The Complainant is JID Singapore Pte Ltd of Singapore, Singapore, represented by Rajah & Tann, Singapore.
The Respondent is Lee Wongi of Seoul, represented pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 24, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On December 25 and December 26, 2012, the Respondent sent emails requesting Korean to be the language of the proceedings. On December 26, 2012, the Complainant sent an email requesting English to be the language of the proceedings.
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”).
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 December 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2013. The Response was filed with the Center on January 7, 2013.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 21, 2013. 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 in the business of high-end interior and exterior design for international clientele comprising of luxury hotels and resorts. It has been using and operating under the trade name JAYA INTERNATIONAL DESIGN since it was established in 2005 by its co-founder and director, Mr. Jaya Ibrahim. Prior to establishing the Complainant, Mr. Jaya co-founded another interior designing firm, Jaya & Associates, in 1993. Mr. Jaya engaged in numerous prestigious and well-known projects which made him well-known and highly regarded in the design industry. As a result, the public has come to recognize and associate the JAYA brand and mark with Mr. Jaya.
The Complainant has offices in Shanghai, Jakarta, and Singapore, and its projects and business operations span across numerous jurisdictions, including the United States of America, China, Paris, Malaysia, Viet Nam, Singapore, and Bali. It is the registered owner of the mark JAYA INTERNATIONAL DESIGN registered in Singapore on May 16, 2011. It is also a pending applicant for the mark JAYA filed in Singapore, China, and the United States. The Complainant is also the registered owner of a large number of domain names containing the word “jaya”.
The Respondent is an individual who registered the disputed domain name on March 28, 2002. The website at the disputed domain name consists of one “parked” page with advertising links generating revenue from click-through referrals. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns rights in the JAYA and JAYA INTERNATIONAL DESIGN marks and that the disputed domain name is identical to the JAYA mark and confusingly similar to the JAYA INTERNATIONAL DESIGN mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that the Respondent is not affiliated with the Complainant whatsoever and there is no evidence that the Respondent has (a) used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (b) been commonly known by the disputed domain name; or (c) made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Complainant further contends that the Respondent has registered and uses the disputed domain name in bad faith. It also contends that the Respondent has been involved in previous UDRP cases where he was ordered to transfer the domain names at issue to the respective complainants, which constitutes a “pattern of conduct” to prevent the owners of trademarks from reflecting their marks in the corresponding domain names.
For all these reasons, the Complainant requests that the disputed domain name be transferred. B. Respondent
The Respondent claims that the Complainant’s marks and the disputed domain name are not identical nor confusingly similar; that the Complainant’s JAYA and related marks were just registered one or two years ago; that the term “jaya” is a generic word meaning “victory”; and that it is the name of different places in East Asia, including “Cyber Jaya” and “Subang Jaya,” the names of cities in Malaysia, and “Irian Jaya,” a place in Indonesia.
The Respondent also claims that there are more than thirty (30) trademarks filed with the Korean Industrial Property Office that contain the name “jaya.” Finally, the Respondent claims that he filed a service mark application for the JAYA mark with the Korean Industrial Property Office on August 6, 2003 and “acquired” the mark on November 25, 2004.
Finally, the Respondent requests the Panel to find that the Complainant has committed reverse domain name highjacking (RDNH) within the meaning of the Policy. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Administrative 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. Language of the Proceedings
The Panel has noted communications from the Complainant and the Respondent regarding the language of the proceedings.
According to the Rules, the language of the registration agreement should be the language of the proceedings, unless there is an agreement between the parties for a different language to be the language of the proceedings or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in the language other than that of the registration agreement, translate the Complaint into the language of the registration agreement, or submit a request for the proceedings to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceedings.
In this case, the Panel finds that English should be the language of the proceedings for the following reasons:
- The disputed domain name consists exclusively of a word written in English.
- The Respondent has knowledge of English sufficient to be able to understand the nature of these proceedings. This is evident from (1) the exchange of correspondence in English between the Complainant and the Respondent regarding the offer and counter-offer for the transfer of the disputed domain name for a fee; and (2) the fact that the website under the disputed domain name is in English.
- The Complainant would incur considerable further expense and inconvenience in retaining the services of a translator to translate the language of the Decision.
The Panel finds that in the circumstances of this case this amounts to sufficient evidence of the Respondent having command of English necessary to be able to understand the nature of these proceedings. Consequently, the Panel finds that it is appropriate to issue the Decision in English. B. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has established that the Complainant owns rights in the JAYA mark.
