WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mars Petcare UK Limited v. Hansoo Bae Case No. D2009-1205 1. The Parties
Complainant is Mars Petcare UK Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Lovells LLP, London, United Kingdom of Great Britain and Northern Ireland.
Respondent is Hansoo Bae of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2009. On September 11, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2009, the Registrar transmitted by email to the Center its verification response, 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”).
On September 14, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On September 21, 2009, Complainant confirmed its request, as submitted in its Complaint, that English be the language of the proceeding. Respondent did not respond to the Center's Language of Proceeding notification. On September 24, 2009, the Center notified the parties of its preliminary decision to (1) accept the Complaint as filed in English; (2) accept a Response to the Complaint in either Korean or English; and (3) appoint a panel familiar with both languages mentioned above, if available.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on September 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 15, 2009.
The Center appointed Andrew J. Park as the sole panelist in this matter on October 27, 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 is one of the world's leading manufacturers of petcare products. It has been involved in the petcare market since 1935. Complainant's annual sales and advertising and promotional expenditures for the CATSAN products are significant.1
Complainant, either directly or through its affiliated companies, has registered CATSAN and related trademarks in numerous countries/jurisdictions , including in the United Kingdom; the European Union; and in the Republic of Korea, where it holds three (3) registrations, the earliest of which was registered on February 4, 1983.
Further, Complainant, either directly or through its local affiliated companies, has registered numerous CATSAN domain names, including ; ; ; ; and . Such domain names were registered after Complainant acquired its trademark rights in the CATSAN trademark.
The Domain Name was registered on June 25, 1996. The Domain Name resolves to a home page that advertises goods and services for commercial gain that either compete with, or are at least in the same or very similar markets as Complainant's CATSAN products. In particular, the home page contains sponsored listings for third party services including pet transportation. 5. Parties' Contentions A. Complainant
Complainant alleges that it has trademark rights, both registered and unregistered, in the well-known CATSAN mark and that Respondent's Domain Name is identical or confusingly similar to Complainant's CATSAN mark.
Complainant also alleges that Respondent has no rights or legitimate interests in respect of the Domain Name because (i) Respondent has no trademark rights to the CATSAN mark in the United Kingdom nor Community trademark rights; (ii) Respondent's use of the website to which the Domain Name is linked offers goods and services which either compete with, or are in the same or very similar markets to Complainant's CATSAN goods, and therefore, Respondent is trading off Complainant's reputation and goodwill; and (iii) Respondent must have been aware of Complainant's rights and interest in the Domain Name since CATSAN is one of the best known cat care brands, the CATSAN mark is registered in many countries, including in the Republic of Korea, where Respondent resides, and Complainant has registered a large number of CATSAN domain names which would have become apparent to Respondent upon conducting simple Internet searches.
Complainant further alleges that the Domain Name was registered and is being used in bad faith. In support of this allegation, Complainant argues, among other things, that since its CATSAN products are well-known, it would not be credible for Respondent to be unaware of Complainant and its CATSAN mark at the time it registered the Domain Name.
Complainant also alleges that Respondent registered the Domain Name with the intention of selling it to Complainant based on the argument that Respondent must have known that registering and hosting a webpage which trades onthe goodwill and reputation of the CATSAN brand, together with the aforementioned reasonable inference that Respondent was aware of Complainant's well-known CATSAN brand, would attract the attention of Complainant.
In addition, Complainant alleges that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating initial interest confusion and likelihood of confusion with Complainant's CATSAN mark as it relates to the source, sponsorship, affiliation, or endorsement of Respondent's website or a product/service on its website.
Finally, Complainant alleges that Respondent owns a number of other domain names consisting of third party brand names, including a global networking solutions provider, a hair shampoo, a hip-hop music group, an airline company, and a ski brand. Complainant claims that each of these websites feature products or services identical with or related to the relevant brand name. Complainant argues that Respondent's registration of these domain names and the use of them in connection with the goods or services that are the same or similar to those of the brand names is further evidence of Respondent's bad faith in registering the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. Accordingly, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. 6. Discussion and Findings A. Language of the Proceeding
Complainant filed its Complaint in the English language and requested that English be the language of the proceeding. On September 14, 2009, the Center issued a Language of Proceeding notification in both English and Korean that invited comment from the parties. Respondent did not respond. On September 24, 2009, the Center notified the parties of its preliminary decision to (1) accept the Complaint as filed in English; (2) accept a Response to the Complaint in either Korean or English; and (3) appoint a panel familiar with both languages mentioned above, if available.
Complainant, in support of its request, cited to paragraph 11 of the Rules as follows:
“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 general rule is that the parties are at liberty to agree on the language of the administrative proceeding.2 In the absence of such agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel reserves the right to decide otherwise on the basis of the circumstances of the case. The Panel's discretion must be exercised 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 decided by the Panel for the proceeding must not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. International Data Group, Inc. v. Lingjun,WIPO Case No. D2004-0398
Complainant argues that it is a United Kingdom company and is not familiar with the Korean language. Accordingly, if the language of the proceeding were to be in Korean, it would prejudice Complainant in terms of its ability to make, understand and respond to its or Respondent's case. On the other hand, Complainant raises various factors to suggest that Respondent is familiar with the English language, including the fact that the Domain Name uses Roman characters; Respondent's WhoIs details are in English characters; and the content at the Domain Name is in English.
