The Complainant is Miami International Holdings, Inc., United States of America (“United States”), represented by Mayer Brown LLP, United States.
The Respondent is Dong Jin Kim, Republic of Korea, self-represented. 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 June 11, 2019. On June 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2019, 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 June 20, 2019, 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 June 20, 2019, the Complainant requested for English to be the language of the proceeding. On June 25, 2019, 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 in English and Korean of the Complaint, and the proceedings commenced on June 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2019. Upon request of the Respondent, pursuant to the Rules, paragraph 5(b), the due date for Response was automatically extended to July 22, 2019. On July 19, 2019, the Respondent requested a two-week extension of the time to file a Response. On the same date, the Center invited the Complainant to comment on the Respondent’s request for a further extension. The Complainant did not submit any comments. On July 24, 2019, in accordance with the Rules, paragraph 5(d), the Center granted the Respondent a requested extension of the due date of the Response, and confirmed that the new Response due date was August 5, 2019. The Response was filed with the Center on August 5, 2019.
The Center appointed Moonchul Chang as the sole panelist in this matter on August 29, 2019. 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.
On September 19, 2019, the Panel issued a procedural order (the “Procedural Order”) directing the Parties to provide further information. On September 24 and 25, 2019, the Parties filed submissions and evidence in response to the Procedural Order. 4. Factual Background
The Complainant, Miami International Holdings, Inc., incorporated in the United States, on November 14, 2007, registered the MIAX trademark on May 5, 2015 in the United States. Its filing date of the trademark application for the MIAX mark is July 12, 2010 and the first using date of the MIAX mark is December 7, 2012. The Respondent, Dong Jin Kim, registered the disputed domain name on August 11, 2000.
The Respondent is now using the disputed domain name in association with the website of missing children information service. 5. Parties’ Contentions A. Complainant
(1) The Complainant contends that the disputed domain name is identical or confusingly similar to the MIAX trademark. The disputed domain name includes the MIAX trademark in its entirety.
(2) The Complainant contends that the Respondent has no rights in the disputed domain name. Since the Respondent registered the disputed domain name in 2000, the Respondent has not used it noncommercially and fairly. Instead, the disputed domain name is recently directed to a placeholder website that returns information regarding child safety shortly after the Complainant sent the cease and desist letter to the Respondent.
(3) The Complainant further contends that the Respondent has registered and used the disputed domain name in bad faith. Despite the Complainant’s several attempts to contact the Respondent, the Respondent both replied neither to any messages nor to the letter of cease and desist. Further, the Respondent did not use the disputed domain name since the time of its creation in 2000 until June 2019, of which such non-use or passive use is an evidence of bad faith. In addition it is another indicative of the Respondent’s bad faith registration and cyber-squatting that the registrant Dong Jin Kim with email address […]@ has registered a total of 1,703 domain names most of which are inactive as a report from domainIQ.com shows (Exhibit D). The Respondent added a single page of illegitimate placeholder content to the website located at the disputed domain name shortly after he received the Complainant’s demand letter. This action is also further evidence of bad faith. B. Respondent
(1) The Respondent replies that although the disputed domain name is identical to the Complainant’s MIAX trademark, the disputed domain name was registered prior to the Complainant’s first using date of the MIAX name or the registration date of the MIAX trademark. The Complainant’s entity was incorporated in the United States in November 2007 and the registered the MIAX trademark in May 2015, which name was first in use since December 2012. It is impossible that the Respondent registered the disputed domain name in bad faith.
(2) The Respondent replies that it has legitimate rights in respect of the disputed domain name. The Respondent is currently using the disputed domain name fairly for noncommercial purpose only. The disputed domain name resolves to the website for missing child information service and protecting for child safety. The Respondent registered the dispute domain name in hope of no missing children in the world because “mia” means missing children in the Korean language.
(3) The Respondent replies that the disputed domain name is neither registered nor is being used in bad faith. Since the Respondent had no intention to sell the disputed domain name to others, he did not respond to the Complainant’s several offers or messages. This shows that the Respondent did not register the disputed domain name in purpose of selling it to others. The failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name.
(4) The Respondent asserts that the Complaint was brought in bad faith, especially in an attempt at Reverse Domain Name Hijacking. The Complainant knew that it could not succeed since the disputed domain name was registered much prior to the Complainant’s filing date of trademark application, the first using date of the MIAX name or the registration date of the MIAX trademark. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel determines otherwise or otherwise agreed to by the Parties. In this present case the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean.
However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons. Firstly, the Complainant is not conversant in Korean. Secondly, the website to which the disputed domain name resolved displayed some words in English. This is indicative that the Respondent is able to communicate in English. Finally, to proceed otherwise would be to apply a strict application of paragraph 11 that may result in delay and considerable and unnecessary expenses of translating documents. On the other hand the Respondent requests to conduct the administrative proceeding in the Korean language since he is a Korean national and the language of the registration agreement is Korean.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in this administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Administrative Panel Decision in English. 6.2. Merits
Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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. A. Identical or Confusingly Similar
The disputed domain name incorporates the term “miax” which is entirely identical to the Complainant’s MIAX trademark. The Complainant has submitted evidence to show that it owns the MIAX trademark, with a United States registration dating from May 5, 2015 and the mark was firstly used on December 7, 2012. The Panel observes that the disputed domain name was registered on August 11, 2000, predating the Complainant’s trademark; however, for purposes of the first element under paragraph 4(a) of the Policy, the “UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights[.] […] Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.” (Section 1.1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In addition, numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to find the domain name “identical or confusingly similar” within the meaning of the Policy (see A, Inc. v. MCL International Limited,WIPO Case No. D2000-1678).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusion below under the third element. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith.
Previous UDRP panels’ consensual view is that, absent exceptional circumstances, when a domain name is registered by the respondent before the complainant’s trademark right, the domain name can generally not have been registered in bad faith, as the respondent could obviously not have been aware of the non-existing complainant’s trademark as of the time the domain name got registered (see section 3.8.1 of WIPO Overview 3.0).
In the present case, the disputed domain name was registered on August 11, 2000 much earlier than the Complainant registered the MIAX trademark on May 5, 2015. The Respondent could not have been aware of the non-existing Complainant’s trademark at the time of registering the disputed domain name.
The Complainant asserts that the Respondent has engaged in a pattern of conduct of registering domain names for the purpose of selling, as he owns 1,703 domain names, most of which are inactive. However, simply owning a number of domain names is not of itself evidence of bad faith. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trademarks. There is no evidence of any sale by the Respondent of any of these domain names. Further, while passive holding can, in some circumstances, support a finding of bad faith given in particular the timing there is no basis for such an assertion here. Thus, there is no evidence that the Respondent has used the disputed domain name in bad faith.
The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Rules provides that, “If after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel cannot conclude that the Complainant filed its Complaint in bad faith for the purposes of RDNH, and mere lack of success of the Complaint is not in itself sufficient for a finding of RDNH.
The Panel is of the opinion that the Complainant has not filed its Complaint in bad faith as an attempt at RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
Moonchul Chang
Sole Panelist
Date: September 30, 2019
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