The Complainant is Société DADIER of France, represented by Yaël Cohen-Hadria, France.
The Respondent is info of Republic of Korea, represented by Dongsuh Law Offices, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (“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 June 17, 2011. On June 17, 2011, 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 June 28, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent. The Center sent an email communication to the Complainant on June 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 4, 2011.
The Center verified that the Complaint together with the amendment 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 the Respondent of the Complaint, and the proceedings commenced on July 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2011. The Response was filed with the Center on July 20, 2011.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 27, 2011. 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 contends that it is the registrant of the AN’GE mark in various countries throughout the world. According to the Complainant, it has trademark registrations for the AN’GE mark in Japan, United States of America (U.S.), and Republic of Korea, and it has an international registration that covers China, Democratic People’s Republic of Korea, Spain, Egypt, Italy, Morocco, Viet Nam, and United Kingdom of Great Britain and Northern Ireland. According to the evidence submitted, the Complainant is the owner of the following trademarks; AN’GE in Japan (Annex 8), International Registration for AN’GE (Annex 9), AN’GE in U.S. (Annex 10), and A. AN’GE in France (Annex 11). These four trademark registrations were obtained prior to the registration of the Disputed Domain Name by the Respondent. With regard to Republic of Korea, the Complainant did not provide evidence of the registration of its AN’GE mark nor of a pending renewal application, as was alleged in the Complaint.
Beyond the assertions and evidence regarding the above-mentioned trademark registrations, the Complainant did not set forth information in the Complaint regarding the nature of its business, its date of incorporation, the geographic scope of its business activities, the date of first use of its AN’GE mark, the goods/services associated with said mark, the fame of its mark, if any, etc.
The Disputed Domain Name was registered on May 23, 2002. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to its registered AN’GE mark. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for various reasons, including the following: 1) the Respondent is not affiliated with nor authorized by it to register the Disputed Domain Name; 2) the Respondent cannot demonstrate any use of, nor demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services; and 3) the Respondent has never been commonly known by the Disputed Domain Name.
Finally, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. Again, the Complainant raises various reasons in support of this claim, including the following:
1) it should be inferred that the Respondent had at least constructive knowledge of the Complainant’s rights when it registered the Disputed Domain Name since the Complainant had been the registered owner of the AN’GE mark since 1992 and since it had registered the AN’GE mark in Republic of Korea in 1997. Thus, both the 1992 date of first registration and the 1997 date of Korean registration far pre-date the Respondent’s 2002 registration date of the Disputed Domain Name.
2) the Respondent is offering to sell the Disputed Domain Name to the general public for a price that is far in excess of the Respondent’s out-of-pocket costs to register the Disputed Domain Name. B. Respondent
The Respondent is an individual residing in Republic of Korea. The record is void of any further information concerning its profession, line of work, etc.
The Respondent contends that the Disputed Domain Name and the Complainant’s AN’GE mark may be similar but they are not identical. The Respondent further contends that it has rights or legitimate interests in the Disputed Domain Name because it thought the name “ange,” which is merely the French word for “angel,” was a good name for a domain name and that it could sell it to a third party, but not necessarily to the Complainant nor to any of its competitors, since it was not aware of the Complainant, nor its competitors.
The Respondent also contends that it did not register nor use the Disputed Domain Name in bad faith. The Respondent argues that the mere act of offering to sell a domain name is not evidence of bad faith and that to make a successful claim of a respondent’s bad faith, a complainant must show that its mark is well-known or that the respondent knew of the complainant and its mark at the time the respondent registered the subject domain name. The Respondent concludes by arguing that in this case, the Complainant’s AN’GE mark is not well-known and it did not even know of the Complainant. 6. Discussion and Findings 6.1 Language of the Proceedings
The registration agreement for the Disputed Domain Name is in Korean. 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. However, as noted above, the Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English and the Respondent submitted a request to proceed in Korean. The Center made a preliminary determination to accept the Complaint filed in English, and to allow the Respondent to submit a response in Korean, subject to a determination by the Panel pursuant to paragraph 11 of the 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. Based on the Complainant’s use of English on its website, wherein it informs readers of the sale of the Disputed Domain Name and given the Respondent’s Response to the Complaint wherein it states that the Complainant’s attachments should be translated to at least the English language, it does not appear as though the Respondent has any difficulty comprehending and communicating in English. Accordingly, 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
Under the Policy, in order to prevail, the Complainant must prove the following three elements of a claim for transfer or cancellation of the Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the 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
The case record contains evidence to demonstrate the Complainant’s rights in the AN’GE mark. The evidence submitted for the AN’GE mark shows that it was registered prior to the registration date of the Disputed Domain Name.
The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s AN’GE mark. They are phonetic equivalents and are nearly identical in appearance. The fact that the Complaint’s AN’GE mark includes an apostrophe while the Disputed Domain Name does not, does not preclude a finding of confusing similarity in this case. As to the inclusion of the “com”, it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identity or confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the 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) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has not acquired trademark or service mark rights; or (iii) the 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 the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
There is no evidence that the Respondent ever used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services and there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. Indeed, the Respondent, in its Response, acknowledged that it obtained the Disputed Domain Name with the intention of selling it. However, for the reasons set forth below, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by the 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 a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 the registrant’s website or location or of a product or service on the registrant’s website or location.
A complainant is generally expected to show both the respondent’s knowledge of the relevant mark at the time of registration of the disputed domain name (whether actual, or inferred from the circumstances of the case), and the respondent’s intent to target or benefit in some way from inclusion of the complainant’s mark in the disputed domain name. In this case, the Complainant raised various claims and submitted various pieces of evidence in an effort to establish the existence of the above-mentioned bad faith factors. The Panel finds that the Complainant’s claims regarding the bad faith of the Respondent are either unsubstantiated and/or not persuasive. In short, there were simply no evidentiary submissions that establish to this Panel’s satisfaction that the Respondent 1) knew or should have known about the Complainant’s mark; 2) intended to capitalize on the Complainant’s mark; and 3) did not register the Disputed Domain Name because of its generic or descriptive meaning or purpose wholly unconnected with the Complainant or its competitors at the time of registration. In fact, there is no evidence to show that the Respondent was, at the very least, aware of the Complainant’s existence, or of its competitors.
For these reasons, the Panel cannot find on the record in the present case that the Respondent had the relevant bad faith intent, or to infer such intent from the relevant circumstances when it acquired the Disputed Domain Name. Accordingly, this Panel finds that the Complainant has failed to establish the requisite third element of its case under the Policy. See e.g., Validas, LLC v. SMVS Consultancy Private Limited,WIPO Case No. D2009-1413 and the majority opinion in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Dated: August 10, 2011
Full & Egal Universal Law Academy