WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associaci� Docent MONLAU v. Nyunhwa Jung
Case No.�D2006-0957
1. The Parties
The Complainant is Associaci� Docent MONLAU, of Barcelona, Spain.
The Respondent is Nyunhwa Jung of Kyung-bok, Republic of Korea, represented by Pil-Yun Kim, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Wooho T&C Co., Ltd. d/b/a RGN (the “Registrar”), Republic of Korea.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on July�28,�2006. On July�31,�2006, the Center acknowledged receipt of the Complaint and transmitted by email a request for registrar verification to Wooho T&C Co., Ltd. On August�3,�2006, Wooho T&C Co., Ltd. transmitted by email to the Center its response verifying that the language of the registration agreement is Korean, and stating the registrant of the Domain Name is Nyunhwa Jung and not SOLIT as specified in the Complaint. According to the Registrar, Nyunhwa Jung is listed as the registrant and as the administrative, billing, and technical contact for the Domain Name.
On August�30,�2006, and September�5,�2006, the Center sent a notification that the Complaint was administratively deficient in that (i) it was not filed in the language of the registration agreement; (ii) it did not specify clearly the trademark on which the Complaint was based; and (iii) the registrant listed in the Complaint did not correspond to the registrant verified by the Registrar. In response to the notification by the Center, the Complainant filed amendments to the Complaint on September 1, 2006 and September�14,�2006, which included what appears to be a Spanish version of a trademark registration. The Complainant also requested that English be the language of the administrative proceeding. On September�4,�2006, the Respondent submitted an English-language email that requested that the Complainant provide an English version of the trademark registration (or alternatively, a Korean translation), as well as contact information for the agency that registered the trademark. The Respondent also requested that the proceeding be conducted in Korean.
On September�4,�2006, the Center notified the Parties that the Complaint would initially be accepted in English, reserving the ultimate decision on the language of the proceeding for the Panel, and allowing the Parties to submit documents in either English or in Korean. The Center subsequently verified that the Complaint together with the amendments 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 October�11,�2006. In accordance with the Rules, Paragraph�5(a), the due date for Response was October�31,�2006. The Respondent did not submit any response pursuant to the notification. Accordingly, the Center notified the Respondent’s default on November�1,�2006.
On November�14,�2006, the Center appointed Grant L. Kim as the sole panelist in this matter. 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.
On December�5,�2006, the Panel issued Procedural Order No.�1, granting the Respondent’s request for additional information about the Complainant’s trademark registration. In particular, the Panel requested the Complainant to submit, by December�12,�2006: (1) an English version or translation of its registration certificate of the MONLAU trademark; and (2) an English-language Supplemental Statement explaining (a) the Complainant’s view on why this registration is sufficient to satisfy Paragraph�4(a)(i) of the Policy; (b) the name, address and URL (if any) of both the MONLAU trademark holder and of the agency (trademark office) with which the trademark is registered; and (c) the relationship between the Complainant and the MONLAU trademark holder.
Procedural Order No.�1 stated that the proceeding would be conducted primarily in English, but the Panel would accept communications from the Respondent in either English or Korean. Procedural Order No.�1 further stated that the Respondent may submit a Response to the Complainant’s Supplemental Statement, in Korean or in English, attaching any relevant supporting evidence, by no later than December�20,�2006. Pursuant to this Order, the Complainant submitted a Supplemental Statement on December�12,�2006, and the Respondent submitted a Korean-language Response on December�21, 2006.
4. Factual Background
The Complainant Associaci� Docent MONLAU is a Spanish educational institute that offers educational services in the name of Centre d’Estudios MONLAU. It was established in 1982 and has since been registered as an enterprise on the Central Mercantile Registry of Spain.
The Spanish trademark MONLAU was registered in the name of “Centro de Estudios Medios y Profesionales, S.A.” at the National Agency of Trademarks and Trade names of Spain on June�1,�1998 in International Class 37. Complainant’s Supplemental Statement explains that “Centro de Estudios Medios y Profesionales, S.A.” and Complainant Associaci� Docent MONLAU belong to the same group and use the same trademark, but that one is a vocational training center and the other is a private school.
The Complainant is the registered owner of the domain names , , , and .
