respondent has not conceded that the three elements of paragraph 4(a) have been satisfied. On the contrary, the Respondent specifically denies fault or liability.

Second, the Complainant has not agreed to a consent decision.

Third, the Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent in this case, if found to have registered and used the Domain Name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with

assessment of patterns of conduct under paragraph 4(b)(iii) of the Policy.

Finally, in the Panel’s view, the Complainant is entitled to a decision for which it has paid in filing the
Complaint.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i.         the Domain Name is identical or confusingly similar to a trademark or a service mark in which the

Complainant has rights;

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

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

Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the

Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

It is well 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 Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of all the (Latin) word elements of the Trademarks is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, the gTLD “.com” and the abbreviation the country the United Kingdom “uk”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Name and the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Given the composition of the Domain Name, together with its use for a website purportedly offering the Complainant’s products without any disclaimer as to the owner of the website, the Domain Name is such to give an impression of direct association with the Complainant. Panels have held that the use of a domain name for impersonation can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(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.

In the present case, the Trademark is registered by the Complainant and has been used for many years
worldwide. The Complainant’s rights to the Trademark predate the registration date of the Domain Name.
Based on the record before it, the Panel finds that it is not conceivable that the Respondent chose the
Domain Name without knowledge of the Complainant’s activities and its Trademark under which the
Complainant is doing business.

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Further, the Panel has found that the Respondent lacks any rights to or legitimate interests in the Domain Name and finds that the Respondent is taking unfair advantage of the Domain Name by diverting Internet users to a website that impersonates the websites of the Complainant. Also, the Panel finds that the

“Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Joan Mitchell, WIPO Case No. D2018-0226). Panels have held that the use of a domain name for impersonation constitutes bad faith. WIPO Overview 3.0, section 3.4.
Respondent intentionally registered the Domain Name to sell it to the Complainant for valuable consideration Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant. Also, the use of the Domain Name for a website by which the Respondent has attempted to impersonate the Complainant shows that the Respondent has intentionally attempted 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 (see, e.g.,

likely in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.

The Panel finds that the Complainant has established 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 Domain Name <beautyofjoseonuk.com> be transferred to the Complainant.

/Gregor Vos/ Gregor Vos Sole Panelist Date: January 21, 2025