WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Symantec Corp. v. James Kim Case No. D2008-1990 1. The Parties
The complainant is Symantec Corporation of Cupertino, California, United States of America, represented by Fenwick & West LLP, United States of America (“Complainant”).
The respondent is James Kim of Seoul, Republic of Korea (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (“Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2008. On December 29, 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. On January 7, 2009, 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.
On January 7, 2009, the Center notified the parties of the Center's procedural rules relevant to the language of the proceeding. On January 7, 2009, the Complainant has submitted a request that English be the language of the proceeding, to which the Respondent has not replied. On January 16, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 6, 2009.
The Center appointed Chunghwan Choi as the sole panelist in this matter on February 16, 2009. 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
The Complainant, Symantec Corp. is one of the global leaders in providing security, storage, and systems management solutions to help businesses and consumers secure and manage data and information. One of the Complainant's products is its family of NORTON software and services used to detect and remove viruses, spyware, adware, and other potential security risks, and to back up and recover data. The Complainant has been using the NORTON mark in connection with its software products since 1982, and since then has expended significant resources in promoting and advertising its NORTON-branded products and services.
One of the Complainant's NORTON products and services is its NORTON INTERNET SECURITY software, which the Complainant has been using since September 1999 in connection with an Internet security suite that protects against viruses, spam, and malware, and allows users to set parent controls, among other things. The NORTON INTERNET SECURITY software has been recognized as the leading Internet security software among others by Internet magazines.
The Complainant also owns a United States (“U.S.”) trademark registration for NORTON INTERNET SECURITY under Registration No. 3,314,016. Additionally, the Complainant owns a number of trademark applications and registrations worldwide for NORTON and other NORTON-based marks.
The Domain Name has been used for a website offering links to third party websites that offer Internet security products and other antivirus products and services. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical to the mark NORTON INTERNET SECURITY and confusingly similar to the mark NORTON, which are the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondent's use of the Domain Name on the website featuring links to third party websites that offer Internet security products and other antivirus products and services directly competing with the Complainant's NORTON INTERNET SECURITY software and its family of NORTON products services proves the Respondent's bad faith registration and use of the Domain Name.
The Complainant requests that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Language of Proceeding
The registrar confirmed that the language of the registration agreement for the Domain Name is Korean. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant initially filed its Complaint in English. On January 7, 2009, the Center issued a notice regarding the applicable language of proceeding. The Complainant then submitted a request that English be the language of the proceeding, to which the Respondent has not replied.
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has discretion to decide otherwise, having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties, taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun,WIPO Case No. D2004-0398.
The Complainant, upon being notified by the Center that the language of the registration agreement is Korean, has submitted a request that English be the language of the proceeding, to which the Respondent has not replied. Thus, given the provided submissions and circumstances of this case, the Center's typical practice would be to accept the Complaint as filed in English, accept a Response in either English or Korean, and appoint a panel familiar with the languages mentioned above, if available, with discretion as to any final determination as to the language of proceeding a matter for the panel on appointment.
In light of the fact that the Respondent has been notified of the Complaint in Korean as well as English , that the Domain Name and the website at the Domain Name are in English, and that the Respondent has chosen not to participate in the proceeding, the Panel is satisfied that, inter alia, taking these circumstances into consideration, the Panel may render its decision in English and that this may be considered fair to both parties in the circumstances of this case. Review of UDRP Elements
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must establish that each of the three following elements is satisfied:
1. the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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.
These requirements will be considered in turn. A. Identical or Confusingly Similar to a Mark in which the Complainant has Rights
The Panel recognizes that the Complainant is the owner of registered trademark NORTON INTERNET SECURITY. The Complainant has been using the above mark since September 1999 in connection with an Internet security suite that protects against viruses, spam, and malware, and allows users to set parent controls, among other things. The Panel is satisfied on the evidence that the Complainant has rights in the mark NORTON INTERNET SECURITY.
The Panel further finds that the Domain Name is confusingly similar to the marks NORTON and NORTON INTERNET SECURITY. Apart from the generic top level domain, the Domain Name consists of the Complainant's trademark NORTON INTERNET SECURITY. In these circumstances, Internet users finding the Domain Name are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the Domain Name.
The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests
The Respondent is neither an authorized dealer nor a distributor of NORTON products or services, and it has not been licensed or otherwise been given permission to use the name and marks NORTON or NORTON INTERNET SECURITY by the Complainant. The Panel is satisfied by the Complainant's unchallenged evidence that the Domain Name has been used for a website offering links to third party websites that offer Internet security products and other antivirus products and services directly competing with the Complainant's NORTON INTERNET SECURITY software and its family of NORTON products and services.
The Respondent does not use the Domain Name in connection with a bona fide offering of goods and services within the meaning of the Policy, paragraph 4(c)(i) because the Respondent merely provides links to third party websites. Based on the case file, the Panel is of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
The trademark NORTON is widely known. It has been used world wide for many years and is one of the widely known trademarks for computer and Internet security products. Therefore, in the Panel's view, the Respondent most likely knew of the trademark prior to registering the Domain Name. This finding of the Panel is also evidenced by the fact that the Respondent has utilized the Domain Name for a website featuring links to third party websites that offer Internet security products and other antivirus products and services. The Panel believes that the Respondent intends by using the Domain Name to take unfair advantage of the recognition associated with the Complainant's NORTON and NORTON INTERNET SECURITY marks by diverting Internet users from Complainant's official website to the Respondent's parked website, where the Respondent may receive pay-per-click commissions.
The Panel concludes that the Domain Name was registered and is being 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.
Chunghwan Choi
Panelist
Dated: March 18, 2009
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