WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Windsolutions Sarl v. Jin-Hak Yoo Case No. D2008-1204 1. The Parties
The Complainant is Windsolutions Sarl, Paudex, Switzerland, represented by Bugnion S.A., Switzerland.
The Respondent is Jin-Hak Yoo, Gwangju, Republic of Korea, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2008. On August 8, 2008, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On August 12, 2008, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the 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 August 13, 2008. 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 August 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2008. The Response was filed with the Center on September 5, 2008.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 19, 2008. 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 September 29, 2008, the Panel issued Panel Order No. 1. On October 6, 2007, the Complainant submitted a reply to Panel Order No. 1. On October 9, 2008, the Respondent submitted a reply to Panel Order No. 1. 4. Factual Background
The Complainant produces CopyTrans, a back-up and recovery tool for iPods and iPhones. The Complainant has a Swiss-registered trademark (No. 562442) for COPYTRANS (with design element), with a registration filing date of April 20, 2007, covering classes 9 (including computer programs), 38 (including telecommunications services) and 42 (including consultations in the field of computer software). The Respondent is an individual. The Complainant has used the mark “CopyTrans” since April 2007 and owns trademarks and domain names incorporating the mark. On the record before the Panel, it would seem that the Respondent is not the original registrant of the disputed domain name. Rather, it seems, he became the registrant of the disputed domain name on or around August 15, 2007, which is deemed to be the registration date1. 5. Parties' Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Internet users could easily assume wrongly that the products and services offered under the website at the disputed domain name constitute accessory services of the Complainant. Thus, the domain name implies an affiliation with the Complainant that does not exist.
The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has never been, and is not currently, commonly known under the disputed domain name.
The Respondent is not using the disputed domain name is connection with any bona fide offering of products and services. On the contrary, the site accessible under the contested domain name is a “parking site”, containing pay-per-click commercial hypertext links. Clicking on any of the links automatically redirects the user to various sponsored links and to advertiser's websites, generating money for their holder on the “pay-per-click” model.
The domain name was registered and is being used in bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name. The Respondent is the registered owner of more than 457 domain names, which constitutes further evidence of bad faith registration. B. Respondent
The disputed domain name was registered prior to the commercial use of the mark by the Complainant. Koreans did not use the Complainant's software due to technical issues. The Complainant has no trademark in Korea, and the Respondent is in the process of registering the mark in Korea. 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, the possibility of delay in the proceeding in the event translations are required, and other relevant factors.
Although the registration agreement for the disputed domain name was made in the Korean language, the domain name is entirely in English, suggesting that the Respondent may have sufficient ability to communicate in the English language. The Panel further notes that the Center has conducted its procedural communications with the parties in both Korean and English and that the Respondent was given the opportunity to submit a Response in either Korean or English.
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 (as he has been) to submit any documents or assertions in Korean. See Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679. See also Fissler GmbH v. Chin Jang Ho,WIPO Case No. D2008-1002. 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 “[i]f 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 it considers appropriate (see Paragraph 14(b) of the Rules; see also 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 disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
The Complainant has registered the CopyTrans mark and is the registrant of domain names containing the name “CopyTrans”. The domain name wholly incorporates the Complainant's distinctive trademark. Therefore, the Panel finds that the domain name is confusingly similar to the Complainant's trademark 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 decisions of WIPO panels have held that “once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents 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 mark; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; and the Panel further notes that there is no evidence that the Respondent has ever been commonly known by the domain name. The Panel's view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent's Response has been reviewed by the Panel, and the Panel finds the Respondent has failed to persuasively assert such rights or to invoke circumstances that could have demonstrated any rights or legitimate interests in the disputed 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(a)(ii) 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), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. The Panel notes that the general rule established by panels is that a subsequent acquirer of a domain name is held to have “registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights (see Ticketmaster Corporation v. Global Access,WIPO Case No. D2007-1921; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062 (“[T]he transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”). At the time that the Respondent became the registrant of the disputed domain name, as indicated by the record available to the Panel2, the Respondent could have exercised due diligence, at which time it should reasonably have discovered the Complainant's trademark rights. Bad faith can, in appropriate circumstances, also be inferred based on the fame of the Complainant's mark, such that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto (particularly, in view of the Complainant's use of its mark on the Internet).
The Panel also notes that the Respondent is, in using the domain name, forwarding Internet users to other websites. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holdings, Inc. d/b/a Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Case No. FA 93554).
The conduct described above falls squarely within Paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name 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.
Thomas P. Pinansky
Sole Panelist
Dated: October 16, 2008
1 See also footnote 2.
2 The Panel notes that the original registrant of the disputed domain name, as previously indicated in the provided WhoIs record, appears to have been one “Charles Yu”. The domain name was subsequently registered in the name of “Jin-Hak Ryu”. The current registrant of the disputed domain name is listed in the WhoIs and has been confirmed by the registrar as “Jin-Hak Yoo”. The Panel does not exclude the possibility that one or more of these listed individuals may in some way be related; nor does the Panel exclude the possibility that Jin-Hak Ryu and Jin-Hak Yoo might for example be the same person (as in Korean, Ryu andYoo could conceivably be used interchangeably as a family name). However, on the present record, this is speculative - and if it were the case, the Panel would have expected the Respondent to point it out in one of the two opportunities that the Respondent has had in the course of these proceedings to make a submission. The Respondent has not done so, and the Panel finds no compelling evidence before it in these expedited proceedings to establish the above speculation as fact. However, the Panel has proceeded on the basis that the date of registration of the domain name occurred on the date on which “Jin Hak-Ryu” appears to have first acquired the domain name, being on or around August 15, 2007.
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