The Complainant is BASF Coatings, GmbH of Münster, Germany, represented by IP Twins, S.A.S., France.
The Respondent is Boomin Jeong of Busan, 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 August 3, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
On August 12, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On August 16, 2016, the Complainant requested for English to be the language of the proceeding. On the same day, the Respondent requested for Korean to be the language of the proceeding.
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 formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2016. At the request of the Respondent, the due date for Response was extended to September 10, 2016. The Response was filed with the Center on September 9, 2016.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on September 26, 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.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel by October 10, 2016. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to October 24, 2016, and the Parties were so notified. 4. Factual Background
The Complainant is a subsidiary of BASF Group, the world's largest chemical company with headquarters in Germany and more than 390 production sites and 112,000 employees worldwide. The Complainant develops, produces and markets automotive OEM coatings, automotive refinishes, industrial coatings, and decorative paints, and owns trademark registrations for RODIM dating back to 1983.
The Respondent appears to be an individual with an address in the Republic of Korea.
According to the WhoIs information, the disputed domain name was registered on September 29, 2014. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights. Specifically, the Complainant asserts that it owns trademark registrations for RODIM, including Benelux Reg. No. 0394817 registered on December 10, 1983, International Reg. No. 1088422 registered on April 20, 2011, and European trademark Reg. No. 9838211 registered on September 9, 2012, all of which predate the registration of the disputed domain name by the Respondent.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the disputed domain name is linked to a parking service and displays an advertisement offering the disputed domain name for sale. This shows that the Respondent registered the disputed domain name primarily for the purpose of benefiting commercially from the fame of the Complainant's trademark rather than in connection with a bona fide offer of products and services. B. Respondent
With respect to the first element, the Respondent raises no assertions that dispute the Complainant's trademark rights in RODIM or that the disputed domain name is identical or confusingly similar to RODIM.
With respect to the second element, the Respondent provides no explanation or evidence to show that it has rights or legitimate interests in the disputed domain name. The Respondent merely indicates that it registered the disputed domain name while it was publicly available.
With respect to the final element, the Respondent argues that domain name parking does not show bad faith, as it is a perfectly legitimate form of business. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently filed a Response in Korean.
First, the Panel notes that English does not appear to be the mother language of either party. Given the fact that the Complainant is based in Germany and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this decision. Besides, both parties were permitted to and in fact did present their cases in the language of their preference, and the language in which to render the decision is reserved for the Panel in accordance with paragraph 11 of the Rules. Under these circumstances, the Panel finds it proper and fair to render this decision in English. B. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds several trademark registrations for RODIM which is identical to the disputed domain name.
For the reasons mentioned above, the Panel finds that the first element has been established. C. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name.
The Respondent has offered no arguments to establish that it has any rights or legitimate interests in the disputed domain name. Further, there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established. D. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith in this case.
First, "rodim" appears to be a coined term with no particular meaning in the Korean, English or German languages, and the Respondent's registration of a domain name consisting of this very term should be viewed as more than a mere coincidence. Rather, it is quite improbable that the Respondent innocently selected a domain name that is identical to a trademark that has been used by the Complainant for over 30 years.
In addition, the Respondent has linked the disputed domain name with a parking service, despite having no rights or legitimate interests in the term RODIM. This does not constitute bona fide use, and there is no evidence of any history of bona fide use.
Lastly, the Respondent has listed the disputed domain name for sale for USD 2,500, which is clearly in excess of any out-of-pocket costs the Respondent may have reasonably incurred in registering and maintaining the disputed domain name, and yet another indication of the Respondent's bad faith.
For the reasons given above, the Panel finds that the third and final element has been sufficiently 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.
Ik-Hyun Seo
Sole Panelist
Date: October 19, 2016
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