The Complainant is SICREDI PARTICIPAÇÕES S.A. of Porto Alegre, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Kim Changho of Gyeonggi-do, Republic of Korea, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom381, Incorporated (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018. On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 5, 2018. The Center received an informal email from the Respondent on October 6, 2018.
The Center verified that the Complaint together with the amended 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 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2018. The Center received informal emails from the Respondent on October 15 and 18, 2018. On October 28, 2018, the Respondent requested a two month extension of the Response due date. On November 1, 2018, the Complainant objected to the Respondent’s extension request. Under the circumstances of this case, the Center extended the Response due date until November 12, 2018. The Response was filed with the Center on November 12, 2018. The Center received an informal email from the Respondent on November 13, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 23, 2018. 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 was established in Brazil in 1902. It is a financial services co-operative. It is apparently the largest financial services co-operative in Brazil with over 3.8 million members and BRL 87.7 billion in assets.
The Complaint includes evidence that the Complainant has 48 registered trademarks in Brazil for, or containing, the word SICREDI. For many of these marks, the word SICREDI is a subsidiary element. However, the Complainant registered in 1987 Trademark No. 814022499, SICREDI, for a range of services in International Class 41. It also has registrations for SICREDI with a device element resembling a sun-burst or windmill in International Classes 36 and 42 dating from 2001 and, with a more modernized version of a windmill or waterwheel in International Classes 35, 36, and 41 dating from April 2016.
The Registrar has confirmed that the Respondent first registered the disputed domain name on November 25, 2017.
Shortly after the disputed domain name was registered, the disputed domain name resolved to a webpage which depicted a bucolic scene as background and stated “The domain name is for sale!” The domain name was listed with an asking price of USD 55,000.
At some point after the Complainant’s lawyers sent a cease and desist letter to the Respondent in August 2018, the website was changed. It now provides information about Seon Buddhism.
It appears that the Respondent has been a member of DomainL since May 2008 and has sold or offered for sale a number of domains through that website including , , , and .
Each of these domain names re-directs to a homepage of , which provides information “About Zen – The Right Way of Gong-an Seon”. The recent posts, categories, and archives are the same for each page. The archives consist of entries only for August 2016, September 2018 and October 2018. The September 2018 link advertises for sale for USD 50,000, a number of variants and for USD 80,000, amongst other domain names for sale. The October 2018 link sets out instructions to download a voucher towards payment for various web services. The Respondent is listed as the registrant for the domain name . 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Panel notes that the Registrar has confirmed that the registration agreement is in English. The Respondent has also submitted the Response in English. After submitting the Response in English, the Respondent also submitted a further document in Korean.
Under paragraph 11 of the Rules, therefore, the language of the proceeding is English unless the Parties agree otherwise, or the Panel determines otherwise.
The Panel does not consider it appropriate to depart from English as the language of the proceeding. The Complainant is Brazilian, but has submitted the Complaint in English. While communications from the Respondent have been in Korean, the Response has been submitted in competent English and the Respondent has not pointed to any hardship or prejudice resulting from the use of English. Moreover, the website to which the disputed domain name resolves, both before and after the cease and desist letter, is in English.
In these circumstances, the Panel does not include the late-filed document in Korean in the record. Having regard to the language of the case and the Respondent’s own use of English in both the Response and on the website, the failure to submit the document in English unreasonably prejudices the Complainant. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of its Brazilian registered trademark for SICREDI alone and, amongst the numerous other registered trademarks, SICREDI with the windmill or waterwheel devices.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective Parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.com” gTLD, the disputed domain name is identical to the Complainant’s trademark for SICREDI alone. It is at least confusingly similar to the Complainant’s registrations for SICREDI with the windmill / waterwheel devices as the verbal element of those marks is prominent and not subsidiary or insignificant. Accordingly, it is appropriate to apply the approach in WIPO Overview 3.0, section 1.10.
Accordingly, the Panel finds that the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. In addition, the Complainant contends that the word “Sicredi” is an invented word; not an ordinary dictionary word or descriptive term. Apparently, the Complainant was formerly known as Sistema Cooperativo de Crédito. It coined the trademark SICREDI from parts of the first and last words of its then name. Finally, the Complainant points out the use of the disputed domain name made by the Respondent offering it for sale excludes any argument that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or is engaged in a noncommercial use.
