WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Donning Eric v. Mr. Nyunhwa Jung
Case No. D2003-0689
1. The Parties
The Complainant is Mr. Donning Eric, of Bruxelles, Belgium.
The Respondent is Mr. Nyunhwa Jung, of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2003. On September 4, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the Domain Name. On September 8, 2003, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative, billing, and technical contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 19, 2003. 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"), 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 September 18, 2003. In accordance with the Rules, paragraph 5(a), the date due for Response was October 9, 2003. The Response was filed with the Center on October 7, 2003.
On October 17, 2003, the Center notified the parties that Ms. Anna Carabelli had been appointed as Sole Panelist in the matter, indicating that, absent exceptional circumstances, the decision would be due by October 31, 2003.
The Panelist has independently determined and agreed that the Complaint as amended by the Amended Complaint formally complies with requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided evidence of two trademark registrations for the word ASTROCARD: a Benelux trademark registration of December 2001 (Attachment 5 to the Complaint) and an International trademark registration of June 2002 (Attachment 6a and 6b).
The Complainant is also the registrant of the domain names , since September 2001, since October 2001 and since April 2003 (Attachments 18a-d and 20a of the Complaint).
The Respondent registered the Domain Name in April 2002 (Attachments 1, 2a-d and 20b to the Complaint).
In consideration of the announcement "This domain is for SALE!" displayed on the home page of the web page "www." (Attachment 7 to the Complaint), on June 22, 2002, the Complainant enquired with the website (Attachment 8a to the Complaint) and on June 24, 2002, received an e-mail indicating in US$25,000 the price of the Domain Name (Attachment 8b to the Complaint).
The bid for sale was still on the website in June 2003, when the Complainant made an offer of US$100 (Attachments 10 and 11) later raised to US$1,000 (Attachment 13a) following the Respondent representative�s reply that the price was between US$3,500-4,500 (Attachment 12 to the Complaint). Subsequently, the Respondent�s representative lowered the price to US$2,500 (Attachment 4a to the Response).
On July 14, 2003, the Respondent put the Domain Name up for auction with a starting bid price of US$6,000 and sent an unsolicited e-mail to the Complainant and to three other entities (Attachment 14 to the Complaint) who are registrants of domain names incorporating the word astrocard (Attachments 16a, b and c to the Complaint).
5. Parties� Contentions
A. Complainant
The Complainant contends that:
* the Complainant is an individual who, as the author of astronomical material, is active in the preparation of websites offering on-line services providing astronomical information;
* the Respondent�s Domain Name is plainly identical to the Complainant�s registered trademarks ASTROCARD;
* the Respondent has no right or legitimate interest in the Domain Name;
* the Respondent has never used the Domain Name or made demonstrable preparations to use it in connection with a bona fide offering of goods and services;
* the Respondent has registered the Domain Name in bad faith since, immediately after the registration, he has offered it for sale on the corresponding web page "www." showing the notice "This domain is for SALE";
* the Respondent�s bad faith in using the registered Domain Name is demonstrated by: (i) the lack of any evidence as to the Respondent�s use or demonstrable preparation to use the Domain Name; (ii) the fact that, after the registration, the Respondent has immediately offered the Domain Name for sale for valuable consideration in excess of out-of-pocket costs (US$25,000); (iii) the fact that the Respondent, the negotiations with the Complainant having failed, put the Domain Name up for auction with a starting bid price of US$6,000 by sending unsolicited e-mails to the Complainant and three of his competitors; (iv) the Respondent�s prohibited use of a Whois database in order to download a list of e-mail addresses of the Complainant�s competitors; (v) the Respondent�s intention to prevent the Complainant from reflecting his trademark in a corresponding domain name.
Based on the above, the Complainant requests the transfer of the disputed Domain Name.
