The Complainant is JJGC Industria E Comercio de Materiais Dentarios S.A. of Curitiba, Paraná, Brazil, represented by Baril, Brandão & Brofman Advogados (BBB), Brazil.
The Respondent is Yun-Ki Kim of Puchun, Kyungki do, Republic of Korea, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with YesNIC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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. In reply to the Center’s inquiry the Registrar stated that the language of the Registration Agreement was Korean.
On November 1, 2013, the Center transmitted an email to the Parties, in Korean and English, regarding the language of the proceedings. On November 4, 2013, the Complainant confirmed its request, stated in the Complaint, that English be the language of the proceedings. The Center’s email stated as an instruction to the Respondent “Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant's request that English be the language of proceedings.” The Respondent did not comment on the language of the proceedings by the specified due date.
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, in English and Korean, of the Complaint, and the proceedings commenced on November 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2013. The Response, in the Korean language, was filed with the Center on November 27, 2013.
The Center appointed Richard G. Lyon, Moonchul Chang, and Manoel J. Pereira Dos Santos as panelists in this matter on December 12, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. Each member of the Panel has submitted his 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 based in Brazil but has sales and other operations around the world. Its business is the production, sale, and support of dental implants and tools for installing dental implants and prosthetics. The Complainant has been in this business since 1993. Submitted with the Complaint is evidence of the Complainant’s ownership of fifty-two registered trademarks or pending applications for trademarks consisting of or including the word “Neodent” in many countries around the world. The earliest of these was registered in Brazil in 1997. This portfolio includes a registration for NEODENT in the Republic of Korea applied for in 2005 and granted in November 2007. The Complainant has conducted its business under the trade name “Neodent” since its inception. Its principal website is “www..br”.
The Respondent is a dentist who conducts his practice in the Republic of Korea. He registered the disputed domain name in 2002. The disputed domain name currently resolves to a website in the Korean language for Neo Dental Clinic, with the logo
In May-June 2013 the Complainant sent the Respondent a cease-and-desist letter, first by email, then by post, and last by courier service, but received no reply beyond acknowledgment of receipt. 5. Parties’ Contentions
As the Panel resolves this matter primarily on the basis of the Complaint, only the Complainant’s contentions are set forth in this Section.1 The Complainant contends as follows:
A. The Complainant has rights in NEODENT by reason of its many registered trademarks and its trade name, which is also duly registered in Brazil. The disputed domain name is identical to this mark.
B. The Complainant has never done business with or otherwise authorized the Respondent to use its NEODENT mark. “In fact, there is no evidence of the Respondent’s use of, or 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, neither that the Respondent has been commonly known by the domain name, or, that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade name and the registered marks at issue.” [Complaint, paragraph 95].
C. The Respondent registered the disputed domain name well after the Complainant established trademark rights through its serial registrations around the world. The Respondent had “at least constructive knowledge” of the Complainant’s marks when he registered the disputed domain name. The NEODENT marks are distinctive, not generic, and are “established and widely recognized.” Evidence of the Respondent’s bad faith in registration and use of the disputed domain name include copying “a famous registered trademark,” “replicat[ing] Complainant’s persona by purporting to appropriate Complainant’s established and widely recognized registered trademark” [Id., paragraph 98], using the disputed domain name solely to take advantage of the significant goodwill that the Complainant has built up through its worldwide business, failure to the Complainant’s demand letter, and using robots.txt to block access through the Wayback Machine to past postings at the disputed domain name. As it appears that the Respondent has made no use of the disputed domain name since 2003, bad faith may also be found under the “warehousing” doctrine first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. 6. Discussion and Findings A. Language of the Proceedings
Before addressing the requirements of paragraph 4(a) of the Policy the Panel discusses the question of which is the appropriate language of the proceeding.
In the Complaint and later in its reply to the Center’s inquiry the Complainant requested to proceed in English. The language of the Registration Agreement is Korean, so pursuant to paragraph 11 of the Rules in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding should be in Korean, subject to the authority of the Panel to determine otherwise.
