Complainant is Petrogas Group Ltd of Dublin, Ireland, represented by in-house counsel.
Respondent is Kim Sooyong - (Arisu Tech) of Seoul, Republic of Korea, represented by DongSuh Law Offices, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2013. On April 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.
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 Respondent of the Complaint, and the proceedings commenced on May 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2013. The Response was filed with the Center on May 27, 2013. On May 28, 2013, the Center received a Complainant’s supplemental filing. On May 29, 2013, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel for determination pursuant to its discretion.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 6, 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.
By email dated May 28, 2013, Complainant transmitted a supplemental filing to the Center. That supplemental filing noted that certain information in the annexes to the Response was in the Korean language, and in view of the fact that the proceedings are to be conducted in English, requested that Respondent submit the annexes in English. Complainant also provided certain information regarding the ownership-in-fact of certain business names incorporating its claimed trademark. The Panel has taken note of the information in Complainant’s supplemental filing. In view of the facts directly relevant to the Panel’s determination in this proceeding, it does not consider it necessary to seek additional information from either party. 4. Factual Background
Complainant is the owner of a Community Trade Mark (CTM) registration for the word trademark APPLEGREEN on the register of the Office for Harmonization in the Internal Market (OHIM) of the European Union, registration number 010321933, registration dated March 8, 2012, in international classes (ICs) 1, 29 and 43, covering, inter alia, fuel additives, food products and services for providing food and drink. The date of application for the aforesaid registration is October 7, 2011. Complainant is the owner of the registration for the word trademark APPLEGREEN on the Register of Trade Marks of Ireland, registration number 247026, registration dated April 19, 2011, in IC 43. Complainant is also the owner of a CTM registration for a figurative trademark consisting (in colors green and white) of a circle with a triangular cutaway into which a tapered oblong shape is inserted. There is a lowercase letter “a” in the bottom right side of the circle. According to the OHIM trademark data printout, this registration number 006223085, registration dated July 9, 2008, in ICs 4, 16, 29, 30, 32, 35, 37 and 43, has the trademark name “a”.
In its Complaint, Complainant does not indicate the date on which it initiated use of the trademark APPLEGREEN. Complainant states that it is “currently Ireland’s largest independent forecourt retailer”, and that it sells motor fuels, oil and lubricants, and various household consumable goods, as well as providing retail services, including maintenance and repair of vehicles and restaurant services, all under the APPLEGREEN brand name. Complainant indicates that it has an annual turnover of EUR 586.6 million.
Complainant has provided evidence of an award as NACS International Convenience Retailer of the Year 2010, and similar awards for subsequent years.
Respondent has provided a copy of Complainant’s Annual Review and Financial Statements 2008 that states:
“A large number of our stations operate under our Applegreen brand. Applegreen has proven remarkably successful since its launch in 2005”. (At page 2)
Complainant has provided printouts of several business name registrations filed with the Companies Registration Office in Ireland. The earliest of these, showing the name “Applegreen Monkstown”, has the effective date April 25, 2001.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on October 26, 2000. The Registrar did not indicate the date on which the current registrant registered the disputed domain name. Respondent has indicated that it was the initial registrant of the disputed domain name, and there is no evidence on the record of this proceeding to suggest otherwise.
Respondent indicates that it operates a business that constructs or runs websites with domain names comprised of generic terms. Respondent indicates that the disputed domain name has been parked with the Sedo parking service which operates with the purpose of Internet keyword advertisement, generating revenue from sponsored links that vary from country to country.
Complainant has provided evidence that the disputed domain name has been offered for sale through Sedo. Complainant claims to provide evidence that the disputed domain name was for sale as early as 2001, but the Wayback Machine archive webpage link furnished by Complainant is inconclusive. Complainant’s recent evidence from Sedo shows the “last bid” for the disputed domain name at EUR 10,000 with status “The other party has canceled the negotiation.”
