The Complainant is Eastman Chemical Company of Kingsport, Tennessee, United States of America (“United States”), represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States.
The Respondent is Dany Kang of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2016. On July 19, 2016, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2016, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 21, 2016, the Center transmitted to the parties a Language of Proceedings notice, in both English and Korean. The Center notified the parties that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement is Korean. The Center instructed the Complainant to provide, by July 24, 2016:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Korean; or
3) submit a request for English to be the language of the administrative proceedings….”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by July 26, 2016”. The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [July 26, 2016], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On July 21, 2016, the Complainant requested that English be the language of the proceeding, and referred to the reasons set forth in the Complaint. The Respondent did not reply to the Center’s language notice or to the Complainant’s request.
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 and 4, the Center, in both English and Korean, formally notified the Respondent of the Complaint, and the proceeding commenced on August 3, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was August 23, 2016. The Respondent did not submit any response. Accordingly, the Center, again in both English and Korean, notified the Respondent’s default, on August 24, 2016.
On August 26, 2016, the Complainant transmitted to the Center the Complainant’s Additional Submissions, with an attached exhibit. The Center acknowledged its receipt, and informed the parties that the Complainant’s supplemental filing would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on September 6, 2016. 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 a United States company “engaged in the global manufacture and sale of chemicals, fibers, and plastics”. The company maintains that it and its predecessors have “continually used EASTMAN as a trade name and trademark for over one-hundred years”. The Complainant has obtained numerous registrations of its EASTMAN mark in various jurisdictions, including the United States, on April 22, 1997, for “agricultural chemicals, unprocessed plastics, unprocessed synthetic resins, additives for plastics and resins ….” It also received registration for the mark in the Republic of Korea on January 15, 1998.
The Respondent registered the disputed domain name on June 13, 2016. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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.
In addition, the Complaint states, inter alia:
“Today, Eastman is a $9.6 billion business with approximately 15,000 global employees, more than 50 manufacturing locations, and several sales offices around the globe serving customers in approximately 100 countries.”
“Eastman maintains a substantial presence in East Asia, including both a sales office and a manufacturing site in Korea.”
“On June 8, 2016, Eastman filed an application with the United States Patent and Trademark Office to register the standard character mark EASTMAN AVRA …. Respondent therefore registered the Domain Name only five days after Eastman filed its trademark application. The fame of the EASTMAN Marks and Complainant’s presence in Korea, coupled with the timing of Respondent’s registration of the Domain Name strongly indicate Respondent specifically targeted Complainant’s mark and registered the Domain Name to prevent Complainant from reflecting its applied-for trademark in a corresponding name.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(f) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint in such circumstances. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default. 6. Discussion and Findings
The Panel must initially address the language of the proceeding. Under paragraph 11(a) of the Rules, the language of the Registration Agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the Registration Agreement. But the ultimate determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Id. Here, the language of the Registration Agreement is Korean. Nevertheless, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification or the Complainant’s request, and has defaulted. Under these circumstances, with a submission from only the Complainant, the Panel will issue this decision in English.
The Panel has reviewed the Complainant’s supplemental filing that was transmitted to the Center on August 26, 2016, which relates to the issue of the Respondent’s bad faith. The Panel is able to reach its decision without consideration of the arguments and contents in the supplemental filing.
Turning to the merits, the Complainant must satisfy each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the mark EASTMAN. The Panel determines that the disputed domain name is identical or confusingly similar to the Complainant’s mark. In the Panel’s view, the predominant portion of the disputed domain name is “eastman”. The addition of the suffix “-avra” and the technical requirement of the generic Top-Level Domain “.com” does not defeat confusing similarity.
The first element is demonstrated. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has met its initial burden of making a prima facie showing. Thus, the Respondent has the burden to demonstrate any such rights or legitimate interests. The Respondent has declined to take part in this mandatory proceeding. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
The disputed domain name resolves to a site with content in both English (“Coming Soon!”) and Korean (“사이트 구축 중입니다”, indicating that the site is under construction).
It is difficult for the Panel to entertain the possibility that the Respondent selected the disputed domain name without knowledge of the Complainant or its products and services. That the Respondent registered the disputed domain name days after the Complainant filed its application for the EASTMAN AVRA mark with the United States Patent and Trademark Office is evidence of the requisite bad faith element.
The fact that the disputed domain name resolves to a site merely indicating that it is “coming soon” – akin to a passive holding – does not avoid a finding of bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
The third element is satisfied. 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.
Ilhyung Lee
Sole Panelist
Date: September 20, 2016
Full & Egal Universal Law Academy