The Complainant is Vivaneo Deutschland GmbH of Rüsselsheim, Germany, represented by Loewenheim Rechtsanwälte, Germany.
The Respondent is Yang Kyung Won of Seoul, Republic of Korea, self-represented. 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 November 16, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2016, 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.
On November 18, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On November 21, 2016, the Complainant requested for English to be the language of the proceeding. On the same date, 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, in both English and Korean, and the proceedings commenced on November 30, 2016. On November 28, December 2, 6 and 20, 2016, the Respondent sent email communications to the Center. On December 20, 2016, the Respondent requested for an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date to December 24, 2016. The Response was filed with the Center on December 24, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 11, 2017. 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 did not indicate the nature of its business. However, based on this Panel's independent review of the Complainant's website, it appears that the Complainant is a German legal entity which operates a network of fertility clinics located in Germany, the Netherlands, Denmark, and Austria.
With regard to the Complainant's trademark registrations, it only indicates in its Complaint the existence of a 2013 European Union trademark registration for the mark VIVANEO claiming in-vitro products and in-vitro fertilization services. The mark was registered in the name of the Complainant's parent company, but was assigned to the Complainant in 2016.
The disputed domain name was registered in 2010. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical to the Complainant's VIVANEO trademark.
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name on the grounds that the disputed domain name is linked to a website concerning automobile-related services and the content is blocked through robots.txt such that search engines are not able to find the content, and thus, the Respondent is not commonly known by the disputed domain name. The Respondent also claims that the disputed domain name does not represent special content and it includes content of the website "", which is also not relevant for search engines. Finally, the Complainant claims that the Respondent does not have rights or legitimate interests in respect of the disputed domain name because it has attempted to sell the disputed domain name for a long period of time.
3) the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name for the purpose of selling it for a profit by seeking USD 97,500. The content of the website linked to the disputed domain name relates to automobile services. There is no logical connection between the term "vivaneo" and automobiles. The Respondent blocked the website related to the disputed domain name for search engines. This is an indication of the use of the disputed domain name in bad faith. Finally, the Respondent has been named as a respondent in numerous UDRP proceedings in the past. In all prior cases, the UDRP panels found the Respondent to have registered and used the disputed domain names in bad faith and ordered the transfer to the complainants. B. Respondent
The Respondent contends that it registered the disputed domain name on November 30, 2010 − a date which was far before the Complainant registered its VIVANEO trademark − and that it has been continuously using the disputed domain name since it was registered. Further, the Respondent contends that it believes the Complainant, by seeking to take away the disputed domain name, is engaging in reverse domain name hijacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service 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.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. A. Language of the Proceeding
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English, and it would cause undue delay and expense if the Complainant were required to translate the Complaint into Korean;
2) The Complainant and the Respondent communicated in English on several occasions.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established rights in the mark VIVANEO.
The disputed domain name is identical to the Complainant's trademark VIVANEO. The addition of a generic Top-Level Domain such as ".com" after a domain name may be disregarded when assessing whether a domain name is identical of confusingly similar to a trademark (Proactiva Medio Ambiente, S.A.v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant's trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating his rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Paragraph 4(c) of the Policy provides that the Respondent may establish its rights or legitimate interests in a domain name by showing, among other things, any of the following circumstances:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
If the Respondent demonstrates any of these elements or provides any other evidence that shows he has a right or legitimate interest in the disputed domain name, the Complainant will have failed to meet its burden of establishing that the Respondent does not have rights or legitimate interests in the disputed domain name.
In the present case, the Complainant provided information in its Complaint showing that the disputed domain name was registered in 2010, some three years prior to the Complainant's presumed earliest and sole trademark registration of its VIVANEO trademark in 2013. Further, the Complainant itself indicated that the content of the Respondent's website is related to automobiles, and, in fact, the Respondent's claims and submissions show that its website is indeed a type of automobile-related forum/Internet cafe. There is no evidence to indicate that the Respondent was using the disputed domain name in connection with any goods or services related to the Complainant's in-vitro fertilization services.
Accordingly, the Panel finds that the Respondent has adequately rebutted the Complainant's prima facie case. Notwithstanding, the Panel nevertheless considered the final requirement under paragraph 4(a) of the Policy, namely whether the disputed domain name has been registered and is being used in bad faith. D. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, they shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Complainant must demonstrate the conjunctive requirement that the Respondent registered the disputed domain name in bad faith and continues to use it in bad faith.
In this case, the Panel finds that the Complainant has not discharged its burden of establishing that the Respondent registered the disputed domain name in bad faith. The Panel, after considering the totality of the facts of record, does not find the evidence, on balance, to be sufficient to demonstrate that the Respondent registered the disputed domain name with the intent of profiting from and exploiting the Complainant's rights in the VIVANEO trademark.
While the Complainant has established its trademark registration rights to its VIVANEO trademark, and has claimed various factors to support its claim that the Respondent registered and is using the disputed domain name in bad faith, including, for example, that the Respondent was named in numerous UDRP proceedings, and that it had demanded an "overrated" amount for the sale of the disputed domain name, as the Complainant had characterized it, the Panel finds that the Respondent's disputed domain name was registered well-before the earliest evidence of record of any rights which the Complainant had acquired to the VIVANEO trademark.
Thus, of the four circumstances that support a finding of bad faith registration and use that were mentioned above, there is no evidence to support a finding of bad faith registration and use per circumstances 1-3, since each requires that the Respondent had knowledge of the Complainant at the time of registration of the disputed domain name. Further, there is no evidence to support such bad faith under circumstance 4 (notably the subject matter between the Complainant's business and the automobile content of the Respondent's website are different). Furthermore, this Panel notes that the Complainant's website is written in the German language, and thus, arguably intended for a German-speaking audience, while the Respondent's website is in the Korean language and thus, intended for a Korean-speaking audience. Also, based on this Panel's review of the Respondent's website, it is noted that based on the dates of some of the earliest third-party blog entries, the said website appears to have been in operation as a car forum/car Internet cafe since at least 2010 and the Complainant has not provided any arguments or evidence to suggest that the Respondent may have acquired the disputed domain name subsequent to that date.. This date is consistent with the date of registration of the disputed domain name and, again, it far precedes the date of the Complainant's trademark registration of its VIVANEO mark.
In short, while the Respondent does not explain its intent in registering the disputed domain name or its reason for choosing the term "vivaneo", the evidence of record does not support an inference that the Respondent must have registered the disputed domain name in an effort to exploit the Complainant's trademark. Accordingly, since the Complainant must prove all of the three grounds set out in paragraph 4(a) of the Policy, the Complaint must therefore fail. E. Reverse Domain Name Hijacking
The Respondent has asked for a declaration by the Panel that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Upon considering the Respondent's submissions on this point and the evidence of the Complainant's rights coupled with the allegation that the Respondent had acted in bad faith given its repeat appearances as a UDRP respondents, the Panel does not consider this a case of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Date: January 26, 2017
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