WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Total SA v. Yang Kyung Won Case No. D2009-1483 1. The Parties
The Complainant is Total SA of La Défense, France, internally represented.
The Respondent is Yang Kyung Won of Sung nam, Republic of Korea, represented by Minkyu Woo, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2009. On November 3, 2009, 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 disputed domain name. On November 4, 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 November 4, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On November 5, 2009, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not respond to the Center's Language of Proceeding notification. On November 13, 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 and also advised the parties that in accordance with paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel has the authority to determine the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2009. The Response was filed with the Center on December 2, 2009.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 7, 2010. 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 the owner of various trademarks including the brand TOTAL, and notably AIR TOTAL to designate several products and services, and among other oils.
AIR TOTAL trademarks have been registered in many countries around the world as set forth in the exhibits to the Complaint. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complaint's AIR TOTAL trademark. The denomination AIR TOTAL is entirely included in the domain name.
The Respondent has no rights or legitimate interests in respect of the domain name.
The domain name has been registered for the sole purpose of selling the domain name, to the owner of the trademark or to a competitor.
The domain name is registered and is being used in bad faith.
The Respondent is taking advantage of the AIR TOTAL trademark in order to divert unsuspecting Internet users to its website for its own interest. B. Respondent
The Complainant's trademark is not as prominent as those of NIKE or MICROSOFT.
The creation of AIR TOTAL merely consisted of the joining of two common nouns for the aims of creating a domain name to serve as a portal for the sale of airfares and was purchased and paid for fairly.
The use of a brand, trademark or service already registered was not deliberate nor did the Respondent do so with the purpose of establishing commercial competition with the Complainant or to interfere with the Complainant's business activities by causing confusion in attracting users to its product, website and other online services for commercial benefit. 6. Discussion and Findings A. Selection of Language
The Complaint was filed in the English 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 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 the present case, although the registration agreement for the disputed domain name was made in the Korean language, it is also apparent from the written communications exchanged between the parties that the Respondent has sufficient ability communicating in the English language. It its also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean and indicated it would (and has) appointed a panel familiar with both English and Korean.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. 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 proceeding in this case. See Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679. 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 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 it considers appropriate (see paragraph 14(b) of the Rules; see 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; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
The Complainant has registered the AIR TOTAL mark in various jurisdictions around the world. The disputed domain name wholly incorporates the Complainant's distinctive trademark and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a)(i) of the Policy).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark 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 interest in the disputed domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes a 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 marks; 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 there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel's view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
In the Panel's view, the Response 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 domain name pursuant to paragraph 4(c) 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 of the Policy), it is a well-established principle that when someone registers a domain name, he or she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. In the circumstances of the case at issue, the Panel reasonably finds that since the Complainant's mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name or thereafter, was not aware that he was infringing the Complainant's trademark.
Bad faith can 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 widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant's registrations known to the Respondent.
The Respondent notes that the Complainant's mark AIR TOTAL may not be as prominent as for example those of NIKE or MICROSOFT. Be that as it may, the real question for the Panel here is whether the evidence supports a conclusion that in registering and using the disputed domain name, the Respondent knew of and was intending to trade off the Complainant's mark. The Panel notes in this regard that the AIR TOTAL mark is one that is widely known, that the disputed domain name is identical to that mark, and that it is being (or has been) used to offer tickets for sale in an area of business connected to that of the Complainant (The Complainant is a major supplier of aviation jet fuel). These factors seem to the Panel to be more than mere coincidence.
In addition, the Panel notes that the Respondent requested USD 1,300 to settle the dispute, which is an amount greater than the out-of-pocket costs of registering and establishing the disputed domain name.
The Panel finds that the conduct described above falls within paragraph 4(b) of the Policy and accordingly, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent. 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: February 1, 2010
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