Complainant is Neste Oil Oyj of Espoo, Finland, represented by Bech-Bruun Law Firm, Denmark.
Respondent is Noorinet of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2014. On January 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On January 14, 2014, the Center transmitted an email to the Parties in both Korean and English languages regarding the language of the proceedings. On January 15, 2014, Complainant confirmed its request that English be the language of the proceedings. Respondent did not comment on 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 Respondent of the Complaint in Korean and English, and the proceedings commenced on January 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2014. On February 12, 2014, Respondent sent an email communication to the Center requesting an extension to file a Response to February 25, 2014, to which Complainant agreed. Accordingly, the Center notified the Parties that the due date for Response was extended to February 25, 2014. However, Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2014. On March 5, 2014, Respondent sent an email communication to the Center, reiterating its request in the email communication of February 12, 2014.
The Center appointed Ho-Hyun Nahm, Esq. as the sole panelist in this matter on March 12, 2014. 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
Complainant is a Finnish oil refining and marketing company producing mainly transportation fuels and other refined petroleum products. Complainant was established in 1948 under the name “Neste” and has three business areas: oil products, oil retail and renewable fuels. It produces, refines and markets oil products, and is currently the world’s leading supplier of renewable diesel. It has shipping and engineering services, as well as it licenses production technologies. Complainant employs more than 5,000 people worldwide and is represented in more than 14 countries. In 2012 the company had a turnover of EUR 17.9 billion. Complainant trades, inter alia, under the trademark NEXBASE.
Complainant owns trademark registrations for the mark NEXBASE worldwide. Complainant owns the following trademark registrations in the European Union:
In the European Union (Community Trade Marks)
Trademark: NEXBASE
Registration number: 002051449
Filing date: January 23, 2001
Registration date: September 4, 2002
Classes of goods: 3, 4, 5, 29, and 30
Trademark: NEXBASE
Registration number: 003457892
Filing date: October 28, 2003
Registration date: December 21, 2004
Classes of goods: 1, 3, and 4
In the Republic of Korea, Fortum Oil and Gas Oy, a connected company to Complainant owns the following trademark registration:
Trademark: NEXBASE
Registration number: 4005527580000
Filing date: November 6, 2001
Registration date: July 3, 2003
Class of goods: 4
The disputed domain name was created on May 9, 2011. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the registered trademark NEXBASE in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by Respondent.
Complainant requests the transfer of the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions even within the extended deadline which was granted by the Center with Complainant’s consent. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by a 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the complaint); see also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). A. Language of Proceedings
The Registrar has informed the Center that the language of the Registration Agreement was Korean. On January 14, 2014, the Center issued both in English and Korean the Language of Proceedings Notification.
On January 15, 2014, Complainant submitted a request that English be the language of the proceedings. Respondent did not object to Complainant’s request. The Panel notes that the website associated with the disputed domain name contains content in English. Further, Respondent sent email communications to the Center in English only. The Panel also considers that Complainant is not able to communicate in Korean, and therefore, if Complainant were to submit the Complaint in Korean, the administrative proceeding would be unduly delayed, and Complainant would have to incur substantial expenses for translation.
In consideration of all above circumstances and in the interest of fairness to both Parties, and in the absence of Respondent’s Response to Complaint, pursuant to paragraph 11(a) of the Rules, the Panel determines that the language of the proceedings shall be English. 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
Complainant has provided sufficient evidence showing that it is the owner of the NEXBASE mark, the use and registration of which predate Respondent’s registration of the disputed domain name.
The Panel finds that the “.com” is a generic Top-Level Domain (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” does not have any impact on the avoidance of confusing similarity with Complainant’s trademark. See Research in Motion Limited v. Input Inc, Domain Manager,WIPO Case No. D2011-2197. See also Montblanc-Simplo G.m.b.H. v. Whois Privacy Protection Service MuuMuuDomain/Ryota Shirahama,WIPO Case No. D2013-1581.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark. C. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), and then the burden shifts to Respondent to demonstrate it does have rights or legitimate interests. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Complainant asserts that it has not licensed or otherwise permitted Respondent to use its NEXBASE trademark or to apply for any domain name incorporating the trademark. It further contends that there is no business relationship between Complainant and Respondent. The Panel agrees with Complainant that this supports that Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102 (finding absence of license permitting to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
Complainant submits that there is no evidence to conclude that Respondent owns any service marks or trademarks that reflect the disputed domain name and nothing in the records suggests that Respondent is commonly known by the disputed domain name. It further contends that there must be a fair or noncommercial use or bona fide offering of goods under the disputed domain name to establish rights or legitimate interests but no such use exists.
The Panel finds that on the available record, it has been established that Respondent has not been commonly known by the disputed domain name, and thus the Panel holds that Respondent lacks rights or legitimate interests in the disputed domain name, and has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Harry Winston, Inc. and Harry Winston, S.A. v.h,WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to Policy, paragraph 4(c)(ii) in the domain name where there was no evidence that respondent was commonly known by the domain name); see also Alstom v.Yulei,WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the domain name where there was no indication that respondent was commonly known by the domain name and/or was using the domain name in connection with a bona fide offering of goods or services).
Under the circumstances that Respondent did not reply and that Complainant has proven a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the Panel finds that the second element of the Policy, paragraph 4(a) has been established. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; see also Accor v. Eren Atesmen, WIPO Case No. D2009-0701. D. Registered and Used in Bad Faith
Complainant submits that the disputed domain name has been registered and is being used in bad faith.
The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith under the Policy.See Sears Brands, LLC v. Dale Airhart, NAF Claim No. 1350469 (stating that constructive notice generally will not suffice for a finding of bad faith).
The Panel observes that the registration of Complainant’s trademarks predates the registration of the disputed domain name by several years. Particularly the Panel notes that Fortum Oil and Gas Oy, a connected company to Complainant owns a trademark registration for NEXBASE in the Republic of Korea where Respondent seems to reside. Coupled with a strong reputation of Complainant and its NEXBASE mark, it leads the Panel to conclude that it is unlikely that Respondent was unaware of Complainant’s trademark NEXBASE, and that Respondent registered the disputed domain name in bad faith.
Complainant elaborates its argumentation that although Respondent is currently not making any use of the disputed domain name, passive holding can be considered as a bad faith use by citing Telstra Corporation Limited v. Nuclear Marchmallows,WIPO Case No. D2000-0003 (finding that in appropriate circumstances bad faith use need not involve positive action and that inaction was included in the concept of bad faith use). Complainant lists the circumstances that Respondent’s passive holding of the disputed domain name amounts to bad faith use as below:
i) In light of the fact that the registration of Complainant’s trademarks predates the registration of the disputed domain name by several years, it is unlikely that Respondent is unaware of Complainant’s trademark NEXBASE; and
ii) Respondent has shown no evidence of any actual or contemplated good faith use of the disputed domain name. Respondent’s intention with the disputed domain name is to sell it, stating that “you can buy this domain showing this webpage if your price is ok.”
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant was established in 1948 under the name “Neste” and has three business areas of oil products, oil retail and renewable fuels. It is currently the world’s leading supplier of renewable diesel, it has shipping and engineering services, as well as it licenses production technologies. Complainant employs more than 5,000 people worldwide and is represented in more than 14 countries. In 2012 the company had a turnover of EUR 17.9 billion. Complainant trades, inter alia, under the trademark NEXBASE. Complainant’s NEXBASE trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United Kingdom and in other countries, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Therefore, the Panel determines that Respondent registered and is using the disputed domain name in bad faith. 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 Complainant.
Ho-Hyun Nahm, Esq.
Sole Panelist
Date: March 20, 2014
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