WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Biotechnology and Biological Sciences Research Council v. Kim Jung Hak Case No. D2009-1583 1. The Parties
Complainant is Biotechnology and Biological Sciences Research Council of Swindon, Wiltshire, United Kingdom of Great Britain and Northern Ireland, represented by Manches LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Kim Jung Hak of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Cydentity, Inc. dba C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2009. On December 1, 4, and 7, 2009, the Center transmitted by email to Ever Ready Names, Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2009, A on behalf of Ever Ready Names, Inc. transmitted by email to the Center its verification response, but the response was incomplete. On December 8 and 10, 2009, the Center requested A and Ever Ready Names, Inc. to send the Center a full verification response. On December 10, 2009, A on behalf of Ever Ready Names, Inc. transmitted by email to the Center its verification response, confirming that the person who was identified as Respondent is listed as the registrant and providing the contact details. On December 14, 2009, the Center transmitted by email to A and Ever Ready Names, Inc. a query as to whether Cydentity, Inc. dba C is indeed the registrar of the Disputed Domain Name as indicated in the InterNIC WhoIs database. A on behalf of Ever Ready Names, Inc. called the Center and confirmed that the Disputed Domain Name was transferred to Cydentity, Inc. dba C.
On December 14, 2009, the Center transmitted by email to Cydentity, Inc. dba C a request for registrar verification in connection with the Disputed Domain Name. On December 15, 2009, Cydentity, Inc. dba C transmitted by email to the Center its verification response, providing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 16, 2009 and a further amendment to the Complaint on December 18, 2009.
On December 15, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On December 16, 2009, Complainant submitted a request that English be the language of the proceeding. Respondent sent the Center several emails, stating that he/she does not understand English and requesting that Korean be the language of the proceeding. On December 29, 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, the Panel has the authority to determine the language of the proceeding.
The Center verified that the Complaint together with the amendments to 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 proceeding commenced on December 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 19, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 26, 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
Complainant, Biotechnology and Biological Sciences Research Council, better known by its acronym “BBSRC,” is a research council funded from the United Kingdom Government's Department for Business, Innovation and Skills. Established in 1994, Complainant's official role is to promote the understanding and exploitation of biological systems, to advance knowledge and technology and provide trained scientists and engineers to the agriculture, bio-processing, chemical, food, healthcare, pharmaceutical and other biotechnological-related industries. Complainant is responsible for generating public awareness of biotechnology, including the communication of research outcomes, encouragement of public engagement and dissemination of knowledge.
Complainant operates on an annual grant of £450 million and supports approximately 1600 scientists and 2000 research students in various institutions throughout the United Kingdom. In fulfilling its mission, Complainant works closely with such international concerns as GlaxoSmithKline, Cadbury, Coca-Cola, Unilever, Nestle and BP. Complainant conducts activities and has research partners throughout Europe as well as People's Republic of China, India, Japan and the United States and operates in all such territories under the acronym BBSRC. Since 1997, Complainant has maintained a website at “”, and although it has not applied for trademark protection, it possesses unregistered trademark rights such that it may prevent others from using the sign BBSRC to pass off their goods or services as being, or being associated with, those of Complainant.
It appears that Respondent initially registered the Disputed Domain Name on May 20, 2009. Ever Ready Names, Inc., the Disputed Domain Name's registrar at the time the Complaint was filed with the Center, informed the Center on December 10, 2009 that it applied a registrar lock to the Disputed Domain Name. However, on December 8, 2009, it appears that the Disputed Domain Name was transferred to the current registrar Cydentity, Inc. dba C. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical to its unregistered trademark BBSRC except for the generic top level domain suffix “.com.” Complainant further contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that (i) it has not licensed or otherwise authorized Respondent to use Complainant's BBSRC trademark, (ii) Respondent has not (as an individual, business, or other organization) been commonly known by the Disputed Domain Name, and (iii) there is no evidence of Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, Complainant alleges that Respondent is using the Disputed Domain Name to resolve to a pay-per-click website containing links to third party commercial websites that relate to goods and services offered by Complainant.
Complainant alleges that the registration and use of the Disputed Domain Name to resolve to a pay-per-click website evidenced bad faith. Specifically, Complainant alleges that Respondent registered the Disputed Domain Name to exploit the “initial interest confusion” of Internet users looking for Complainant's website, who type in the confusingly similar Disputed Domain Name and are then exposed to commercial content for the benefit of Respondent. Complainant concludes that the Disputed Domain Name was thus registered to create a likelihood of confusion with Complainant's mark.
Complainant also alleges that due to the distinctiveness of its BBSRC mark, the letter sequence BBSRC has no possible connotation other than to reference Complainant. Thus, Complainant contends that Respondent likely registered the Disputed Domain Name to prevent Complainant from registering its mark in a corresponding domain name and, in all likelihood, to force a subsequent sale to Complainant as the owner of the mark for valuable consideration in excess of Respondent's costs directly related to the Disputed Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. Complainant, upon receiving the Language of Proceeding notification from the Center, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules. In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432.
