Complainant is Well-Link Industry Co., Ltd. of New Taipei City, Taiwan Province of China, represented by LetsLaw, Spain.
Respondent is Jeff Park, Nexpert, Inc. of Gwangju, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2017. On January 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 8, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 16, 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
Complainant is owner of registration of the word trademark WELLLINK on the Register of the Intellectual Property Office of the Ministry of Economic Affairs, R.O.C. ("TIPO"), registration number 01368059, registration dated July 1, 2009, in international class 19, covering, inter alia, rubber bearings for bridges and use in buildings.
Complainant was incorporated in Taiwan Province of China, on December 30, 2004. According to Complainant it has gone from being a local company in Taiwan Province of China, to a global supplier of civil engineering products for the construction sector. Complainant has provided a list of domestic and international projects, with domestic projects commencing in 2008, and international projects in 2010. There is no indication of projects undertaken in the Republic of Korea.
Complainant registered the country code domain name on April 16, 2008. It operates a commercial website at that address.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the record of registration was February 16, 2005. The Registrar did not identify the date on which Respondent registered or acquired the disputed domain name. The records of this proceeding do not indicate that a party other than Respondent was the creation registrant of the disputed domain name.
The disputed domain name resolves to an inactive registrar parking page that includes a link for persons interested in purchasing the disputed domain name. According to Complainant, the click-through link on the website identified by the disputed domain name indicated that the disputed domain name was available for purchase at auction with a minimum bid of USD 2,000. By email dated August 4, 2016, Complainant contacted Respondent by email regarding the potential purchase of the disputed domain name. By email of that same date, Respondent indicated that the price for the disputed domain name was USD15,000. There is no indication of further correspondence between Complainant and Respondent.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant alleges that it owns rights in the trademark WELLLINK based on registration at the TIPO. Complainant argues that the disputed domain name is identical to its trademark.
Complainant contends that the disputed domain name is identical to Complainant's country code domain name.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not commercialize any services and/or products with the disputed domain name; (2) the website associated with the disputed domain name is currently inactive and for sale; (3) Complainant is operating a business internationally under its trademark, and Respondent has no commercial or other interest connected with the disputed domain name, and; (4) Respondent is making an illegitimate, commercial and unfair use of the disputed domain name since it is using it for the purpose of obtaining economic benefits from Complainant.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name for commercial purposes, and is preventing Complainant from using the disputed domain name in connection with its internationalization process; (2) Respondent "pretended to sell the referred domain to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name", which supposes a disproportionate price as compared with the registration costs, and; (3) Respondent has previously been found in four UDRP proceedings to have registered domain names in bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, fax and physical addresses provided in its record of registration. Respondent did not reply to email notification. The express courier delivery service indicated that the address provided by Respondent in the record of registration of the disputed domain name is incomplete and/or incorrect. The fax number provided in the record of registration of the disputed domain name did not answer. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark WELLLINK on the TIPO. Respondent has not contested Complainant's ownership or the validity of that registration. The Panel determines that Complainant owns rights in the trademark WELLLINK.
The disputed domain name is identical to Complainant's trademark from the standpoint of the Policy.
The Panel determines that Complainant owns rights in the trademark WELLLINK and that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests
Because of the Panel's disposition of this proceeding on the basis of Complainant's failure to demonstrate Respondent's bad faith, as a matter of procedural economy the Panel does not address the element of rights or legitimate interests. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
It is well-settled under the Policy that, absent exceptional circumstances, registration of a domain name by a responding party that preceded acquisition by a complaining party of rights in a trademark does not constitute bad faith registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.1, Consensus view. A domain name registrant does not abuse trademark rights that do not exist.
Respondent registered the disputed domain name on February 16, 2005, more than four years prior to Complainant's registration of its trademark (in Taiwan Province of China). The first commercial project listed by Complainant in its submission is a domestic project in the year 2008. The first listings for international projects are in Belgium and Spain in 2010. There is nothing on the record of this proceeding to indicate that Complainant acquired rights in its trademark as early as February 2005, and Complainant has not suggested a basis on which Respondent could or should have been aware of any claim by Complainant to rights in a trademark as early as that date.
Because the record in this proceeding indicates that Respondent registered the disputed domain name prior to the acquisition by Complainant of rights in its trademark, Respondent did not register the disputed domain name in bad faith within the meaning of the Policy.
Complainant argues that it has a more justifiable claim to the disputed domain name than Respondent because Complainant is conducting business under the trademark reflected in the second level domain of the disputed domain name. Moreover, Respondent offered to sell the disputed domain name to Complainant at a price in excess of Respondent's out-of-pocket costs in connection with the disputed domain name. According to Complainant, Respondent has previously been found to have registered and used domain names in bad faith. Each of these assertions may be accurate, but they are not sufficient to overcome the plain language of paragraph 4(a)(iii) of the Policy. In order for Respondent to be found to have acted in bad faith under the terms of that provision, Respondent must have registered the disputed domain name in bad faith. Respondent could not have registered the disputed domain name in bad faith in relation to Complainant if Complainant did not have rights in a trademark at the time of Respondent's registration.
The Panel determines that Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: March 1, 2017
Full & Egal Universal Law Academy