WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ets Leobert, SARL v. Jeonggon Seo Case No. D2009-0004 1. The Parties
The Complainant is Ets Leobert, SARL of Paris, France.
The Respondent is Jeonggon Seo of Changsunggun, 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 January 6, 2009. On January 7, 2009, the Center transmitted by email to HANGANG Systems Inc. dba D a request for registrar verification in connection with the disputed domain name. On January 14, 2009, 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. On January 19, 2009, the Center notified the parties of the Center's procedural rules relevant to the language of the proceeding. Having filed the Complaint in French, the Complainant submitted a request that English be the language of the proceeding, to which the Respondent replied, indicating an objection. On February 23, 2009, the Complainant submitted a translation of the Complaint in English. On February 24, 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 proceeding commenced on February 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2009.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 31, 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 is a company registered in France and has used “Les établissements LEOBERT” as its company name and trading name since 1975.
Etablissements LEOBERT's business activity is trading in general supplies for furniture, tapestry and bedding.
The Complainant has sold supplies for furnishings and notably tapestry in its Paris shop for more than 30 years.
The Complainant registered the and domain names with the registrar BOTTIN ENTREPRISES on November 30, 1999. 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.
The Complainant holds the rights over the Etablissements LEOBERT name. The Etablissements LEOBERT company has existed since 1975 under this name.
The Complainant has acquired rights over the ETABLISSEMENTS LEOBERT trademark resulting from its continual use of the name for more than 30 years.
ETABLISSEMENTS LEOBERT is a trademark connected with the marketing of furnishing and tapestry supplies, and must be considered to be a trademark under general law from commercial exploitation over which the Complainant has acquired rights through use.
The web site at the disputed domain name which belonged to the Complainant is now registered by the Respondent.
This site was operated by the Complainant. The disputed domain name is the same domain name as previously used by the Complainant.
The disputed domain name registered by the Respondent is identical, and therefore may be confused with the LEOBERT trademark which belongs to Etablissements LEOBERT.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no right over the LEOBERT mark which bears no resemblance to its own name and which does not correspond to its business activity. The Respondent has never used the LEOBERT mark to offer products and services.
The disputed domain name was registered and is being used in bad faith.
The Respondent is using the disputed domain name in bad faith, as it only uses it to link to other sites with the same activity as the Complainant and is offering to sell this domain name to the highest bidder.
The disputed domain name was registered so that it could be sold, and the Respondent planned to sell it to the Complainant, which although it used this domain name, has lost the ownership of it.
This is common practice by the Respondent. Previous UDRP cases show that the Respondent has registered disputed domain names in bad faith, which have been transferred to other complainants. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of Proceedings
The Complaint was originally prepared in the French language and an English language translation of the Complaint has also been submitted. There has been no response in any language. It is noted that the language of the registration agreement for the disputed domain name is Korean.
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, inter alia, 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 this case, the Complainant has submitted a request that English be the language of the proceeding, on the grounds that although the Respondent claims to be incapable of understanding English, it has communicated in English, the Respondent's website at the disputed domain name contains English, and that the Respondent has participated in prior UDRP proceedings in English. The Panel also notes that the Respondent sent emails to the Complainant, demonstrating reasonable proficiency in English.
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 English shall be the language of administrative proceeding in this case. 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 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;
(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 registered the disputed domain name, which corresponded to the trading name it had since 1975 and in which it has demonstrated trademark rights through continued use for the purposes of a determination regarding the first element of the Policy, and in 2006 when the domain name was deleted.
The disputed domain name is identical to the Complainant's trade name and mark.
Therefore, the Panel finds that the disputed domain name is identical to the Complainant's mark 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 disputed domain name. In connection with the burden of proof, several decisions of UDRP panels have held that “[o]nce a Complainant establishes 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 disputed domain name; the Panel further notes that the Respondent has not, and has never 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 has not submitted a response to the Complainant's contentions. Therefore, it has failed to invoke any 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 rights or legitimate interests in the disputed 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. In the case at issue, the Panel reasonably finds that since the Complainant's marks are widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name or thereafter, was not aware that it was infringing the Complainant's marks.
Under the appropriate circumstances, bad faith can also be inferred based on the fame of the Complainant's marks, 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 in light of the present circumstances finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant.
The Respondent is using the disputed domain name to link to other sites with the same business activity as the Complainant. The fact that some of the commercial websites linked to the Respondent's website were those of the Complainant's competitors is a clear indication of bad faith use (see DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc,WIPO Case No. D2007-1424). In addition, the Respondent is offering to sell the domain name to the highest bidder. It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith. adidas-Saloman AG v. Vincent Stipo,WIPO Case No. D2001-0372. The Panel finds, in the absence of rebuttal by the Respondent that the Complainant has adequately supported the inference that the Respondent's actions and correspondence satisfy the “intent to sell” requirement of paragraph 4(b)(i).
The Panel also notes that the Respondent previously has been found to have registered and used domain names that incorporated at least five marks of others in bad faith, all of which have been transferred to the respective complainants.
The conduct described above falls squarely within paragraph 4(a)(iii) of the Policy, and accordingly the Panel concludes 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: April 8, 2009
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