The Complainant is Logic Design, Boulogne- Billancourt, France, represented by Novagraaf France, France.
The Respondent is Richard Yaming of Seoul, Republic of Korea, represented by Jun-Ha Lim, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Inames Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2013. On June 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2013, 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 June 28, 2013, the Complainant submitted an amendment to the Complaint, modifying its requested remedy from cancellation to transfer of the disputed domain name.
On June 24, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 25, 2013, the Complainant requested that English be the language of the proceeding. The Respondent requested Korean to be the language of the proceeding on June 27, 2013.
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 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2013. The Response was filed with the Center on July 19, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 24, 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 was established in Paris in 1988 and has expanded its expertise to become a global design agency, working in export via its client’s projects. It won several awards for their achievement in design areas such as Bronze Pentawards 2011, Mention Super Design 2011, and Prix Super Design 2010. The Complainant owns trademark registrations, inter alia, as follows:
Community trademark registration
Mark: LOGIC DESIGN
Registration Number: 000997528
Filing Date: November 19, 1998
Registration Date: September 13, 2000
Classes of Goods and Services: 16, 35, 42
The disputed domain name was registered on February 14, 2012. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is identical to the registered trademark LOGIC DESIGN in which the Complainant has rights, except the presence of a hyphen;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name was registered and being used in bad faith by the Respondent; and
(iv) The Complainant requests the transfer of the disputed domain name to itself. B. Respondent
(i) As to whether the disputed domain name is identical or confusingly similar to the registered trademark LOGIC DESIGN in which the Complainant has rights:
The portion “logic design” of the disputed domain name is a generic and dictionary phrase referring to “logical design” or “basic organization of the circuit of a digital computer in computer technology” according to an English dictionary or a Computer-Internet -IT Dictionary. As the disputed domain name is comprised of a generic name, it is open to free use of the general public. Therefore, the Complainant shall not claim a worldwide exclusive right to own or use the disputed domain name.
(ii) As to whether the Respondent has rights or legitimate interests in respect of the disputed domain name:
The Respondent has been actively running a web-agency and information technology related business. In particular, the Respondent has been preparing for a website under the disputed domain name in which the Respondent will offer information sharing services regarding mobile circuit design utilizing the Respondent’s specialty in the engineering. Furthermore, the portion “logic design” is a generic name which is generally used in the field of electronic and semi-conduct technology areas. As such, the Respondent has rights or legitimate interests in respect of the disputed domain name.
(iii) As to whether the disputed domain name was registered and is being used in bad faith by the Respondent:
While the Respondent was preparing to open a website to provide services for information sharing on mobile circuit design, he received a purchase offer from the Complainant for the disputed domain name and made a proposal at a realistic price. Therefore, the Respondent did not register the disputed domain name for the purpose of sale. The Respondent did not register the disputed domain name to interfere the business of the Complainant by causing confusion with the Complainant’s trademark or service mark either, and thus should not be considered as having registered the disputed domain name in bad faith.
The Respondent was not aware of the trademark LOGIC DESIGN or the existence of the Complainant when he registered the disputed domain name. Also, the trademark LOGIC DESIGN is not well-known around the world. It is further supported by the fact that the Complainant never applied for a trademark registration for the same mark in the Republic of Korea.
Therefore, the requested remedy in the Complaint should be denied. 6. Discussion and Findings A. The Language of Proceeding
The Registrar of the disputed domain name has informed the Center that the language of the Registration Agreement was Korean. On June 24, 2013, the Center issued both in English and Korean the Language of Proceeding Notification.
On June 25, 2013, the Complainant submitted a request that English be the language of the proceeding on the grounds that: i) the Respondent is using the disputed domain name in connection with a website containing commercial sponsored listings written in English and French, the language of the country where the Complainant is located, ii) English has been used in pre-Complaint correspondences between the parties, and iii) the Respondent has been involved in several UDRP proceedings where the panels have considered that the language of the proceedings should be in English. Thus, the Complainant submits that the Respondent is fluent in English and does perfectly understand this language.
On June 27, 2013, the Respondent requested Korean to be the language of the proceeding. Although the Registration Agreement for the disputed domain name was made in Korean, it is apparent to this Panel from previous UDRP decisions as submitted by the Complainant in which the Respondent has been named that the Respondent has sufficient ability to communicate in English. While noting that the Respondent has requested Korean to be the language of the proceeding, the Panel considers that the email correspondences exchanged between the parties before the Complaint was filed with the Center demonstrate the Respondent’s sufficient ability to understand the English language. As such, it is the Panel’s view that the Respondent appears to have the ability to communicate in English.