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant contends that it owns rights in the trademark APPLEGREEN. Complainant has not specifically alleged that the disputed domain name is identical or confusingly similar to its trademark, but has stated that it was the first to use the name “Applegreen” in commerce, and “feels it can lay claim to the domain name A”.
Complainant alleges that Respondent has no rights or no interest in the disputed domain name and that Respondent is “cybersquatting on the domain, with the long-term aim of profiting from the sale of the domain”. Complainant states that it has never had any relationship with Respondent, nor has it licensed or permitted Respondent to use its trademark.
Complainant argues that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant or another party with a similar trading name. Complainant contends that Respondent has not demonstrated any legitimate purpose for registering the disputed domain name. Complainant further provides evidence that Respondent has registered a substantial number of domain names, and asks why anyone would require so many domain names other than to sell them at a price in excess of out-of-pocket expenses.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Respondent. B. Respondent
Respondent indicates that it registered the disputed domain name on October 26, 2000.
Respondent alleges that Complainant registered its word CTM APPLEGREEN on March 8, 2012, and its Irish trademark on April 19, 2011, and “those word trademarks shall not be deemed trademarks entitling to claim any rights to the disputed domain name registered on October 26, 2000.”
Respondent argues that Complainant has not provided satisfactory evidence of an association between itself and business names incorporating “Applegreen” registered in Ireland. Respondent refers to Complainant’s annual report of 2008 stating that it has used the APPLEGREEN brand since 2005. Respondent further argues that the earliest business name registration provided by Complainant is dated April 10, 2001, so that “it is crystal clear that the registration date for the disputed domain name by Respondent had come earlier than the foregoing earliest registration date.”
Respondent alleges that the disputed domain name incorporates a generic term, and that its use of the generic term in the disputed domain name is not in bad faith. Respondent argues that only if a generic term is well known as a trademark in the world, or at least in Respondent’s jurisdiction, at the time of registration of the disputed domain name could such registration be in bad faith.
Respondent indicates that Complainant’s ”” website was first launched on November 29, 2007, and became fully operational as of April 16, 2010. Respondent registered the disputed domain name substantially before those dates.
Respondent argues that it has rights or legitimate interests in the disputed domain name because it is using a generic term in connection with keyword advertisements to generate sponsored links which differ from country to country. Respondent contends that it is not taking unfair advantage of Complainant’s trademark rights.
Respondent contends that it is well-established by precedent under the Policy that it is not possible to register a domain name in bad faith prior to the acquisition by the complaining party of trademark rights. Respondent further contends that it is based in the Republic of Korea, and that it would be very difficult to have knowledge of a trademark used primarily in Ireland. In order to prevail in this proceeding, Complainant would need to demonstrate that Respondent would have known of Complainant’s trademark rights in the Republic of Korea in 2000, which is not in any case possible since the APPLEGREEN brand was not launched in Ireland until 2005, by Complainant’s own account.
Respondent indicates that it could not have registered the disputed domain name for the purpose of selling it to Complainant since Complainant had not established any trademark rights when the disputed domain name was registered. Respondent indicates that by offering the domain name through Sedo it is available to any party for purchase. Respondent states that it is irrelevant how many domain names it has registered. Respondent indicates that it has prevailed in several previous proceedings under the Policy based on its registration of generic terms. Respondent contends that there are many second-level domain names incorporating the term “applegreen” that are not registered by Complainant, but rather by third parties.
Respondent requests the Panel to reject Complainant’s request for an order of transfer of the disputed domain name. 6. Discussion proceedings under the Policies and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to the Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified the Complaint to Respondent and Respondent filed its Response in a timely manner. The Panel is satisfied that Respondent was notified of the Complaint and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief.
These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the word trademark APPLEGREEN at the Trade Mark Office of Ireland, and registered as a word CTM at OHIM. Complainant has provided evidence of use of the APPLEGREEN trademark in commerce in Ireland, the United Kingdom and Northern Ireland. Respondent has not disputed that Complainant has trademark rights in the EU and Ireland based on the aforesaid registrations. The Panel determines that Respondent owns rights in the trademark APPLEGREEN as evidenced by registration in Ireland and as a CTM.