Although the registration agreement for the Disputed Domain Name is in Korean, the registration agreement in effect when this dispute was initiated was in English. This is because the Disputed Domain Name was transferred from the prior registrant to Respondent shortly after the filing of the Complaint. In the Panel's view, the transfer of the Disputed Domain Name to the current Respondent was not consistent with the Policy, paragraph 8(a), which prohibits transfer of a domain name registration to another holder during the pendency of proceedings under the UDRP.
Although there is no bright line rule in the UDRP itself regarding what constitutes a “pending proceeding,” the process starts from the filing of the complaint rather than from the formal commencement of the proceedings. See PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM),WIPO Case No. D2006-0917; Imperial Chemical Industries, PLC v. Oxford University,WIPO Case No. D2001-0292. “To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules.” CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP,WIPO Case No. D2008-0687. “Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.” Id.
In this case, the change in the registrar from Eveready Names, Inc. to Cydentity, Inc. dba C together with the domain name transfer from the original registrant to the current Respondent Kim Jung Hak within mere days of the filing of this proceeding lead the Panel to conclude that these changes were made to avoid the domain name lock and frustrate Complainant's ability to proceed under the UDRP. Banco Itau S.A. v. Webmedia,WIPO Case No. D2008-0531. Accordingly, for purposes of this proceeding, it is within the Panel's right to treat the former registrant and the current registrant as one and the same. Humana Inc. v. CDN Properties Incorporated,WIPO Case No. D2008-1688.
The Panel notes that, apart from the Complaint, the Center's case-related communications have been made to the parties in both Korean and English. The Panel also notes that Respondent has failed to participate in the proceeding, and has been notified of its default. The transfer of the Disputed Domain Name by the original registrar in apparent violation of Rule 8 has prejudiced Complainant by delaying this administrative proceeding and causing Complainant to incur additional time and costs in amending the Complaint. In light of these circumstances, the Panel concludes that it will 1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English. Banco Itau S.A. v. Webmedia,WIPO Case No. D2008-0531. 6.2 Analysis of the Complaint
As Respondent has not filed a Response, 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.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. A. Identical or Confusingly Similar
Complainant has established unregistered trademark rights in the BBSRC trademark through its continuous use of this mark in the biotechnology field. There is no doubt that unregistered trademark or service mark rights may qualify as “rights” in a trademark or service mark for purposes of paragraph 4(a)(i) of the Policy. To establish such common law rights a complainant must show that the claimed mark has acquired a “secondary meaning” as an indicator of an association with complainant or a business operated by complainant. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784. Complainant's use of the BBSRC acronym as its company designator and as associated with its provision of services in commerce leaves no doubt in the Panel's mind that Complainant possesses the requisite interest in the BBSRC trademark for purposes of this proceeding. Blue Cross and Blue Shield Association v. Digi Real Estate Foundation/Domain Admin/NA NA,WIPO Case No. D2007-0022.
Complainant adopted and used the BBSRC trademark well prior to the date of registration of the Disputed Domain Name. The Disputed Domain Name consists of Complainant's BBSRC trademark plus the descriptive top level domain suffix “.com.” It is well established that the specific top level of a domain name such as “.com,” “.org,” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429). Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant's trademark and that Complainant has established the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in respect of the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest. See Croatia Airlines d.d., supra.
There is nothing in the record to suggest that Complainant has authorized Respondent to register or use the BBSRC trademark or any domain name reflecting that trademark. Nothing in the record suggests that Respondent has ever been commonly known by the Disputed Domain Name, and Respondent has not denied that it was familiar with Complainant, its services and the BBSRC mark before it registered the Disputed Domain Name. At the time the Complaint was filed, there was no evidence that Respondent was using or had made any demonstrable preparation to use the Disputed Domain Name. Accordingly, Respondent's use of the Disputed Domain Name falls outside the scope of paragraph 4(c)(i), (ii) and (iii) of the Policy.
In the Panel's view, this combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and thus offers nothing to legitimize its claim to the Disputed Domain Name. Indeed, having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described paragraph 4(c) of the Policy, or otherwise. The Panel therefore finds that Complainant has prevailed on this part of its Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) Respondent has registered the Dispute 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; or (iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. Accepting all facts alleged in the Complaint as true, the Panel finds that Complainant has shown registration and use in bad faith by Respondent.
Given the global nature of Complainant's business, and the distinctiveness of the BBSRC trademark, Respondent was quite likely aware of Complainant at the time it registered the Disputed Domain Name. In the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation, and its business.
The record is devoid of any evidence that Respondent conducts any legitimate commercial or noncommercial business activity under the name BBSRC. Based on Respondent's use of the Disputed Domain Name to sponsor pay-per-click listings for goods and services that are related to Complainant's business, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location of a product or service on Respondent's website or location.
Further, the Panel finds that the transfer of the Disputed Domain Name from the prior registrant (who may or may not be affiliated with the current registrant) constitutes cyberflight. See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 (defining cyberflight as “an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint,” and noting that panels have concluded that cyberflight is indicative of bad faith registration and use under paragraph 4(b)). In Fifth Third Bancorp, the original registrar and website were removed after learning of a complaint. The following month, the domain name was registered by a new owner and registrar. Id. As in Fifth Third Bancorp, the transfer of the Disputed Domain Name following the inception of this proceeding creates a strong inference of similar bad faith registration and use. The Panel concludes that the third element of the Policy has been satisfied. 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: February 9, 2010
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