The Complainant is Algaenergy, S.A. of Madrid, Spain, represented by Silex IP, Spain.
The Respondent is Jin Won Liu of Gwangju, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Inames Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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.
On October 11, 2018, 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 the same day, the Complainant requested that English be the language of the proceeding. On October 12, 2018, the Respondent requested that Korean 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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. On November 30, 2018, the Center informed the Parties that it would commence the panel appointment process.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 12, 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, AlgaEnergy is a technology-based Spanish company incorporated on November 1, 2007. The Complainant specializes in the field of microalgae biotechnology and its mission is to develop and commercialize high quality novel products derived from microalgae for use in nutritional products, cosmetics, and energy products, among others. The Complainant’s registered trademark ALGAENERY has been used for years and the Complainant has obtained fame within the areas of trade in which it operates.
The Complainant owns the following trademark registrations for ALGAENERGY:
- European Union Trade Mark (“EUTM”) No. 8368201 ALGAENERY (and device) registered on January 21, 2010, in classes 3, 4, 5, and 31;
- EUTM No. 11430881 ALGAENERY (and device) registered on May 21, 2013, in classes 40 and 42.
In addition, the Complainant is the owner of two domain names that include the name “algaenergy,” namely (registered on June 11, 2008) and .
The Respondent requested that the language of the proceeding should be Korean, however it did not submit a formal response to the Complaint.
The disputed domain name was registered by the Respondent on July 24, 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 a trademark in which the Complainant has rights. The word “algaenergy” in the disputed domain name is identical to the Complainant’s trademark ALGAENERGY and the name of the Complainant, which also includes the word “algaenergy”, namely, ALGAENERGY, S. A. The Complainant claims that the word “algaenergy” is distinctive per se, since it does not constitute a usual way to describe products and services, and because the Complainant’s trademark was registered earlier than the disputed domain name, the distinctive character of the previous registrations must be taken into account in order to assess whether there is a likelihood of confusion.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent does not own any registered trademark rights to the term “algaenergy” which comprises the disputed domain name. The Respondent has no evidence of the use of the disputed domain name and, furthermore, from the fact that the Respondent registered the disputed domain name only a few months after the Complainant’s trademark registration, it can be inferred that the Respondent’s only intention is to sell the disputed domain name to the Complainant, the legitimate owner of the trademark.
3) the disputed domain name was registered and is being used in bad faith.
The Complainant claims that it is evident that the Respondent registered the disputed domain name in order to sell it to the legitimate owner of the trademark or to a competitor of the Complainant, for a particular value that may far exceed the cost directly related to the disputed domain name. To prove this assumption, the Complainant produced its email communications with the Respondent where the Respondent stated, “Very high price. If you are interested, please present the price.” Below the email, the Respondent included a selection of buttons that can be clicked by the Complainant, as follows:
- “Sure, I will let you know”
- “What is your offer”
- “Not interested”
The Complainant argues that the above reveals that the Respondent is experienced with this type of transaction and that it has the technical infrastructure to engage in this type of kind of operation. The Complainant emphasized that registering domain names using a third party’s registered trademark for the primary purpose of offering to sell, rent, or otherwise transfer the domain names for an amount in excess of the registration cost is clear evidence that a domain name was registered and being used in bad faith. B. Respondent
The Respondent did not submit a formal response to the Complainant’s contentions. 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 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.
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) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is Spanish and the Respondent is Korean. Therefore English would be the fair language for both Parties.
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 mark, ALGAENERGY and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) extension “.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. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. 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 Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 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 trademarks. 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.
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 registered the disputed domain name primarily for the purpose of selling it either to the Complainant or to its competitors, thus, violating the Policy, paragraph 4(b)(i).
As already mentioned, the Respondent did not file a formal response to the Complaint, and offered no evidence to 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 Respondent has created a disputed domain name that is confusingly similar to the Complainant’s trademark, ALGAENERGY with the knowledge of the Complainant’s famous brand and its business from the fact that the Respondent registered the disputed domain name only a few months after the Complainant’s registration of the trademark ALGAENERGY. The Panel also finds that the email communications between the Complainant and the Respondent clearly show that the Respondent registered the disputed domain name with an intent to sell it to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs.
Accordingly, the evidence, which is not rebutted by the Respondent, 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 and likely also to resell the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs.
The conduct described above falls squarely within paragraph 4(b)(i) of the Policy and accordingly, 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: December 26, 2018
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