WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Su Kutusu İçme Suyu Teknolojileri Pazarlama Sanayi ve Ticaret A.Ş. v. Nyunhwa Jung Case No. D2009-0976 1. The Parties
Complainant is Su Kutusu İçme Suyu Teknolojileri Pazarlama Sanayi ve Ticaret A.Ş., Ankara, Turkey, represented by Batuhan Yilmaz, Turkey.
Respondent is Nyunhwa Jung, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2009. On July 21, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On July 22, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact. 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 July 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 17, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 19, 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 word and design trademark and service mark WATERBOX at the Turkish Patent Institute, registration number 2001 13051, dated April 7, 2001, in international classes (ICs) 1 and 11, covering, inter alia, water treatment systems, and registration number 2001 21343, dated October 18, 2001, in ICs 11, 35, 37 and 40. (Complainant also uses the registered trademark SUKUTUSU, which means WATERBOX in the Turkish language, in Turkey.)
Complainant manufactures and distributes drinking water purification systems based on the “reverse osmosis” process. Complainant is based in Turkey and has 28 regional offices in that country, employing approximately 760 people. Complainant is the market leader in the water filtration field in Turkey, is among the leading manufacturers of drinking water systems in the world, including a strong market presence in Europe, Asia and North America. Complainant operates a commercial Internet website at “www..tr”.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to the Registrar's verification, the record of registration of the disputed domain name was created on January 30, 2003.
Respondent is using the disputed domain name to direct Internet users to a “link farm” parking page provided by Sedo Domain Parking. That parking page includes a number of “sponsored listings”, including a substantial number of listings of businesses competitive with that of Complainant (such as Water Point, Bottled Water Equipment, and Water Processing, each with associated website links). In addition, the first heading on the parking page following the disputed domain name “” states “This domain may be for sale by its owner!”. There is a box on the parking page headed “BUY THIS DOMAlN” with a link for further information.
Respondent previously used the disputed domain name to direct Internet users to a similar “link farm” provided by T which, in addition to various links, included the heading “This domain is for sale!”. Clicking through on that link directed the user to a webpage stating “This Domain is for Sale by Auction”, and indicating that “Anybody can bid from US $3500 up to US $5500 for this domain, the highest bidder will get this domain” and “if anybody reaches to US $5500, this auction will be automatically closed and the domain name will be transferred...”. In November 2007, the opening bid price was raised to €3900.
In mid-2005 Complainant contacted Respondent's representative expressing interest in purchasing the disputed domain name. On August 31, 2005, Complainant indicated that it would be willing to pay $750 for the disputed domain name, which offer was rejected by Respondent. Complainant thereafter offered to pay US$3,500 (or the opening auction price). However, following Complainant's registration of , it withdrew that offer (which at that stage Respondent appeared willing to accept). On November 24, 2008, Complainant offer to purchase the disputed domain name for US$1,500, and Respondent countered with an offer to sell it for €5900.
Respondent has been the complained-against party in a number of prior disputes under the Policy, including Mr. Donning Eric v. Mr. Nyunhwa Jung,WIPO Case No. D2003-0689; Associació Docent MONLOU v. Nyunhwa Jung,WIPO Case No. D2006-0957; Nike Inc. v. LineCom c/oNyunhwa Jung, NAF Case No. FA0601000635471, and; DLJ Long Term Investment Corporation v. Nyunhwa Jung, NAF Case No. FA0307000167960. In each of the referenced disputes, Respondent was determined to have engaged in abusive domain name registration and use, and in each case transfer of the disputed domain name was ordered by the panel.
The Registration Agreement in effect between Respondent and OnlineNic, Inc. d/b/a China-C 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 is the owner of trademark rights in WATERBOX and that the disputed domain name, , is identical to its registered trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent has not been authorized by it to use its trademark, that Respondent has not been commonly known by the disputed domain name, that Respondent offers no goods or services under the WATERBOX mark, and that Respondent has offered to sell the disputed domain name by auction on an Internet website, evidencing a lack of rights or legitimate interests.
Complainant contends that Respondent registered and has used the disputed domain name in bad faith. Complainant indicates that Respondent offered to sell the disputed domain name at auction for a price substantially in excess of its out-of-pocket expenses in connection with the disputed domain name. Complainant indicates that Respondent has engaged in a practice of registering the marks of third parties to prevent them from registering those domain names.
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 the Notification of Complaint and Commencement of Administrative Proceeding to Respondent by email, fax and express courier to the address provided in its record of registration. Despite efforts by the express courier, it was unable to complete delivery to the physical address provided. The fax transmission also failed. However, the records of the Center do not indicate any unusual technical difficulties with respect to transmission of e-mail.
The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position. A. Identical or Confusingly Similar
Complainant has provided substantial evidence of ownership of rights in the trademark and service mark WATERBOX based on registration at the Turkish Patent Institute and use in commerce in Turkey (and other countries) (see Factual Background supra). The Panel determines that Complainant has rights in the trademark and service mark WATERBOX.
The disputed domain name, , directly incorporates the trademark of Complainant, adding only the generic top-level domain identifier (gTLD) “.com”. For purposes of the Policy, the disputed domain name is identical to Complainant's trademark.
Complainant has established rights in a trademark and that Respondent has registered the disputed domain name identical to that trademark. 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 WATERBOX trademark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
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 competitive with those of Complainant (as well as to unrelated goods and services). 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 merely taking advantage of the goodwill associated with Complainant's mark to offer goods and services of third parties, including competitors of Complainant. The only evident purpose for using Complainant's trademark is to draw Internet users to Respondent's website. This does not constitute 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; Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881, and; TechnoMarine and TechnoMarine SA v. Private,WIPO Case No. D2008-1186.
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.
Respondent has further used the disputed domain name identical to Complainant's trademark to offer the disputed domain name for sale by auction. There is nothing per se wrongful in offering to sell a domain name. However, in that case Respondent's offer to sell the disputed domain name identical to Complainant's trademark does not establish rights or legitimate interests in the domain name.
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
Paragraph 4(b) of 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 “(i) circumstances indicating that [the respondent] ha[s] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name”; “(ii) [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 (iv) “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”.
Respondent registered the Complainant's trademark in the disputed domain name, and has offered to sell it to Complainant (following advertisement at public Internet auction) at a price well in excess of any reasonable expenses directly associated with the domain name. Respondent has offered no plausible good faith explanation for registering the disputed domain name. The Panel determines that Respondent registered the disputed domain name with the bad faith intention to sell it within the meaning of Paragraph 4(b)(i) of the Policy.
Respondent has on several previous occasions been determined to have registered and used the trademarks of third parties in bad faith under the Policy (see Factual Background, supra). This indicates 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.
Furthermore, Respondent has used the disputed domain name, which is identical 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 is presumably receiving some form of direct or indirect compensation for click-throughs to third party competitors of Complainant listed on its “link farm” parking page. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith 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: September 1, 2009
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