The Respondent says he registered the disputed domain name for use with a site dedicated to teaching and resources related to Seon Buddhism. This, the Respondent says, is a non-profit enterprise of religious or, perhaps, philosophical instruction. He denies knowledge of the Complainant and says that the disputed domain name is derived from the Chinese characters for “sim” (heart) and “credit” or “one credit”. The Respondent states that he has been using the disputed domain name since June 2001.
First, as noted above however, the Registrar has confirmed that the disputed domain name was first registered to the Respondent on November 25, 2017.
Secondly, the Respondent invokes material on the Wayback Machine at “” in support of his claim of usage since 2001. Entering the disputed domain name in the Wayback Machine, however, shows that a website was crawled between 2001 and February 2005, then not again until November 2006. Then nothing until early 2011. Then another break of more than 6 years until November 2017, when the Registrar states the Respondent first registered the disputed domain name.
The website crawled in February 2011 is in Korean. According to Google Translate, the text on the website related to discussion about various political issues. The website captures for 2002 and 2003 redirected to the website for , an online shopping market for cosmetics and the like.
These matters do not support the Respondent’s claim that he has been using the disputed domain name since 2001.
Thirdly, the website does resolve to information about Seon Buddhism now. Before the Complainant’s cease and desist letter, however, it resolved to a parking page where the disputed domain name was offered for sale for USD 55,000.
The Respondent says that listing and webpage were done without his knowledge by a team member. Somewhat inconsistently with this claim, the Respondent also says the USD 55,000 fee is justified by employment fees, maintenance server fees, design fees, publishing fees, and other fees incurred in relation to the disputed domain name. These claims are not supported with any objective documentation such as invoices or receipts.
Further, the Complainant points out that the price claimed on the website was supported by traffic statistics showing the disputed domain name attracted between 2,500 and over 3,500 visits per month. As the Complainant also points out, those figures were at a time when the website had no content – other than the offer for sale. As the disputed domain name is a coined term and not one which is descriptive or otherwise an ordinary dictionary word, there is considerable force in the Complainant’s claim that traffic to the website at that level is explained only by the Complainant’s customers mistakenly visiting the website.
Fourthly, as noted above, it appears that the Respondent has registered a number of domain names with the intention of reselling them. A number of those domain names also include information about Seon Buddhism on their landing pages, albeit in somewhat different form to the page to which the disputed domain name resolves. However, all of the domain names in question, including , whose website they redirect to, are offered for sale at prices in the thousands of dollars.
In these circumstances, the Panel is not prepared to accept the Respondent’s claims that he has been using the term “Sicredi” since 2001 and registered the disputed domain name in connection with a proposed website promoting Seon Buddhism.
Accordingly, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd.,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The arguments made by the Parties essentially reflect those already summarised in section 5B above.
On both Parties’ cases, the term “sicredi” is a coined or invented term. It appears from the record that the term “sicredi” as an invented word has significance only as the Complainant’s trademark. That appears the far more likely explanation for the high levels of traffic to the disputed domain name and the very high price for which the disputed domain name was listed for sale. There is nothing in the record to suggest that the Chinese characters the Respondent claims to have derived the term “sicredi” from have any wide recognition or popularity in Seon Buddhism or otherwise.
The usage made by the Respondent is use in bad faith under the Policy in circumstances where it has been found that the Respondent does not to have rights or legitimate interests in the disputed domain name.
The deployment of the disputed domain name for use in that manner shortly after its registration supports an inference that the disputed domain name was registered for that purpose. In other words, that conduct gives rise to an inference that the disputed domain name was registered in bad faith. That conclusion is supported by the number of the other domain names which the Respondent has registered and offered for sale including the range of prices those domain names were or are listed for. In that connection, the Panel notes that the price listed for the disputed domain name was very much higher than some of the other domain names – USD 55,000 compared to USD 2,000 or 3,000.
Therefore, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: December 11, 2018
Full & Egal Universal Law Academy