On the other hand, the Complainant is not able to communicate in Korean, and therefore, if the Complainant were to submit all the documents in Korean, the administrative proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case. (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001). B. Identical or Confusingly Similar
The Respondent asserts that the portion “logic design” of the disputed domain name is a generic and dictionary term referring to “logical design” or “basic organization of the circuitry of a digital computer in computer technology” and denies the confusing similarity between the Complainant’s mark and the disputed domain name.
However, the Panel finds that the Complainant has established its trademark rights to LOGIC DESIGN, and the disputed domain name reproduces the trademark in its entirety except a hyphen between “logic” and “design”. It is well recognized among UDRP panels that the incorporation of a trademark in its entirety to a domain name may be sufficient to establish that the domain name is identical or confusingly similar to the mark. See, e.g., The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark in that the prominent portion “logic design” of the disputed domain name is identical to the Complainant’s mark. It is well established that the generic Top-Level Domain (gTLD) suffix “.com” in the disputed domain name may be disregarded in determining the confusing similarity (See Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios,WIPO Case No. DTV2001-0013). As such, the first element of the Policy has been established. C. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in a domain name, it is well accepted that the complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent in the domain name. The burden of production will then shift to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel finds that the Complainant has made out a prima facie case.
The Respondent is asserting that he has been actively running a web agency and information technology related business. The Respondent further asserted that he has been preparing for a website under the disputed domain name in which the Respondent will offer services for information sharing regarding mobile circuit design utilizing the Respondent’s specialty in the engineering. He also asserts that the portion “logic design” is a generic term that is generally used in the field of electronic and semi-conduct technology areas, and thus he has rights or legitimate interests in respect of the disputed domain name.
However, there is no actual evidence provided to support this allegation. In this Panel’s view, a copy of a book cover with the title “Fundamentals of Logic Design” which is allegedly the Respondent’s major is not considered as being sufficient to establish that the Respondent was preparing for a website under the disputed domain name in which he would offer services for information sharing regarding mobile circuit design utilizing the Respondent’s major in the engineering. Therefore the Respondent failed to establish that it has made a “demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” under the paragraph 4(c)(i) of the Policy.
The Panel has also found that the Respondent has no connection or affiliation with the Complainant or its marks and has not received any license or consent, express or implied, to use the terms “logic design” in a domain name or in any other manner. The Panel further finds that on the record, it has been established that the Respondent has not been commonly known by the disputed domain name.
Given the above circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. D. Registered and Used in Bad Faith
The Respondent is asserting that he received a purchase offer from the Complainant and made a proposal to transfer the disputed domain name at a realistic price. However, from the provided record, the Panel has found that the Complainant did not make initial purchase proposal in its cease-and-desist letter. In response to the Complainant’s cease-and-desist letter, the Respondent first proposed to transfer the disputed domain name at the price of USD 2,000. This amount is in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Coupling with the fact that the Respondent does not have any rights or legitimate interests in the term “logic design”, the Panel has found that the disputed domain name was registered or acquired primarily for the purpose of selling, to the owner of the trademark or service mark or to a competitor of the Complainant.
Paragraph 4(b) of the Policy sets forth examples of behavior that may constitute bad faith registration and use, while indicating that other circumstances may also act as evidence of bad faith. One of the enumerated circumstances includes the registration of a domain name primarily for the purpose of selling the domain name to the owner of the mark or to a competitor for valuable consideration in excess of registration costs. See Educational Testing Service v. TOEFL,WIPO Case No. D2000-0044 (finding that the respondent did in fact register and use the domain name in bad faith as it has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration); See VENTURUM GmbH v. Coventry Investments Ltd., DomainCollection Inc.,WIPO Case No. D2003-0405 (finding that offering the domain name for sale to the complainant, any of the complainant’s competitors, and others fall within the exemplification of registration and use of a domain name in bad faith pursuant to paragraph 4(b)(i) of the Policy); PRIMEDIA Magazine Finance, Inc. v. Richard Manzo, WIPO Case No. D2001-1258 (finding that the respondent clearly offered the domain name for sale to anyone, suggested a price that is considerably in excess of registration costs, and has indicated a willingness to sell “at the right price” which behavior constitutes bad faith).
Further, the Panel notes that the website at the disputed domain name resolves to a parking page with sponsored links, which may further constitute evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. As such, it is the Panel’s view that the disputed domain name was registered and being used in bad faith. Although the Respondent is asserting that he was not aware of the existence of the Complainant and its trademarks because the Complainant’s marks were not well-known around the world, the Panel does not accept such an allegation given the circumstances that he could have found them through a simple trademark search as a person who must have had sufficient experience and knowledge of the domain name disputes in that he has been involved in several previous UDRP proceedings.
Given the above circumstances, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith, and the third element of the Policy has been established. 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.
Ho-Hyun Nahm
Sole Panelist
Date: August 4, 2013
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