WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AMPO, S. COOP v. C, Taeho Kim, Philippine Case No. D2009-0177 1. The Parties
Complainant is AMPO, S. COOP of Idiazabal, Spain, represented by Herrero & Asociados, S.L. Spain.
Respondent is C, Toronto, Canada, and Taeho Kim, Philippine, Gwangju, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009. On February 9, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 9 and February 12, 2009, Tucows Inc. transmitted by email to the Center its verification responses confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 5, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 20, 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
Complainant has registered the figurative Community Trade Mark (“CTM”) “AMPO” on the trademark register of the Office for Harmonization of the Internal Market (OHIM), registration No. 003975919, dated January 19, 2007, in International Classes
6 and 40, covering, inter alia, metal valves and their manufacture. Application for the aforesaid registration was submitted on August 6, 2004. Complainant registered its commercial name “AMPO, C. COOP.”, at the Spanish Patent and Trademark Office on July 30, 2002 (Expediente: N 236058).
Complainant was established in Spain in the 1960s as a cooperative organization. It has established itself as a specialized designer and producer of valves used in various types of equipment. Complainant promotes and sells its products in a substantial number of countries around the world.
According to the Registrar's verification responses, Respondent is registrant of the disputed domain name. The registrant listed in current public WHOIS database records is a privacy shield operated by the Registrar. In response to the Center's request for verification, the Registrar furnished the identity of the real party in interest. According to the Registrar's verification responses, the record of registration of the disputed domain name was created on July 11, 2001. The record of Registration for the disputed domain name was last updated on October 6, 2008.
According to an OnlineNIC WHOIS database printout furnished by Complainant, as of September 29, 2008, the registrant of the disputed domain name was “Michael Robert”. By e-mail dated September 29, 2008, Complainant attempted to contact Michael Robert in order to amicably resolve its interest in transfer of the disputed domain name. It appears that a transfer of ownership of the registration took place on or about October 6, 2008, shortly following Complainant's attempt to contact Michael Robert.
The disputed domain name is presently used to direct Internet users to an atypical “link farm”. The homepage identified by the disputed domain name lists various types of currency trading services. However, “clicking through” on the links to those services, the Internet user is taken to internal web pages that offer links to third-party providers of other types of goods and services, such as English language courses, travel services and assistance with credit card debt (as well as currency services). None of these links appear associated with Complainant. In addition, clicking through a headline banner asking the Internet user to “Meet our Doctors. Tell us your story!” directs the Internet user to a form which allows the user to make an offer to purchase the disputed domain name.
Complainant also attempted to contact Respondent by e-mail dated January 15, 2009, in an effort to amicably resolve this matter.
The Registration Agreement in effect between Respondent and Tucows Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a). 5. Parties' Contentions A. Complainant
Complainant alleges that it has rights in the trademark AMPO as evidenced by registration as a Community Trade Mark and as a commercial name, and by use in commerce in the European Union and other countries. Complainant contends that the disputed domain name is identical to its trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that it has not authorized Respondent to use its trademark, that Respondent has not been known by the disputed domain name, and that Respondent's use of the disputed domain name to direct Internet users to a link farm (including offer for sale) does not establish rights or legitimate interests.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant argues that the former registrant, Michael Robert, is the subject of several prior proceedings under the Policy in which he was found to have abusively registered and used the trademarks of third parties. Complainant further argues that Respondent's use of the disputed domain name to direct Internet users to a link farm offering goods and services of third parties for commercial gain seeks to confuse Internet users as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent's website. Complainant also contends that Respondent's offer to sell the disputed domain name indicates that it registered that name with the intent to sell it to a third party.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to administrative proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center transmitted notification of the Complaint and commencement of this proceeding, and the Complaint, to Respondent in Canada and Republic of Korea. A courier tracking report indicates that the Center's package was successfully delivered in Republic of Korea. (The Center transmitted by e-mail notification of the proceeding and the Complaint to Respondent in Republic of Korea.) The privacy shield operator in Canada (the Registrar) received the documentation. The Panel is satisfied that the Center took steps reasonably calculated by the Policy and Rules to provide notice of this proceeding to Respondent, and that Respondent had an adequate opportunity to respond. A. Identical or Confusingly Similar
Complainant has submitted evidence of registration of AMPO as a Community Trade Mark at the OHIM, and of use of the CTM in commerce in the European Union and elsewhere (see Factual Background, supra). Registration of AMPO as a CTM establishes a presumption of rights in the trademark, and Respondent has not challenged that presumption. The Panel determines that Complainant has rights in the AMPO trademark in the European Union.
