The Complainants are (i) FNAC (“FNAC”) of Ivry-sur-Seine, France and (ii) Établissements Darty et Fils (“Darty”) of Bondy, France, both represented by Cabinet Santarelli and Cabinet Marc Sabatier, France.
The Respondent is James of Anyang, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Server Hosting Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2016. On July 27, 2016, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2016, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
On August 2, 2016, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement is Korean. In the same notification, the Center instructed the Complainants to provide, by August 5, 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 Complainants’ submission replying to this notification, the Respondent is requested to submit these to the Center by August 7, 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 [August 7, 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 August 3, 2016, the Respondent, in a message in Korean, requested that Korean be the language of the proceeding. On August 5, 2016, the Complainants requested that English be the language of the proceeding, setting forth reasons.
On August 10, 2016, the Center received by email the Complainants’ amendment to the Complaint.
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 and 4, the Center, in both Korean and English, formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2016. With respect to the language of the proceeding, the Center’s notification stated:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Korean;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party’s submissions.”
In accordance with the Rules, paragraph 5, the due date for the Response was August 30, 2016. On August 10, 2016, the Respondent transmitted a message to the Center stating, among others, its objection to the proceeding in English. This message is further discussed herein.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on September 5, 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 FNAC is a French company that “commercialises books, videos, computers, CDs and provides cultural services”. It has used the trademark FNAC for its operations, and obtained multiple registrations of the mark in various jurisdictions, including France, in 1977 (Registration No. 1014780), and the Republic of Korea, in 1998 (Registration No. 40-463467).
The Complainant Darty is a French company that “commercialises big and small household equipment, audio and video apparatus, TV set videos, [and] computers”, using the DARTY trademark. Darty has obtained registrations of its mark, including multiple registrations in France, beginning in 1980 (e.g., Registration No. 1581492).
On November 6, 2015, the two Complainants announced that they reached an agreement on a merger between them.
The Respondent registered the disputed domain name on November 6, 2015. 5. Parties’ Contentions A. Complainants
The Complainants contend principally that: (i) the disputed domain name is identical or confusingly similar to marks in which the Complainants have 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:
“The Complainants have not licensed or otherwise authorized the Respondent to use the above mentioned trademarks ‘Fnac’ and/or ‘Darty’. Moreover, there is no relationship between the Complainants and the Respondent.”
“The disputed domain name is a parking webpage offering links redirecting to third websites.”
“The registration of the contested domain name which reproduces the ‘FNAC’ and ‘DARTY’ trademarks owned by the Complainants is obviously fraudulent, especially as its registration has been made just after that the Complainants have officially announced their potential merger on November 06, 2015 in National and international press ….”
“[T]he Complainants request the Administrative Panel appointed in this administrative proceeding that be transferred to the First Complainant’ namely ‘FNAC’ company.” B. Respondent
The Respondent did not reply to the Complainants’ contentions, other than the message that it sent to the Center on August 10, 2016.1 Paragraphs 5(f) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s failure to submit a Response. 6. Discussion and Findings
Initially, the Panel must 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 rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding”. Here, the language of the Registration Agreement is Korean. Nevertheless, the Complainants request that English be the language of the proceeding. The Respondent objects, and requests the proceeding to be in Korean.
In its message dated August 10, 2016, the Respondent asserted that it cannot understand the submissions in English. Yet in the same message, the Respondent stated that it will ignore the administrative panel’s decision and challenge it in the Korean courts within ten days.2 The Respondent repeated this point in English text, in enlarged point type and highlighted in red: “We will appeal to to [sic] Korean District Court against WIPO Decision!! We will ignore it!”
It is the Panel’s view that the Respondent has familiarity with the intricacies of the UDRP proceeding in English, but chose not to submit a Response in either language.3 At this stage in the proceeding, there is little purpose in ordering translation of the Complainants’ submissions into Korean. This Decision will be in English.
