The Complainant is Monitor Audio Limited of Essex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Kim Seokjun of Bucheon-si, Gyeonggi-do, 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 September 25, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the Respondent’s contact details.
On September 28, 2017, 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 September 28, 2017, the Respondent requested for Korean to be the language of the proceeding. On September 29, 2017, the Complainant requested for English 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 October 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2017. The Response was filed with the Center on October 24, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on November 8, 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 is Monitor Audio Limited of Essex, United Kingdom. In 2016, the Complainant acquired the assets of Roksan including the ROKSAN brand, along with the goodwill and reputation in relation to same. As the successor in title to the assets formerly of Roksan, the Complainant is the proprietor of the goodwill and reputation invested and acquired in the ROKSAN brand up to and after the date of the acquisition.
Roksan was established in 1985 and is a British manufacturer of high fidelity audio products, and in particular its influential and innovative design for hi-fi equipment. Roksan is widely considered to be a market leader in the manufacture and the design of high-end, high fidelity audio products. In addition, Roksan has a significant reputation and has acquired a vast amount of goodwill in the Roksan brand and trademarks in the United Kingdom and abroad in relation to a wide range of goods and services.
The Complainant is the owner of numerous registered and pending applications for ROKSAN trademarks and service marks, and for related marks in the United Kingdom and in many other countries. The applications for some of these marks were filed as early as January, 1989.
The Respondent responded to the Complaint on October 25, 2017.
The disputed domain name was registered by the Respondent on April 4, 2002. 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 and confusingly similar to the Complainant’s trademarks in which the Complainant has rights and the public have become accustomed to identifying the ROKSAN mark as referring to the Complainant.
2) the Complainant claims that the Respondent has no rights or legitimate interests in relation to the ROKSAN brand and the Roksan trademark which forms the disputed domain name. The disputed domain currently resolves to a holding page which appears to market the services of a company purportedly known as “Roksan Evergreen.” However, the Complainant believes that this purported company was set-up by the Respondent to attempt to hide its real purpose in registering and retaining the disputed domain, namely, to sell it to the Complainant or to a competitor for significant commercial gain. The Complainant’s belief is based on its observation that the disputed domain had been a blank page for extended periods of time, during which it simply stated that the disputed domain name was for sale, and that right after the Complainant contacted the Respondent on August 14, 2017 requesting the transfer of the disputed domain name, the Respondent updated its domain name to show certain content which the Complainant believes is simply a smokescreen to hide the Respondent’s true purpose to sell the disputed domain. The Complainant submitted various materials, including Google search results showing that (1) the purported company is not a trading company and it has no real goods or services, nor customers, and, therefore, the disputed domain is not being used in relation to a bona fide offering of goods and services; and (2) the Respondent is not making a legitimate or fair use of the disputed domain name.
3) the Complainant submits that the registration of the disputed domain is a classic example of bad faith in accordance with 4(b) of the Dispute Resolution Policy. The Complainant insists 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, in the alternative, 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. In fact, the disputed domain name has been for sale since it was registered and owned by the Respondent in 2002 and upon discussing the transfer of the disputed domain to the Complainant, the Respondent demanded that the Complainant pay the Respondent a sum of no less than USD 200,000. The Respondent also is the owner of more than 5000 other domains, many of which relate to brands in which the Respondent has no rights or legitimate interests, and are famous or well-known. B. Respondent
The Respondent responded to the Complaint on October 25, 2017.
The Respondent stated that the Complainant’s domain name is different from the disputed domain name . The Respondent claims that the term “roksan” is a Korean compound word consisting of the word “rok” and the word “san.” “Rok” is a Chinese word that means “green” or “deer,” and “san” means “mountain.” Many Korean words and their meanings/sounds are based on Chinese root words. In short, the word “roksan” means “green mountains” or “deer mountains” and has nothing to do with the Complainant’s business.
The Respondent also stated that it properly registered the disputed domain name on April 4, 2002, has been the owner of same for 15 years, and until it received the Complaint from the Complainant, no other party had ever raised an issue over the disputed domain name with the Respondent. The disputed domain name does not have any relationship with the Complainant’s business nor profit from same, and the Respondent is not only using the disputed domain name lawfully, but will also use it properly in the future.
Lastly, the Respondent contends that this action initiated by the Complainant constitutes 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 has indicated that it would accept 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 and other documents into Korean;
2) The disputed domain name resolves to a website which is in English;
3) Other domain names which are associated with the Respondent are all in English, which shows that the Respondent understands English; and
4) The Respondent responded in English to the Complainant’s initial request for the transfer of the disputed domain name, and the Respondent responded in English by seeking payment for said transfer. These facts support the fact that the Respondent understands the English language.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the ROKSAN mark and that the disputed domain name is identical to the Complainant’s “roksan” trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of a top-level domain such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0812).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a) (ii) 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 its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademark. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name “Roksan”.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 its 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 claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i), and has registered or has acquired the disputed domain name in order to market the sale of the disputed domain name and attract offers from Internet users for an amount in excess of the Respondent’s costs related to the disputed domain name. When the Complainant contacted the Respondent to seek the transfer of the disputed domain name via written correspondence, the Respondent requested that the Complainant pay a sum of USD 200,000 for the disputed domain name.
Although the Respondent responded to the Complaint, it did not rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel finds that the Complainant’s registered trademark, “Roksan” is well known, that it was registered as early as 1992, that it has been used for almost 25 years, and that it was registered much before the Respondent registered the disputed domain name. The disputed domain name is identical and confusingly similar to the Complainant’s trademark and even though the website at the disputed domain name displays a company called “Roksan Evergreen,” it is clear that this company does not engage in any type of actual business and the Respondent is trying to pretend that it is engaged in a business in order to retain the disputed domain name and to sell it to the Complainant or to any other company for commercial gain. Furthermore, the fact that the Respondent demanded USD 200,000 for the transfer – an amount far in exccess of its costs to maintain the registration – makes it clear that the Respondent registered the disputed domain name in bad faith.
Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in violation of paragraph 4(b)(i) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(i) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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.
Andrew J. Park
Sole Panelist
Date: November 22, 2017
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