First, the JAYA mark and brand were first used by the Complainant’s co-founder and his company, Jaya & Associates, in 1993, and since that time, the mark and the brand have developed significant fame. All ownership rights and interests were subsequently transferred to and have continued to be exercised by the Complainant.
Second, the Complainant owns a registered service mark for JAYA and there is substantial goodwill attached to the JAYA and the JAYA INTERNATIONAL DESIGN marks.
Finally, the disputed domain name consists entirely of the Complainant’s registered service mark.
Accordingly, the Panel finds the disputed domain name to be identical or confusingly similar to the Complainant’s JAYA mark. The Panel thus finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) The respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
First, while the record shows that the Respondent obtained registration for the disputed domain name and the service mark JAYA in 2002 and 2004, respectively, both of which pre-date the 2005 establishment of the Complainant, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods and services. According to the documents submitted by the Complainant and as directly stated by the Respondent in his Response to the Complaint, the disputed domain name is associated with a website that consists of “Sponsored Links” and a list of “Related Searches,” and is intended to solely provide links to third-party goods/services. This, in the Panel’s view, does not constitute a bona fide offering of goods and services.
Second, as to paragraph 4(c)(ii) of the Policy, the Respondent in his Response to the Complaint does not assert that he is commonly known by the disputed domain name and there is no evidence in the record to indicate such.
Third, the Respondent may not have been aware of the Complainant and its JAYA mark at the time it obtained registration of the disputed domain name for the following reasons: (1) the Respondent obtained registration for the disputed domain name and the service mark JAYA prior to the establishment date of the Complainant; and (2) the Respondent’s claims that the JAYA mark is a generic name of a place, that there are many marks filed with the Korean Industrial Property Office containing the word “jaya,” and that the Complainant’s JAYA mark is not well-known in the Republic of Korea are factually supported and/or not unreasonable. Nevertheless, the Respondent clearly stated that the purpose of the website under the disputed domain name is to link Internet users to third-party goods and/or services. Ultimately, then, the Respondent’s intention was to earn revenue from click-through referrals. This is, by very definition, use of the disputed domain name for commercial purposes. Further, based on the totality of the circumstances, the Panel deems the Respondent’s willingness to enter into negotiations to sell the disputed domain name as additional evidence of bad faith on the part of the Respondent.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the use of the disputed domain name as a “parked” website makes it clear that the disputed domain name was registered for the purpose of financial gain. See Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462. Accordingly, the Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent vigorously claims that it was not aware of the Complainant at the time he registered the disputed domain name and its service mark in Korea. He attempts to establish this by showing that he obtained said registrations before the Complainant was even established. He also argues that there is nothing unlawful about operating a website that provides a service which links Internet users to third-party websites.
However, this Panel finds that on balance the Respondent did register the disputed domain name in order to prevent the “owner of the trademark or service mark” from reflecting the mark in a corresponding domain name, and that furthermore this action is a continuation of the Respondent’s established pattern of such conduct. Thus, this Panel finds that the record supports the conclusion that the Respondent registered the disputed domain name for the purpose of (1) using the disputed domain name in a manner that is not considered a bona fide offering of goods or services; and (2) selling the disputed domain name for profit to a party who may claim ownership to it and have a legitimate use for the disputed domain name. Under such circumstances, the Panel finds that the Respondent’s conduct in registering a domain name and preventing a party - who has demonstrated ownership to an identical mark - from using the disputed domain name for the bona fide offering of goods or services is inconsistent with the Policy.
Further, it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith in contravention of paragraph 4(b)(i). (see adidas-Saloman AG v. Vincent Stipo,WIPO Case No. D2001-0372). Here, the record shows that the Respondent demanded USD 85,000 for the transfer of the disputed domain name to the Complainant, an amount that far exceeds registration costs and that shows an intent to make a profit, and hence further demonstrates the Respondent’s bad faith.
In addition, it is undisputed that the Respondent is completely unconnected with the Complainant and the Complainant has never consented to the registration or use of the disputed domain name by the Respondent. Also, the Respondent does not claim that he has been known by or conducted business under the name JAYA. In fact, there is nothing in the record that shows the Respondent conducts any legitimate business activity using the disputed domain name.
For the above reasons, the Panel finds that Complainant has shown that the disputed domain name has been registered and is being used in bad faith by the Respondent.
In view of the outcome, the Panel also denies the Respondent’s request for a finding of RDNH. 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
Sole Panelist
Date: February 5, 2013
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