Turning to the merits, the Complainants must satisfy each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Paragraph 4(a)(iii) requires evidence that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Here, the Complainant FNAC has rights in the mark, FNAC; the Complainant Darty has rights in the DARTY mark. The Panel determines that the disputed domain name is identical or confusingly similar to marks in which the Complainants have rights, namely, FNAC and DARTY. The disputed domain name merely merges the two Complainants’ respective marks, separated by a hyphen (“-”), and adds the generic Top-Level Domain, “.com”.
UDRP decisions have noted that for purposes of paragraph 4(a)(iii), prior registration of the merging complainants’ respective marks collectively – e.g., “FNAC DARTY” or “DARTY FNAC” here – is not necessary. Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112 (involving the domain name , after the merger of Konica Corporation and Minolta); Neuf Telecom, Cegetel v. Hyun-Jun Shin,WIPO Case No. D2005-1118 (involving the domain name , after the merger of Neuf Telecom and Cegetel).
The first element is demonstrated. B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants also state that they have not authorized the Respondent to use their respective trademarks, and that there is no relationship between the Complainants and the Respondent. The Complainants have met their initial burden of making a prima facie showing. The Respondent then has the burden to demonstrate any such rights or legitimate interests. The Respondent has declined to advance any argument in this (or any other) regard, other than protesting the language of the 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), 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”.
Here, the disputed domain name resolves to a site in Korean text. At the top of the screen appears the notation, “홈페이지 준비중 입니다”, or literally, “the homepage is in the middle of preparations”. The site also provides links to other websites, also with Korean content.
The record indicates that the Respondent registered the disputed domain name shortly after the announced merger between FNAC and Darty. At the time of registration, the Respondent must have been aware of the Complainants, and “the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1.
Moreover, the Panel determines that by using the disputed domain name, the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site … by creating a likelihood of confusion with the [C]omplainant[s’] mark[s]”, as set forth in paragraph 4(b)(iv).
The third element is present. 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 FNAC, as requested in the Complaint.
Ilhyung Lee
Sole Panelist
Date: September 19, 2016
1 The Respondent’s message of August 10, 2016 reads in full:
“사건 관리자 귀하
이런 불공정한 진행절차가 어디있습니까.
규정에 의하면 피신청인이 동의하지 않을 경우 피신청인의 등록기관의 언어로 진행함에도 불구하고(피신청인은 한국어로 진행되어야함을 통지)
피신청인이 이해할 수 없는 영어로 진행하는 경우는 도대체 어떤 경우입니까
피신청인이 신청인이 제출한 서류를 도저히 이해할 수 없는데 어떻게, 무엇을 근거로 하여 답변서를 작성합니까,
패널이 언어를 결정한다고 하는데 지금까지 패널이 피신청인의 언어로 제출을 명한 경우는 wipo역사상 없었습니다. 정말 대기업을 위한 중재기관입니까. 본인은 이 분쟁절차를 아예 무시하고 절차에 의거(패널 결정 10일 이내에) 대한민국 법원에 소를 제기할 것입니다.
빨리 원고에게 이전하라고 직권으로 명령해 주시기를 간절히 바랍니다.
We will appeal to to Korean District Court against WIPO Decision!! We will ignore it!”
2 Paragraph 4(k) of the Policy provides that ICANN will implement the decision of the administrative panel unless the respondent provides within “ten (10) business days” official documentation that the respondent has commenced a lawsuit against the complainant in a proper jurisdiction.
3 The Respondent, whose name appears as “Park” in its emails, is not a novice to UDRP proceedings. He has also been known as “James Park” or “JSP” and has previously registered domain names incorporating the marks of merged companies shortly after their announcements. See Simbec-Orion Group Limited, Simbec Research Limited, Orion Clinical Services Limited v. James Park,WIPO Case No. D2014-1187; Sopra Group and Steria v. JSP,WIPO Case No. D2014-0673; and Coyle Hamilton Ltd., Willis Ltd. 대 James Park,WIPO Case No. D2004-0747.
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