The Respondent registered the Domain Name with the Registrar, Wooho T&C Co., Ltd. d/b/a RGN, on October�30,�2003.
5. The Parties’ Contentions
A. The Complainant’s Contentions
The Complainant states that it has been doing business under the name “monlau” since its date of incorporation in 1982 and offers educational services by using the MONLAU mark. The Complainant contends that its rights in the MONLAU mark are demonstrated by its rights in the Spanish trademark registration for the mark MONLAU (Reg. No.�M 2124303). The Complainant asserts that it has legitimate interests in using the Domain Name based on the registered trademark rights. It also asserts that the Complainant is recognized worldwide by the name MONLAU, which is evidenced by the fact that the Complainant owns various domain names, including , , , and .
The Complainant asserts that the Respondent’s Domain Name is identical or confusingly similar to the Complainant’s MONLAU trademark and that the Respondent is using the Domain Name to cause confusion with its MONLAU mark.
The Complainant claims that the Respondent is using the Domain Name without “any practical utility against the Internet community”, which causes confusion with its MONLAU mark. The Complainant also asserts that the Respondent has rendered this Domain Name useless by using this Domain Name without offering any goods or services related with its name and by trying to make money by selling the Domain Name to a third party.
Further, relying on Paragraph�4(b)(iv) of the Policy, the Complainant contends that the Respondent has registered and used the Domain Name in bad faith, because the Respondent has registered or acquired this Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the owner of the trademark or service mark. In this connection, the Complainant has submitted a screen shot of the Respondent’s website, which states that the domain “is for sale by auction”, with a “starting bid” of 3,500 Euros and a “closing bid” of 5,500 Euros.
Based on the above, the Complainant requests a decision requiring the Registrar to transfer the Domain Name to the Complainant pursuant to Paragraph�4(i) of the Policy.
B. The Respondent’s Contentions
The Respondent did not submit a timely response to the Complaint. However, the Respondent did submit a Response to the Complainant’s Supplemental Statement, which effectively constitutes a Response to the Complaint. Although this Response goes beyond the scope of the Supplemental Statement, the Panel has reviewed and considered this Response, whose basic contents are summarized below.
The Response claims that Respondent had no prior knowledge of the Complainant’s trademark rights. The Respondent further asserts that no one in the Republic of Korea would know about the Complainant and its trademark, as evidenced by the fact that a search for “monlau” on the Republic of Korea’s biggest search engine, Naver, does not retrieve any information about the Complainant.
With respect to Paragraph�4(a)(ii) of the Policy, the Respondent claims to be conducting a legitimate business. The Respondent asserts that the Respondent registered the Domain Name in 2003, and completed the operational planning of this website in April 2006, before the notification of the Complaint. Currently, the Respondent is planning to operate a non-profit portal site using the Domain Name (Attachments 1, 2, 3 and 4 to the Response). The Respondent claims that the website is aimed at providing information regarding movies, animation, games and shopping. The Respondent also refers to a plan to activate related community sites, thereby developing the website into a full portal site.
Furthermore, the Respondent contends that the operation of this website does not overlap or cause confusion with the Complainant’s business. The Respondent is targeting Koreans with a Korean-language website. Thus, this raises no concern about confusing consumers or conflicting with or diluting the Complainant’s mark, which is predominantly used in Spain.
Finally, the Respondent asserts that the Domain Name was not registered or being used in bad faith. The Respondent has never contacted the Complainant specifically to sell the Domain Name. The Respondent contends that the Respondent had no knowledge about the Complainant’s rights in the name MONLAU, and thus had no intention of harming the Complainant by registering or using the Domain Name. In fact, the Respondent alleges that it is the Complainant who is attempting to reverse-hijack the Domain Name from the Respondent illegally.
6. Discussion and Findings
A. 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. Therefore, the default language of this proceeding is Korean, as the registrar has confirmed that the registration agreement was in Korean. Upon receiving notice from the Center regarding the default language, the Complainant submitted a request for English to be the language of the proceeding with arguments as to why the case should proceed in English. The Center proceeded, advising the Parties that the Center would accept the Response in either Korean or English. The Parties were further advised that the ultimate decision regarding the language of the proceedings would be within the discretion of the Panel, and that the Panel may request translations from either Party as necessary. The notice provided by the Center to the Parties was in both English and Korean to accommodate the situations of the Parties. The Respondent subsequently submitted a Response in Korean.