Complainant also argues that the translation of the Complaint into Korean would force Complainant to incur substantial costs and that correspondence from the Center, Respondent and the Panel would require translations that would lead to delay in the proceeding.
Because the website to which theDomain Name resolves is in English, it is reasonable to assume that Respondent has a sufficient command of the language in order to conduct its business in English. Even assuming, arguendo, that Respondent does not have sufficient command of the English language, the record is clear that Respondent had ample opportunity to raise its objection on the choice of language issue, but failed to respond not only to this language issue, but also to the allegations contained in the Complaint, even when Respondent was advised of these matters in both English and in Korean, and was given the opportunity to respond in Korean.
Conducting this proceeding in the Korean language would cause substantial delay in the proceeding and result in Complainant incurring unnecessary costs. Therefore, in consideration of the above circumstances and in fairness to both parties, and in accordance with paragraph 11 of the Rules, the Panel hereby decides that English shall be the language of this proceeding. B. Analysis of the Complaint
In order to succeed in its claim, Complainant must demonstrate that each of the three (3) elements enumerated in paragraph 4(a)(i)-(iii) of the Policy have been satisfied. These three (3) elements are as follows: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interest in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. (1) Identical or Confusingly Similiar
The Panel finds that the Domain Name is identical to Complainant's registered CATSAN mark. Complainant has clearly established rights in its CATSAN mark through its long and continuous use and worldwide trademark registrations for this mark. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. (2) Rights or Legitimate Interests.
The Panel finds that Complainant has made a prima facie showing under paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes demonstrate cybersquatting activity that shifts the burden on Respondent to demonstrate that it has rights to or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
Specifically, the Panel finds that the website to which the Domain Name resolves offers goods and services which either compete with, or are in the same or similar markets to Complainant's CATSAN products. The Panel also finds that Complainant's CATSAN brand is well-known in the cat care market; Complainant owns many CATSAN and related trademark registrations worldwide; Complainant owns various domain name registrations that incorporate the CATSAN mark; CATSAN has no generic meaning; Complainant has never authorized Respondent to use the CATSAN mark; and there is no evidence that Respondent is commonly known or referred to as CATSAN.
Thus, it is reasonable to conclude that Respondent does not have any rights or legitimate interests in the Domain Name. Rather, the facts tend to suggest that Respondent registered and used the Domain Name merely to free-ride on the reputation and goodwill of Complainant's CATSAN mark. In fact, given the evidence supplied by Complainant, it is reasonable to conclude that Respondent was aware of Complainant's rights in and to the CATSAN mark and selected the Domain Name due to its similarity to Complainant's CATSAN trademark.
Respondent has not submitted a Response and, therefore, has failed to invoke any circumstances under paragraph 4(c) of the Policy that could have demonstrated any rights or legitimate interests in the Domain Name. As such, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. (3) Registered and Used in Bad Faith.
The Panel accepts as true Complainant's assertion that the trademark CATSAN is well-known in many countries. The Panel finds that collectively, the results of Internet searches, the existence of Complainant's CATSAN trademark registrations in the Republic of Korea, among other geographical locations, and Respondent's use of the website to which the Domain Name resolves make it unlikely that Respondent was unaware of Complainant and its CATSAN mark at the time it registered the Domain Name. Therefore, the Panel concurs with Complainant's argument that Respondent was aware of Complainant's trademark rights at the time of the registration of the Domain Name.
The Panel also finds that Respondent registered the Domain Name with the intention of selling it to Complainant based on the argument that Respondent must have known that registering and hosting a webpage which trades on the goodwill and reputation of the CATSAN brand, together with the aforementioned reasonable inference that Respondent was aware of Complainant's well-known CATSAN brand, would attract the attention of Complainant. In fact, the Panel notes that Respondent posted the Domain Name for sale. Based on the foregoing findings, the Panel concurs with Complainant that Respondent registered and is using the Domain Name in bad faith
The Panel further finds that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating initial interest confusion and, thus likelihood of confusion, with respect to Complainant's CATSAN mark.
Finally, the Panel finds that Respondent owns a number of other domain names consisting of third party brand names, including a global networking solutions provider, a hair shampoo, a hip-hop music group, an airline company, and a famous ski brand. Each of these websites feature products or services identical or related to the relevant brand name. Respondent's registration of these domain names and use of them in connection with the goods or services that are the same or similar to those of the brand names further evidences Respondent's bad faith registration and use of the Domain Name in that it evidences a pattern of conduct in violation of the UDRP.
Accordingly, the Panel concludes that Complainant has demonstrated Respondent's bad faith in the registration and use of the Domain Name. 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.
Andrew J. Park
Sole Panelist
Dated: November 10, 2009
1 Sales in western Europe (by net retail value) in 2008 alone were about 175 million euros while advertising and promotional expenditure for CATSAN products in 2008 in that same territory was over 5 million euros.
2 Although Complainant was unable to identify the Registration Agreement, the Panel notes that the Registration Agreement currently posted on the Registrar's website at is provided in both English and Korean.
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