Complainant has further alleged rights in the business name “Applegreen”. Complainant has not asserted a specific date or dates on which trademark rights may have arisen out of business usage, nor has it asserted a legal basis for such rights. The Panel notes, however, that Complainant’s own formal company report states a launch date of the “Applegreen brand” in 2005. While there is a single record of a business name registration incorporating the term “applegreen” dating back to 2001, there is no evidence that the term was used in commerce or ripened into a trademark at that early date. On no assessment of the facts in evidence were those rights established prior to Respondent’s registration of the disputed domain name. The Panel need not identify a precise date on which Complainant may have established rights in the trademark APPLEGREEN.
In circumstances such as those present here, the disputed domain name is identical to Complainant’s APPLEGREEN trademark from the standpoint of the Policy.
Complainant has established that it has rights in the trademark APPLEGREEN and that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests
Because Complainant does not succeed in establishing bad faith registration and use by Respondent, the Panel does not consider it necessary to assess the issue of rights or legitimate interests. C. Registered and Used in Bad Faith
In order to be found to have engaged in abusive domain name registration and use, Respondent must have registered and used the disputed domain name to take unfair advantage of a Complainant’s rights in its trademark. Respondent’s bad faith intention could be evidenced in a number of ways as illustrated in paragraph 4(b) of the Policy, which provides a non-exhaustive list of bad faith conduct.1
As a matter of general principle under the Policy, Respondent could not have acted to take unfair advantage of Complainant’s rights in a trademark before those rights arose. A finding that Respondent registered and used the disputed domain name in bad faith presupposes that Complainant had trademark rights that could be unfairly exploited at the time of the domain name registration. See, e.g., Mariposa Ltd. v. Stonecutter, Don at Case No. D2010-0200; Super-Krete International, Inc. v. Concrete Solutions, Inc.,WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility,WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074.2
Respondent registered the disputed domain name substantially prior to Complainant securing rights in its trademark. Respondent could not have registered the disputed domain name as a means to take unfair advantage of Complainant’s rights in a trademark because such rights did not exist. There are no exceptional circumstances that might compel a different conclusion.
Complainant has failed to establish that Respondent registered the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy. As a consequence, it does not succeed in this proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: June 12, 2013 Addendum to Administrative Panel Decision
Subsequent to notification of the decision in this matter, Complainant contacted the Center twice by emails dated June 25, 2013. The Panel addresses two factual issues raised by Complainant that are not material to the outcome of the proceeding.
First, the Panel found that disputed domain name is identical to Complainant’s trademark. However, in the Panel’s summary of the Complaint, the Panel stated “Complainant has not specifically alleged that the disputed domain name is identical or confusingly similar to its trademark”. Complainant has pointed to a place in the Complaint where such language is used, and the Panel so notes.
Second, Complainant takes issue with the Panel’s characterization as “inconclusive” of an item of evidence regarding an initial offer for sale of the disputed domain name in 2001. Complainant submitted a webpage printout from the Wayback Machine archive that did not display or refer to any specific domain name. This was a standard form A parking page stating “domain for sale”, and requesting email offers requiring the Internet user to specify the domain name being sought. Based on the generic nature of the solicitation, the Panel referred to this particular item of evidence as inconclusive. This generic solicitation page was addressed by the disputed domain name. This item of evidence could be understood to represent an offer for sale by Respondent in 2001.
The Panel reaffirms its decision.
1 Paragraph 4(b) of the Policy establishes the required demonstration of bad faith, providing:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 web site 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 web site or location or of a product or service on your web site or location.
2 There are certain limited situations in which an exception to this general principle may be found, see, e.g. Intelligen LLC v. Converg Media LLC,WIPO Case No. D2010-0246, but those are not in evidence here.
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