WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Süd-Chemie AG v. S
Case No. D2002-0970
1. The Parties
The Complainant is Süd-Chemie AG, Dr. Karin Jung Patent Attorney, of München, Germany, represented by Rechtsanwälte Bettinger Schneider Schramm of Germany.
The Respondent is S, of the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows, Inc. ("Tucows").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2002. On October 22, 2002, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 22, 2002, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 12, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent�s default on November 15, 2002.
The Center appointed Michelle Brownlee as the sole panelist in this matter on November 26, 2002. 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
Complainant is the central company in a global conglomerate of chemical companies, with subsidiaries located throughout the world, including one located in the Republic of Korea, Sud-Chemie Korea Co. Ltd. Complainant owns trademark registrations for Süd Chemie + Design for chemical products in more than 70 countries dating back to as early as 1974, and claims common law trademark rights in the trademark SÜD CHEMIE.
5. Parties� Contentions
A. Complainant
Complainant submits that the domain name is confusingly similar to its registered trademarks, and identical to its common law trademark SÜD CHEMIE.
Complaint submits that Respondent has no rights or legitimate interests in the domain name, s, as Complainant has not authorized Respondent�s use of the domain name and Respondent does not appear to use or have registered any trademark similar to "Süd Chemie." Moreover, Respondent is not using or making preparations to use the domain name in connection with a bona fide offering of goods or services, as the web site associated with the domain name states that the domain name is for sale for US$ 1,750.
Complainant also contends that Respondent has registered and used the domain name in bad faith because its offer to sell the domain name for more than out of pocket costs violates paragraph 4(b)(i) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
A. Identical or Confusingly Similar
Complainant contends that the domain name is confusingly similar to its registered trademark SUD CHEMIE + Design. In support of this contention, Complainant cites two cases in which the Administrative Panels found domain names identical to registered trademarks that included words with design elements. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031, April 13, 2001; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036. Because those decisions do not show images of the trademarks at issue, it is difficult to tell how persuasive they are. Those cases state that when the design elements (which cannot be represented in a domain name) are left out, the marks are the same as the domain name. Complainant�s registered marks consist of a very large design element with the wording SÜD CHEMIE in relatively small letters as compared to the design. Thus, the design tends to dominate the words. In such a case, it stretches the concept of identity too far to say that the mark and domain name are identical if the design element is eliminated. Thus, the Panel is reluctant to find that the domain name is identical to the trademark covered by the registrations.
Whether the domain name and the registered trademark are confusingly similar is a more difficult question. Nevertheless, the Panel finds that it need not reach that issue as Complainant also claims common law trademark rights in the word mark SÜD CHEMIE. The Panel finds that the domain name is confusingly similar to Complainant�s common law trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue
Respondent has not provided the Panel with any evidence that it used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that it has been commonly known by the domain name or that it made any legitimate noncommercial or fair use of the domain name. Further, Respondent�s offer to sell the domain name on the associated web site for a sum greater than out of pocket costs suggests a lack of legitimate interest in the domain name. Accordingly, the Panel finds that the Respondent does not have any right or legitimate interest in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith.
Respondent�s offer for sale of the domain name for US$ 1,750 demonstrates that the Respondent registered the domain name primarily for the purpose of selling the domain name to Complainant for valuable consideration in excess of out-of-pocket costs. Moreover, Complainant has introduced evidence that Respondent may have engaged in a pattern of such conduct (Respondent�s administrative and technical contacts are listed as Kim Taekyeon, the same name as a party found to have acted in bad faith in Gemstar-TV Guide International, Inc. v. Kim Taekyeon, NAF Case No. 97094, June 29, 2001). The party in the Gemstar case was located in the same city as the administrative and technical contacts in this case. It seems highly likely that the same party is involved. Finally, Complainant has introduced evidence that Respondent provided false address information to the domain name registrar, which also suggests bad faith. Accordingly, the Panel finds that the domain name was registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Date: December 3, 2002
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