As stated in Procedural Order No.�1, the Panel has decided to proceed primarily in English, but to accept communications from the Respondent in either English or Korean. The reason is that it appears that the Respondent has sufficient ability to communicate in English. For example, the Complainant has submitted a screen shot of an English-language notice on the Respondent’s website, stating that the domain name was “for Sale by Auction”, with details on how to submit a bid. This notice was evidently intended to solicit English-language offers to buy the Domain Name. In addition, the Respondent has submitted several English-language e-mails to the Center, again showing the ability to communicate in English.
The Panel further notes that both the Panel and the Center allowed the Respondent to submit communications in either English or Korean, and that Procedural Order No.�1 and other notices were provided to the Respondent in both English and Korean. Under these circumstances, the Panel concludes that it is reasonable to proceed primarily in English and to render this decision in English, which both Parties have the ability to understand. This Panel notes that this does not impose any undue prejudice on the Respondent, as the Respondent has been permitted to submit arguments in the Respondent’s preferred language. See Julbo v. Lee, Jong-Guk, WIPO Case No.�D2006-0870; Deutsche Messe AG v. Kim Hyungho, WIPO Case No.�D2003-0679.
B. Scope of the Policy
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Transfer or cancellation of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in Paragraph�4(i).
C. Identical or Confusingly Similar
Under Paragraph�4(a)(i) of the Policy, the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
It is undisputed that the “Centro de Estudios Medios y Profesionales, S.A.” has registered trademark rights in MONLAU, as evidenced by the trademark registration information submitted by the Complainant. It is also undisputed that the “Centro de Estudios Medios y Profesionales, S.A.” and the Complainant Associaci� Docent MONLAU belong to the same group and use the same trademark, but that one is a vocational training center and the other is a private school. It is not clear whether these are two related, but distinct, legal entities or rather two different names for the same legal entity. However, even if they are two related entities, this relationship is sufficient to establish that the Complainant has rights in the MONLAU trademark. See Gerd Petrik v. Johnny Carpela, WIPO Case No.�D2004-1043 (complainant was the sole owner of the corporation that is listed as the owner of the U.S. trademark); Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No.�D2003-0796 (company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark); Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No.�D2000-0756.
The fact that the Complainant’s trademark rights are not registered in the country in which the Respondent resides does not preclude a finding of rights under Paragraph�4(a)(i) of the Policy. Consistent with the international character of the Internet, it has been held in numerous decisions that a complainant can rely on trademark rights in countries other than those of the respondent or registrar. See e.g,. Deutsche Telekom AG v. Oded Zucker, WIPO Case No.�D2004-0749; Kaisha ASTY and Kabushiki Kaisha F.D.C. PRODUCTS v. LiHai, WIPO Case No.�D2003-0963; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No.�D2001-1092. Proof of trademark rights in any country is sufficient for the purposes of Paragraph�4(a)(i) of the Policy. Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No.�D2003-0920. Therefore, the Panel finds that the Complainant has carried its burden of demonstrating rights in the MONLAU mark under Paragraph�4(a)(i).
In addition, the Domain Name is identical to the MONLAU mark, aside from the insignificant addition of the top level identifier, “.com”. Lenox Financial Mortgage, LLC v. Digi Real Estate Foundation, WIPO Case No.�D2006-1047 (“[T]he�addition of “.com” accomplishes little if anything toward the avoidance of confusing similarity. It should be disregarded for the purpose of the first element of the Policy concerned”). Accordingly, the Complainant has met its burden under Paragraph�4(a)(i) of the Policy.