B. Respondent
The Respondent contends that:
* the Domain Name is not identical or confusingly similar to the trademark ASTROCARD, since it consists of generic words the Respondent intended to use in connection with a business (a fortune teller site) which is completely different from that of the Complainant;
* the Respondent has a right to or legitimate interest in the Domain Name since he intended to create a fortune teller site under the Domain Name, like the one he operates under the domain name ;
* when it registered the Domain Name, the Respondent was not aware of the Complainant�s trademarks;
* the registration of the disputed Domain Name took place on April 29, 2002, that is prior to the international registration of the trademark ASTROCARD and to the registration of the domain name by the Complainant;
* the Respondent did not register or use the Domain Name in bad faith for sales purposes and did not approach the Complainant who first contacted the Respondent;
* even though the first amount requested was US$25,000, then the Respondent cut down the price to US$2,500;
* during negotiations, the Complainant never identified himself as the owner of the trademark ASTROCARD;
* if the Complainant had revealed the above, the Respondent could have settled the dispute "peacefully."
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the Complainant�s trademark or service mark; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by Respondent, shall be evidence of the Respondent�s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Respondent argues that "astrocard" consists of two generic words, "astro" and "card" which are commonly used by various websites.
In the Panel�s view, however, "astrocard" does not have a proper specific meaning while, on the other hand, the combination of two words having a generic meaning could create a valid trademark. In addition, the Respondent has failed to provide any evidence to support its allegation that "astrocard" is used by a number of different websites in connection with different businesses with a specific meaning.
Therefore, the Panel finds that the Domain Name is identical with the Complainant�s trademarks and that the addition of the gTLD ".com" has no legal significance in comparing the Domain Name and the Complainant�s trademark.
On this record, this element has been established.
B. Rights or Legitimate Interests
Based on the Complaint it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainant�s trademark ASTROCARD. It also appears that the Respondent is not commonly known by the Domain Name.
The Respondent�s website "www." which focuses on fortune-telling on-line services, corresponds to a completely different domain name, and there is no evidence of the Respondent�s use or preparations to use the Domain Name in connection with a fortune-teller website or with any bona fide offering of good and services or for non-commercial purposes.
The Panelist finds, therefore, that the Complainant has established a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies here, and that the Respondent has failed to rebut the showing.
The Panel concludes therefore that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Under the Policy, the Complainant is also required to prove the third element provided for in paragraph 4(a)(iii), namely that the domain name "has been registered and is being used in bad faith."
As demonstrated by the Complainant, at least factor (i) of Paragraph 4(b) of the Policy is applicable here and establishes bad faith registration and use of the Domain Name.
According to the evidence provided by the Complainant, since its registration the Domain Name had been put on sale on the corresponding website. In addition, as proven by the Complainant, the Respondent, following unsuccessful negotiations with the Complainant, put the Domain Name up for auction with a starting bid price of US$6,000 sending an e-mail to the Complainant and to three other people whose domain names incorporated the word "astrocard," allegedly competitors of the Complainant.
The posting of the announcement: "This domain is for SALE!" constitutes satisfactory evidence, when combined with the Respondent�s lack of legitimate rights to or interests in the domain name, that the Respondent�s primary purpose in registering the domain name was to sell it in contravention of the Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).
When contacted by the Complainant, the Respondent indicated the price of the Domain Name in US$25,000, which represents a considerable profit over its direct costs of registration. Considering that the price for registering domain names is usually around US$100, the fact that the Respondent�s last offer amounted to US$2,500 does not weaken the Respondent�s violation of the Policy at 4(b)(i), since both amounts are far in excess of the normal out-of-pocket expenses directly related to the registration of a domain name (See Benetton Group S.p.A. v. Domain for Sale, WIPO Case No. D2001-1498).
Based on the above, the Panelist finds that the Domain Name has been registered and used in bad faith.
7. Decision
The Panelist decides that: (a) the Domain Name registered by the Respondent is identical to the Complainant�s trademark; (b) the Respondent has no rights or legitimate interests in respect of the Domain Name ; and (c) the Domain Name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panelist requires that the Domain Name be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Dated: October 30, 2003
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