The disputed domain name directly incorporates Complainant's trademark, adding only the gTLD “.com”. The disputed domain name is identical to Complainant's trademark for purposes of the Policy.
Complainant has established that it has rights in the AMPO trademark and that the disputed domain name is identical to that mark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its AMPO trademark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent's website initially appears as a portal to foreign exchange services. However, the portal's links direct Internet users to pages offering other types of goods and services, such as English language training. Respondent is using the disputed domain name and Complainant's trademark to direct Internet users to a web portal providing links to goods and services unconnected with those of Complainant. Respondent has no evident business purpose other than to act as a link farm. Respondent is acting solely as a conduit to third party offers of goods and services, and is presumably receiving some form of compensation for click-throughs to such third party offers. Respondent is taking advantage of the goodwill associated with Complainant's mark to offer goods and services of third parties. This does not constitute a use of the disputed domain name for a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881.
Respondent's use of the disputed domain name is plainly not “noncommercial”, and it is not “fair use” in any generally accepted sense of that term as a matter of trademark law. Respondent is not using Complainant's mark for comparative advertisement, or to fairly describe products or services, or for other generally accepted fair use purposes. Respondent is merely using Complainant's mark to misleadingly attract Internet users to its website.
The Panel determines Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating “[respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name”; and “[respondent has] 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 [respondent has] engaged in a pattern of such conduct, and; “by using the domain name, [respondent has] intentionally attempted 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 [respondent's] website or location or of a product or service on your website or location” (Policy, paragraphs 4(b)(i), (ii) and (iv)).
Complainant has provided substantial evidence that the prior registrant (Michael Robert) of the disputed domain name registered several domain names that are similar to trademarks of third parties (see Factual Background, supra). However, Respondent acquired the disputed domain name from Michael Robert before the initiation of this proceeding. The Panel will not attribute the acts of Michael Robert to Respondent. Thus, the Panel declines to find that Respondent has engaged in a pattern of registering the trademarks of third parties in order to prevent them from registering corresponding domain names, within the meaning of paragraph 4(b)(ii) of the Policy.
The initial registration of by Michael Robert took place before Complainant registered its trademark at OHIM. Because of that, Complainant might not have been able to establish that Michael Robert acted in bad faith in registering and using the domain name.
However, Respondent in Republic of Korea has not established an identity or continuity of interests with Michael Robert. The Panel treats Respondent's acquisition of the disputed domain name as a “new” registration. Respondent registered the disputed domain name identical to a mark in which Complainant had established rights, and Respondent used the disputed domain name. Respondent's actions were undertaken in bad faith within the meaning of the Policy.
Although Respondent's website initially appears as a portal to foreign exchange services, the portal links Internet users to pages offering other types of goods and services, such as English language training. Respondent does not appear to be otherwise engaged in a business. Respondent has used the disputed domain name, which is confusingly similar to Complainant's trademark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent's website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent's website. Respondent appears to have registered the disputed domain name with the intention of taking advantage of the goodwill established by Complainant in its trademark, and for no other evident reason than to profit from that use of Complainant's mark. Respondent is presumably receiving some form of compensation for click-throughs. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent has offered to sell the disputed domain name identical to Complainant's trademark to third parties. This suggests that Respondent registered the disputed domain name for that purpose.
The totality of the circumstances indicates that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy, by using it for the purpose of attracting Internet users to a link farm, and for no apparent legitimizing purpose, and by offering to sell the disputed domain name to third parties.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy. 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 Complainant.
Frederick M. Abbott
Sole Panelist
Dated: April 3, 2009
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