D. Rights or Legitimate Interests
In order to meet the second element under Paragraph�4(a) of the Policy, the Complainant should make at least a prima facie showing that the Respondent has no rights or legitimate interests in respect of the Domain Name. Once the Complainant has made a prima facie case, the Respondent should present evidence that the Respondent has rights or legitimate interests. Gerd Petrik v. Johnny Carpela, WIPO Case No.�D2004-1043; Belupo d.d. v. WACHEM d.o.o., WIPO Case No.�D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No.�D2003-0455; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
The Respondent has no claim of ownership in the MONLAU mark. The Complainant has not authorized or licensed the Respondent to use the Complainant’s mark or to register a domain name reflecting the mark. Further, before notice of the dispute, the Respondent was not using the Domain Name in connection with an offering any goods or services that would support the Respondent’s legitimate interests in the Domain Name. In fact, the Complainant has provided evidence that the Domain Name was being used as an auction site for the sale of the Domain Name. Moreover, there is no evidence that the Respondent has ever been commonly known by the Domain Name. The Complainant has noted that the Respondent is not recognized anywhere in the world under the name “monlau”, and the Respondent has presented no contrary evidence. In view of the foregoing, the Panel finds that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Pursuant to Paragraph�4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
The Respondent contends that the Respondent completed “operational planning” of the website in April�2006 and is currently operating the website for the purposes of offering information relating to movies, animation, games and shopping. (Response,�December�20,�2006, at para. 5.B.) However, the Respondent has submitted no evidence that the Respondent was actually using the website for this purpose before receiving notice of the dispute, or that the Respondent had made “demonstrable preparations” for such use. Indeed, when the Panel first viewed the website in November�2006, there was only a notice that the website was under construction, with no actual content. Moreover, the Complainant has submitted screen shots showing that the website previously contained a notice that the Domain Name was for sale by auction. Thus, it appears that the movie and game related content that currently appears on the website was added by the Respondent only recently, after receiving notice of this dispute.
The Respondent has submitted no explanation of why the current website was not set up until more than three years after the Domain Name was registered in 2003, and more than six months after the Respondent allegedly completed “operational planning” of the website in April 2006. In addition, the Respondent has not disputed that the website previously contained a notice that the Domain Name was for sale by auction. Accordingly, the Panel concludes that the Respondent has not submitted credible evidence that the Respondent was making any use of, or demonstrable preparations to use, the Domain Name in connection with any bona fide offering of goods or services before the commencement of this proceeding. Rather, it appears that the Respondent recently changed the content of the website, after receiving notice of this dispute, for the purpose of attempting to avoid transfer of the Domain Name by creating a fa�ade of operating the website for legitimate purposes.
Furthermore, there is no evidence that the Respondent has ever been commonly known by or identified with the name “monlau”. The Respondent has presented no evidence of any trademark or service mark rights in MONLAU, or of any other legitimate, pre-existing rights in the Domain Name. Nor has the Respondent explained why the name “monlau” was selected for a website offering information relating to movies, animation, games and shopping. The Panel is not aware of any Korean-language meaning of “monlau”, or of any reason why the Domain Name would be associated with movies, games, or shopping.
The Respondent asserts that the website is a legitimate non-commercial use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. However, the Respondent’s current website contains various advertising banners, implying that the Respondent is engaged in a commercial activity, i.e., the selling of advertising space on the Respondent’s website to various vendors. Further, some of the movies, games or animation clips that the Respondent has made available on its website are hyperlinked to third-party commercial websites and can only be downloaded for a fee. The fact that the Respondent does not offer products or services that are charged directly on the website does not convert the Respondent’s “commercial activity” into a “non-commercial activity”. See The Professional Golfers’ Association of America (PGA) v. Provisions, LLC, WIPO Case No.�D2004-0576; AltaVista Company v. S.M.A., Inc., WIPO Case No.�D2000-0927. Given the totality of the circumstances of this case, the Panel concludes that the Respondent is not making a legitimate, non-commercial or fair use of the Domain Name under Paragraph�4(c)(iii).
In sum, the Panel concludes that the Complainant has met its burden under Paragraph�4(a)(ii) of the Policy, and the Respondent has failed to establish rights or legitimate interests in the Domain Name.
E. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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;
(ii) circumstances indicating that 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
Paragraph�4(b) expressly states that the above list is “in particular but without limitation”; thus, “bad faith” may also be proven by other means. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad faith registration and use set forth in Paragraph�4(b) are not meant to be exhaustive of all circumstances in which such bad faith may be found. See id.