The Complainant cites as reasons for proceeding in English first, that the Registrar publishes its standard registration agreement in English as well as Korean [Complaint, paragraph 10]; second, “it is apparent that the Respondent has sufficient ability communicating in the English language as seen in pre-Complaint correspondences between the parties” [reply to Center’s inquiry]; and, third, it is not able to communicate in Korean and translating the Complaint and its annexes into Korean would result in substantial delay and expense [Ibid.].
The Panel finds these reasons insufficient to depart from the command of paragraph 11 of the Rules. None of the reasons found by the Panel justify departing from the Rules in this proceeding. Nearly all text on the website of the Respondent’s clinic is in Korean. Nothing in the record suggests any prior dealings between the parties, in any language. There is no evidence of the Respondent’s regularly conducting business in any language other than Korean. Though the case file indicates that the Respondent has some knowledge of English, as in Advance Magazine Publishers Inc. - Cenk Babaeren,WIPO Case No. D2010-2238, “The Panel cannot be certain, on this record, that the Respondent can clearly understand the language of the Complaint.” In that case the panel adhered to the language of the registration agreement despite the fact that one domain name at issue had been registered under an English agreement.
The Complainant correctly argues that “[t]he spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors,” but it cites only its own convenience without regard to the corresponding delay and expense that the Respondent would bear should the Panel depart from the default rule. The Complainant is here by choice; the Respondent is not. The Complainant is a large multinational corporation; the Respondent appears to operate a single dental clinic. Without a compelling reason to proceed otherwise, if one party or the other will be unfairly inconvenienced by requiring translations the language of the Registration Agreement should prevail. In these circumstances the Panel finds no unfairness in abiding by the plain language of the Rules.
Nevertheless, the Panel agrees with the Center’s preliminary determination not to request a translation of the Complaint into Korean, and instead to proceed both in English and Korean, accepting the Complainant as filed in English and the Response as filed in Korean. Further, as the Panel decides this case primarily based on the Complaint the Complainant suffers no burden of delay or expense. The Panel renders its Decision in English, as the language in which all members are fluent. B. Registered in Bad Faith
Paragraph 4(a) of the Policy provides that to earn a transfer of the disputed domain name the Complainant must establish, by a preponderance of the evidence, each of the following:
(i) the disputed domain name registered by the Respondent 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.
These requirements are conjunctive; each must be proven or the Complaint fails. In this proceeding the Panel need look no further than the Complaint to determine that the Complainant has not established that the Respondent registered the disputed domain name in bad faith.
Panels in UDRP proceedings have generally declined to adopt the United States doctrine of constructive notice to the bad faith requirement. Absent other indicia of cybersquatting or special circumstances not present in this case, a complainant must normally show that the domain name registrant was actually aware of the complainant and its mark and selected the domain name to take some advantage of the mark and any good will attached to it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.4, and cases there cited. As with any other Policy element, actual knowledge and targeting must be proven with competent evidence.
The Complainant provides no evidence that the Respondent, who does business only in the Republic of Korea, knew of the Complainant or its NEODENT marks when the Respondent registered the disputed domain name in 2002, five years before the Complainant obtained its Korean trademark, or of facts that might support an inference of knowledge. The only basis cited in the Complaint besides the legal notion of constructive notice is the renown of the marks. While certainly adequate to establish standing under paragraph 4(a)(i) of the Policy, see WIPO Overview 2.0, paragraph 1.1, the Panel finds that the Complainant’s marks are not fanciful and not marks known widely as unique to its owner (such as YAHOO or EXXON) but rather an obvious abbreviation for “New dental” in English. The Complainant’s own evidence confirms this. The Complainant itself uses “Newdent” to promote its products and has at least one trademark for that word. Complaint, paragraph 52 and Annex 6. There is likewise no evidence, even of facts that if found true by the Panel might allow an inference of bad faith, to support the pleaded legal conclusion, quoted above, that the Respondent selected the disputed domain name expressly to target the Complainant, or otherwise to allow the Panel to infer that the Respondents in fact had actual notice.
