The Complainant is The Knowland Group of United States of America (“United States”), represented by Cooley LLP, United States.
The Respondent is Trademark Managements of Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with INames Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2011. On June 15, 2011, the Center transmitted by email to INames Co., Ltd. a request for registrar verification in connection with the Disputed Domain Name. On June 16, 2011, INames Co., Ltd. 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 June 17, 2011, the Center issued a language of proceedings notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceedings on June 17, 2011, referring to the section of Language of Proceeding in the Complaint. On June 17 and 20, 2011, the Respondent sent emails to the Center requesting a translation of the Complaint to Korean. On June 28, 2011, 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 the administrative panel when appointed would have 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 proceedings commenced on June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Respondent sent informal communications by email to the Center on June 28 and 29, 2011.
The Center appointed Andrew J. Park, Ilhyung Lee, and Moonchul Chang as panelists in this matter on August 11, 2011. The Panel finds that it was properly constituted. Each member of 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 develops intuitive marketing products and services that streamline and support event and group sales in the hospitality industry. It provides business development software and services to hotels to help them generate, book, and manage new group business. It serves over 90 markets within United States, Canada, Mexico, United Kingdom of Great Britain and Northern Ireland, Netherlands, Germany, Spain, France, and China. Its roots date back to 1998 and it contends that it is now the largest hotel readerboard business in the world. Since at least as early as September, 2004, the Complainant has consistently used the marks KNOWLAND and KNOWLAND GROUP to market and identify its goods and services through print, online, radio and television mediums. The Complainant obtained registrations of the KNOWLAND and KNOWLAND GROUP marks (collectively the “KNOWLAND Marks”) in the United States in December, 2010. It is also the registrant of the domain name .
The Disputed Domain Name was registered in the name of the Respondent on December 30, 2005.
On June 17 and 20, 2011, the Respondent communicated with the Center via email regarding the language of proceeding, but did not provide, at any time, a substantive response to the Complainant’s contentions. 5. Parties’ Contentions A. Complainant
The Complainant’s main arguments are the following: 1. Identical or Confusingly Similar
The Complainant contends that the Disputed Domain Name is identical to its registered KNOWLAND trademark, and nearly identical to its registered KNOWLAND GROUP trademark. 2. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have rights or legitimate interests in the Disputed Domain Name for the following reasons:
(a) the Respondent is not the owner nor beneficiary of any trademark applications nor registrations for any marks featuring either KNOWLAND or KNOWLAND GROUP;
(b) the Respondent did not register or begin using the Disputed Domain Name until well after (i) the Complainant had begun extensively using the KNOWLAND Marks, (ii) the trademark priority date established by the Complainant’s common law trademark rights for the KNOWLAND Marks in the United States, and (iii) large hotel chains with locations in the Republic of Korea had begun using the Complainant’s goods and services.
(c) the Respondent is not connected in any way with the Complainant and has no authority, license, permission, or other arrangement from the Complainant to use the KNOWLAND Marks to identify the Respondent’s domain name, website, or any products or services offered and sold by the Respondent. 3. Registered and Used in Bad Faith
The Complainant contends that the Respondent acted in bad faith when it registered the Disputed Domain Name because (a) it had actual knowledge of the Complainant’s KNOWLAND mark prior to registering the Disputed Domain Name; (b) the Disputed Domain Name incorporates the Complainant’s entire mark; and (c) the Respondent advertised that the Disputed Domain Name was for sale; and (d) the Respondent sought to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
Although the language of the registration agreement, and accordingly the default language of the proceedings is Korean, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293).
The Complainant submitted that English should be the language of the proceedings on the grounds that the pre-complaint correspondence between the parties in 2009 concerning the possible sale of the Disputed Domain Name was conducted in English. The Complainant offered no other basis in support of this position. The Respondent, via email communications with the Center, stated that Korean should be the language of proceedings because it does not understand English.
In determining the language of the proceedings, the Panel must balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. The Complainant’s argument in favor of the English language has some relevance in deciding the language of the proceedings. Specifically, the email communications demonstrate that the Respondent is capable of understanding and communicating in written English.
Further, although the Complainant did not raise any other arguments in support of English as the language of the proceedings, the record shows additional factors that are helpful in deciding the language of proceedings issue. They include those set forth below.
First, the Respondent’s website under the Disputed Domain Name, a screenshot of which is shown in Annex F of the Complaint, shows an apparent “link farm” to numerous third-party websites, all of which appear to be in the English language. As the owner of the Disputed Domain Name, the Respondent is presumed to know the content shown on its website, and since the content of its website is written in English, it is further presumed that the Respondent must read and understand English. To suggest otherwise would be to fly in the face of reason.
Second, there is no information on the record to suggest or indicate that the Complainant is able to communicate in the Korean language.
Third, there is no showing on the part of the Respondent that it is serious about defending itself against the Complaint. The Respondent claims that it does not understand English. As mentioned above, the email communications in English between the Complainant and Respondent, and the Respondent’s website showing the “link farm” to third-party websites - all in English - tend to refute this claim. Nevertheless, even if we assume arguendo that the Respondent’s claim is true, all of the Center’s communications were transmitted in both English and Korean. Accordingly, the Respondent knew of the purpose of the proceeding and therefore it could have prepared and filed some formal response in its native Korean language even if it merely stated its own positions in defense of the legitimacy of its registration to the Disputed Domain Name, and even if it did not address the issues raised in the Complaint. Instead, it chose to take no action whatsoever.
Accordingly, in the interests of fairness to the parties and procedural efficiency, 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. 6.2. Analysis of the Complaint
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. A. Identical or Confusingly Similar
The Disputed Domain Name includes the word “Knowland” which is identical to the trademark of the Complainant.
The Complainant acquired the registration for the mark KNOWLAND in December 2010. It is the consensus view that the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) ¶ 1.4. In any event the Panel notes that the Complainant has consistently used the mark since September 2004 and based on the evidence submitted finds that the Complainant had common law rights in KNOWLAND at the time the Disputed Domain Name was registered in December 205.
Accordingly, the Panel concludes that the Complainant has satisfied the first element under paragraph 4(a) of the Policy in the present case. B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no registered trademarks or trade names corresponding to the Disputed Domain Name and the Complainant had never given the Respondent any license or permission to use the trademark KNOWLAND. Firstly, in the present case, in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed by the Respondent. Secondly, there is no evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services at present. In addition there is no evidence to suggest that the Respondent has been commonly known by the mark, KNOWLAND, which has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith
The Complainant must also show that the Disputed Domain Name “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name. In the present case, the evidence submitted by the Complainant demonstrates that the website under the Disputed Domain Name contained a number of links to goods and services related to the software and business solution, in connection with which the Complainant has consistently used the KNOWLAND Mark since 2004. Also, even though the current website under the Disputed Domain Name shows it is under “construction”, the record indicates that the website was updated at the same date or immediately after the Complaint was filed. Further, passive holding of the website does not prevent a finding of a bad faith. See “WIPO Overview” ¶ 3.2. Therefore, having examined all the circumstances of the registration and use of the Disputed Domain Name, the Panel concludes that the Respondent, by using the Disputed Domain Name, has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website. Paragraph 4(b)(iv) of the Policy.
The third element is present. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Andrew J. Park
Presiding Panelist
Ilhyung Lee
Panelist
Moonchul Chang
Panelist
Dated: August 26, 2011
Full & Egal Universal Law Academy