WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay S.A. v. Hyun-Jun Shin
Case No. D2006-0593
1. The Parties
The Complainant is Solvay S.A., Bruxelles, Belgium, represented by an internal representative.
The Respondent is Hyun-Jun Shin, of the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with HANGANG Systems Inc. dba D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2006. On May 11, 2006, the Center transmitted by email to HANGANG Systems Inc. dba D a request for registrar verification in connection with the domain name at issue. On May 12, 2006, HANGANG Systems Inc. dba D 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2006. The Center verified that the Complaint and the Amendment thereto 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 June 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June�27,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2006.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July�6,�2006. 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
(a) Solvay is an international chemical and pharmaceutical group with headquarters in Brussels. It employs approximately 30,000 people in more than 45 countries. In 2005, its consolidated sales amounted to EUR 8.6 billion generated by its three major sectors: chemicals, plastics and pharmaceuticals.
(b) On March 23, 2005, the Respondent reserved the domain name .
(c) On March 24, 2005, the Complainant announced that it signed a memorandum of understanding with the shareholders of Fournier Pharma, with the aim of acquiring 100% of the company. On July 28, 2005, it was announced that it had completed the acquisition of 100% of Fournier Pharma.
(d) On February 16, 2006, the Complainant sent to the Respondent a cease and desist registered letter claiming IP rights on the domain and requesting its transfer to the Complainant.
(e) On February 26, 2006, the Respondent replied requesting additional information and suggesting starting a negotiation.
(f) On April 25, 2006, the Complainant confirmed that due information was already provided and offered to settle the transfer for an amount of $100 corresponding to out-of-pocket expenses and administrative costs for reserving the domain name.
(g) On April 26, 2006, the Respondent replied requesting of $20.000 for settling the transfer without any dispute.
(h) The Complainant is the legal owner for decades of the corporate name “SOLVAY”, the trade name “SOLVAY”, numerous registrations of the trademark SOLVAY (registered since the 60s or even before) and the domain name . Trademarks including SOLVAY are registered in approximately 100 countries, including the Republic of Korea.
5. Parties’ Contentions
A. Complainant
(a) On July 28, 2005, the Complainant announced that it completed the acquisition of 100% of Fournier Pharma, following the successful completion of social and regulatory procedures worldwide.
(b) The Complainant therefore became the legal owner of the IP rights of Fournier Pharma, including the corporate name FOURNIER, the trade name FOURNIER, numerous registrations of the trademark FOURNIER (registered since 1992) and the domain name .
(c) The domain name merely combines the two distinctive marks SOLVAY and FOURNIER.
(d) The domain name is identical or confusingly similar to trademark registrations owned by the Complainant as the domain name is just the juxtaposition of the said trademarks. The domain name is also corresponding to the juxtaposition of the corporate name of the Complainant and its new subsidiary.
(e) The Respondent does not use the domain name in connection with a bona fide offering of goods or services.
(f) The Respondent is not known by the domain name and has not submitted any legitimate or fair use of the domain name.
(g) The domain name has been registered and used in bad faith by the Respondent because the Complainant offered $100 in exchange for the transfer, i.e. an amount slightly above the out-of-pocket expenses for the domain name registration, but the Respondent countered with a proposal of $20,000 in order to settle the transfer without dispute.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however the Complainant asserts that English should be the language of the proceeding.
According to Paragraph�11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph�11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, although the registration agreement for the domain name in dispute was made in the Korean language, it is also apparent from the written communications exchanged between the parties that the Respondent has sufficient ability communicating in the English language.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the arbitration proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph�11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but on the condition that (ii) the Respondent shall be permitted to submit any documents or assertions in Korean. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
B. Substantive Elements of the Policy
Paragraph�15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.
Moreover, under Paragraph�14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Paragraph�14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph�4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(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.
C. Identical or Confusingly Similar
The Complainant’s marks are registered throughout the world. The domain name merely combines two distinctive marks, SOLVAY and FOURNIER, and as such creates sufficient similarity to be confusingly similar. See J C Bamford Excavators Limited v. Hyun-Jun Shin, WIPO Case No. 2005-1138 (December 22, 2005), , combining JCB (the abbreviation of J C Bamford) and VIBROMAX marks that were previously registered by companies of the same respective name; Neuf Telecom, Cegetel v. Hyun-Jin Shin, WIPO Case No. 2005-1118 (December 21, 2005), , combining NEUF and CEGETEL marks that were previously registered by companies of the same respective names; see also
Paragraph 4(a) of the Policy.
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s marks pursuant to the Policy, paragraph�4(a)(i).
D. Rights or Legitimate Interests
According to Paragraph�4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a Response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph�4(c) of the Policy. Accordingly, the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph�4(b) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Paragraph�2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are well-known worldwide, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the Republic of Korea, or of many other countries, would have made the Complainant’s registrations known to the Respondent.
In addition, the Respondent requested $20,000 to settle the dispute, which is an amount far greater than the out-of-pocket costs of registering and establishing the domain name.
The conduct described above falls squarely within Paragraph�4(b)(vi) of the Policy and accordingly, the Panel concludes that the Respondent registered and used the domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
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.
Thomas P. Pinansky
Sole Panelist
Date: July 28, 2006
Full & Egal Universal Law Academy