If more were needed, the Complainant has no supported allegation of bad faith use either. The Complainant bases its case upon no use at all, citing Telstra and its progeny. First of all, that allegation is inaccurate, as a quick insertion of the disputed domain name into one’s browser will demonstrate. Second, in Telstra the panel reasonably concluded, based upon the distinctiveness and fame of the mark at issue that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” No such inference can be made here as the Respondent appears to have used the mark to promote his own clinic, as likely a reason for selecting the disputed domain name as to take advantage of the Complainant’s marks. While the use of robots.txt combined with other evidence may enhance an inference of improper use of a domain name, as the only indication of bad faith in this case it cannot do so here. Certainly it is not, as the Complainant would have it, “evidence” of use of the disputed domain name to sell products competing with those of the Complainant, or indeed evidence of anything.
The Complaint fails for lack of evidence under paragraph 4(a)(iii) of the Policy.2 C. Reverse Domain Name Hijacking
Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of Reverse Domain Name Hijacking (RDNH). See, for example, Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011; Liquid Nutrition Inc. v. /Vertical Axis Inc.,WIPO Case No. D2007-1598. However a finding of RDNH is always within the panel’s discretion, see Rudy Rojas v. Gary Davis,WIPO Case No. D2004-1081 (facts justified RDNH but panel determined “to leave the parties as it found them”). This Panel believes that such a finding is appropriate in this proceeding, for three reasons.
First, as explained in paragraph B above the Complainant, which is represented by counsel, pays no heed to a longstanding rule of decision in Policy proceedings that “Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP.” WIPO Overview 2.0, paragraph 3.4. While this is not designated a “Consensus View” it is at the very least a default rule, variation from which requires explication, supported by evidence, from one who pleads it. Notwithstanding its certification in the Complaint, required by paragraph 3(b)(xiv) of the Rules, that “that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument,” the Complainant offers the Panel no reason why in this proceeding the Panel should depart from or modify settled Policy precedent.
The second reason is similar, though it involves a more serious pleading error. According to the Response, the Respondent has operated a dental clinic under the name NEO Dental Clinic since 2002. The Respondent has provided evidence of public use of the Neodent name (in English as well as Korean), which is something the Complainant could and should have verified prior to submission of the Complaint with an allegation, quoted in Section 5.B above, that the Respondent has never been known by the disputed domain name, and its pleading is misleading to the point of attempting to deceive the Panel. This alone has been held grounds for finding RDNH. See, e.g., Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork,WIPO Case No. D2013-1603; Coöperatie Univé U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC,WIPO Case No. D2011-0636.
Third, the Complainant’s basic theory of its case raises issues far outside the limited jurisdiction and competence of a UDRP panel, and the Complainant or its representative should have known it. The Complainant pitches its case upon the notion that “Therefore, it is evident that the Complainant has exclusive rights over the use of the distinctive sign ‘NEODENT’, guaranteed by international treaties and national laws (including the applicable Korean Trademark Law), resulting from the trademarks registrations, as well as from the filing of its by-laws in the competent commercial register.” [Complaint, paragraph 89] This Panel’s brief is strictly limited by contract to an examination of the three requirements of paragraph 4(a) of the Policy. To determine the extent of the Complainant’s rights, or to weigh them against the Respondent’s claimed rights, lies well beyond that brief, and is something that belongs in a national court, not a UDRP proceeding.
For these reasons the Panel finds that “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP,” WIPO Overview 2.0, paragraph 4.17, and declares in this Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. See Rules, paragraph 15(e). 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Presiding Panelist
Moonchul Chang
Panelist
Manoel J. Pereira Dos Santos
Panelist
Date: December 20, 2013
1 The Korean-speaking member of the Panel has provided the other panelists with summaries of the Response and relevant evidence submitted in the Korean language, which the Panel has considered. The Panel refers peripherally to these documents in Section 6.
2 In the Response the Respondent claims to have used the disputed domain name continuously since registration to promote the dental clinic, and in 2007 to have applied for a Korean trademark for NEODENT and Design. If true these facts would provide the Respondent with a right or legitimate interest in the disputed domain name. See Policy, paragraphs 4(c)(i) and 4(c)(ii).
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