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith under Paragraph�4(b)(i), by registering or acquiring the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant (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. In support of this conclusion, the Complainant submitted a print-out of the Respondent’s website displaying the following notice:
“This Domain is for Sale by Auction.
Starting Bid Euro 3500, Closing Bid Euro 5500
Sorry to announce that we decided to sell this domain name displayed in URL window by Auction.
If you are interested in buying this domain name,
please make your bid via e-mail.
The domain name will be transferred to the winner by using escrow service at or directly with wire transfer payment.”
(Annex 5 to the Complaint.)
The Respondent asserts that the Complainant has not demonstrated bad faith because the Respondent has not attempted to sell the Domain Name to the Complainant directly, and the Respondent never intended to harm the Complainant by offering services or goods that compete with those of the Complainant.
The Panel concludes that the evidence shows that the Respondent likely registered the Domain Name primarily for the purpose of selling it to the Complainant or another third party. Although the Respondent has recently altered the website to include contents related to movies and games, it is undisputed that before receiving notice of the Complaint, the Respondent attempted to sell the Domain Name by a notice placed on the website. The suggested opening bid of 3,500 Euros is much higher than the normal out-of-pocket cost for a three-year registration of the Domain Name. Moreover, the fact that the suggested bid was in Euros (rather than Korean won, U.S. dollars, or some other currency) shows that the Respondent was targeting buyers in European countries such as Spain. Although the Respondent asserts that the Respondent was not aware of the Complainant, the Respondent has not disputed that the Respondent had offered the Domain Name for sale on the website. The Panel finds that evidence of an intent to entice the Complainant and/or others to purchase the Domain Name at a price in excess of the Respondent’s out-of-pocket costs is indicative of bad faith under Policy Paragraph�4(b)(i). See PRIMEMEDIA Magazine Finance, Inc. v. Richard Manzo, WIPO Case No.�D2001-1258 (finding bad faith because “[w]hile there is no evidence that Respondent attempted to sell the name directly to Complainant or to a competitor, Respondent clearly offered the name for sale to anyone, suggested a price that is considerable in excess of registration costs, and has indicated a willingness to sell ‘at the right price’”); AT&T Corp v. rnetworld, WIPO Case No.�D2006-0569 (auctioning the Domain Name would be an effective strategy for attracting the interest of the Complainant or one of its competitors); Reckitt Benckiser AG v. Nazim Oren, WIPO Case No.�D2002-0286 (bad faith is found in attempting to sell domain names through the domain name auction site despite knowledge of the complainant’s marks); Benetton Group SpA v Domain for Sale, WIPO Case No.�D2001-1498.
Furthermore, a reverse “WhoIs” search shows that there are a large number of domain names registered to the Respondent and/or that list the Respondent’s email address as a contact. In addition, the Respondent’s current website contains numerous links to other websites. Thus, the Respondent appears to be a sophisticated user of the Internet, who is well aware of the value of domain names. It is probable that before registering the Domain Name and offering the Domain Name for sale, the Respondent conducted an online search for similar domain names and/or trademarks. This search likely would have revealed, at a minimum, that the Complainant had already registered similar domain names, such as and . This search likely would also have revealed that a number of companies, including the Complainant, are using “monlau” as part of their business names. Indeed, “Google” and “Yahoo” searches for “monlau” reveal the Complainant’s website as one of their top results. Under these circumstances, the Panel concludes that the Respondent likely registered the Domain Name because the Respondent knew that a number of entities, including, the Complainant, were using “monlau” in their business name, for the purpose of selling the Domain Name to one of those entities. This conclusion is supported by the Respondent’s decision to post the bid in Euros instead of US dollars, so as to target European entities such as the Complainant.
The Panel therefore concludes that the Respondent’s registration and use of the Domain Name was undertaken in bad faith. Accordingly, the Panel finds that the Complainant has met its burden under Paragraph�4(a)(iii).
Further, for the reasons stated above, the Panel does not find reverse domain name hijacking.
7. Decision
For all the foregoing reasons, in accordance with Paragraph�4(i) of the Policy and Paragraph�15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Grant L. Kim
Sole Panelist
Dated: December�30,�2006
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