WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nilfisk-Advance A/S v. CICO KOREA Case No. D2009-1791 1. The Parties
The Complainant is Nilfisk-Advance A/S of Brøndby, Denmark, internally represented.
The Respondent is CICO KOREA of Seoul, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names and are registered with Gabia, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2009. On December 29, 2009, the Center transmitted by email to Gabia, Inc. a request for registrar verification in connection with the disputed domain names. On December 30, 2009, Gabia, Inc. transmitted by email to the Center its verification response, confirming that the 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 January 5, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. On January 7, 2010, 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 January 13, 2010, 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.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 4, 2010.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on February 12, 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, founded in 1910 in Denmark, is a worldwide manufacturer of household, commercial, and professional cleaning machines, with products ranging from household vacuum cleaners, scrubbers/dryers to road sweepers. The Complainant has approximately 5,000 employees, and has registered sales companies operating in over 30 countries throughout the world, including the Republic of Korea (“Korea”). The Complainant owns approximately 380 trademark registrations for or incorporating NILFISK in the various countries where it conducts business, again including a registration in Korea. The first NILFISK trademark registration was obtained in Denmark in 1910, and the trademark registration in Korea was obtained in 1986.
Based on content displayed at the disputed domain names, the Respondent appears to be a Korean entity engaged primarily in the sale of vacuum cleaners and related products. The disputed domain names were registered on January 20, 2003. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to marks in which the Complainant has rights. More specifically, the Complainant asserts that it has registrations in various countries throughout the world, including Korea. These registrations all primarily consist of the text “Nilfisk”.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain names were registered and used in bad faith. First, the Complainant notes that the Respondent is engaged in a business in the same industry, and that the Complainant's products were manufactured in Korea from 2001 to 2008. Further, the Complainant's affiliate Nilfisk Korea Co., Ltd. existed from June 29, 1990 to 2004, and from March 2006 to the present, the Complainant has been active in Korea through its local sales company – Nilfisk-Advance Korea Co., Ltd. The Complainant asserts that the Respondent must therefore have known of the Complainant and its trademark rights when the disputed domain names were registered, and certainly used them in bad faith since the disputed domain names were used to market and sell competing products. B. Respondent
The Respondent chose to not participate in this proceeding and did not reply to the Complainant's contentions. 6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
Paragraph 11 (a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the default language of the proceeding is Korean, and the Complainant submitted arguments as to why English is more appropriate, citing a number of factors.
First, the Panel notes that English is not the mother language of either party. Given the fact that the Complainant is Danish and the Respondent is Korean, English would appear to be the fairest neutral language for rendering this decision. Besides, both parties were given the opportunity to submit arguments in the language of their preference, and the language in which to render the decision was reserved for the Panel. Furthermore, the Panel notes that all of the Center's communications have been transmitted to the parties in both English and Korean. Given that the Respondent has chosen to not participate in this proceeding, the Panel sees no justification for rendering the decision in Korean in view of the overall circumstances.
Therefore, the Panel finds it proper and fair to render this decision in English. A. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds many trademark registrations throughout the world, including Korea, that consist solely or primarily of the term “Nilfisk”. The disputed domain name entirely incorporates the Respondent's trademark, and simply adds the additional portion “korea”. Since “korea” is a geographic designation, it may be ignored during the comparison. Accordingly, can be viewed as confusingly similar to the Complainant's trademark. With respect to the disputed domain name , the only additional portion is “cf”. There is no immediately apparent meaning in “cf”, and so it does little to dispel confusion since the primary portion “nilfisk” is readily recognizable within the disputed domain name. Further, the Complainant has trademark registrations for NILFISK CFM, and in this regard, can be viewed as nearly identical to that trademark.
For the reasons mentioned above, the Panel finds that the first element has been established. B. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie finding that the Respondent has no rights or legitimate interests in the disputed domain names. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the dispute domain names. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions. However, the Respondent in this case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element has been established. C. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith on the part of the Respondent in this case. First, the disputed domain names wholly incorporate the Complainant's trademark NILFISK. As “nilfisk” has no apparent meaning in Korean, English, or any other language to the Panel's knowledge, its adoption by the Respondent in the disputed domain names is highly suspicious in the first place. Adding to the circumstances, the Complainant conducted business and even manufactured in Korea for a long period of time and well before the disputed domain names were registered. And to punctuate the inference of bad faith with an exclamation point, the Respondent used the disputed domain names to market and sell various vacuum cleaner products that directly compete with products of the Complainant. Given this set of circumstances, there is little doubt that the Respondent registered and used the dispute domain names in bad faith.
For the reasons given above, it is clear that this third and final element has been established. 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 names and be transferred to the Complainant.
Ik-Hyun Seo
Sole Panelist
Dated: March 16, 2010
Full & Egal Universal Law Academy