The Complainant is Media Hawk Limited, United Kingdom (“UK”), represented by Urquhart-Dykes & Lord LLP, UK.
The Respondent is MediaHawk Inc, 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 July 24, 2019. On July 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2019, the Registrar transmitted by email to the Center its verification response indicating that the registration agreement for the disputed domain name is in Korean and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On July 31, 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 the same day, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On August 1, 2019, the Complainant filed an amended Complaint and requested for English to be the language of the proceeding. On the same day, the Respondent requested for Korean to be the language of the proceeding.
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 in English and Korean of the Complaint, and the proceedings commenced on August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Response was filed with the Center on August 26, 2019.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 11, 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. 4. Factual Background
The Complainant, Media Hawk Limited, is a British company that is one of the pioneers of call tracking analytics and attribution solution providers. The Complainant was launched in 2002 and remained at the forefront of the industry. Its expertise spans a range of sectors, including publishing, media, automotive, healthcare, legal, finance, retail, travel, and technology. The Complainant enables its clients to track their advertising responses and improve sales conversions from all online and offline marketing campaigns in every region they are targeting.
The Complainant is the owner of the following UK trademark registrations:
Reg. No. 2527057 for MEDIAHAWK and logo, registered on January 1, 2010;
Reg. No. 3297939 for MEDIAHAWK (stylised), registered on August 17, 2018; and
Reg. No. 3364460 for MEDIAHAWK, registered on May 24, 2019.
The earliest of the foregoing trademark registrations was registered in 2010. The Complainant has also held the domain name since 2002.
The disputed domain name was registered by the Respondent on March 27, 1997. The webpage which the disputed domain name resolved to had several commercial links which were all in English and had advertised the sale of the disputed domain name.
On August 1, 2019, the Respondent sent an informal email communication requesting for Korean to be the language of the proceedings. The Complainant also requested for English to be the language of the proceedings because (1) the website which the disputed domain name resolves to is in English; and (2) the translation of the Complaint and other related documents will incur additional costs for the Complainant. 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. The Complainant is the owner of UK trademark registrations for MEDIAHAWK and logo (Reg. No. 2527057); MEDIAHAWK (stylised) (Reg. No. 3297939); and MEDIAHAWK (Reg. No. 3364460). Among these, the earliest registered was in 2010. The Complainant has also held the domain name since 2002.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that there is no evidence of 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. The Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name. The Respondent is making no legitimate noncommercial or fair use of the disputed domain name, but rather, with the intent for commercial gain by misleadingly diverting consumers or to tarnishing the trademark or service mark at issue.
3) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent registered the disputed domain name in bad faith because the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name; and the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct. B. Respondent
The Respondent contends that it registered the disputed domain name on March 27, 1997, which predates the Complainant’s trademark registration date, and therefore, the Complainant has no rights or legitimate interests in respect of the disputed domain name.
The Respondent claimed that since it showed clear evidence that the disputed domain name was registered prior to the Complainant’s trademark, the Complaint is not valid and that it did not register the disputed domain name in bad faith. 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 must 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 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 website which the disputed domain name resolved to contains links which are all in English;
3) The Respondent has submitted a Response to the Complaint in Korean that included citations to specific paragraphs in the Complaint. This shows that the Respondent does understand English.
4) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) accept the Response in Korean; and (3) issue a decision in English. A. 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 MEDIAHAWK and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of the generic Top-Level Domain (“gTLD”) extension “.com” 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 identical or confusingly similar to the Complainant’s trademarks. B. 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 would ordinarily find that the Complainant has made out a prima facie case; at the same time, given the findings below, it is not necessary to make a specific finding here. C. 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 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 first argued that the Respondent registered the disputed domain name in bad faith because “it was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs […]”. It also argued that the disputed domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.
In short, the Complainant provided no evidentiary basis for these claims. Among other things, the Panel finds that the disputed domain name is essentially the combination of two common words and that the Respondent registered it as a domain name in 1997, some five (5) years prior to the founding of the Complainant, and some 12 years before the registration date of the Complainant’s first trademark application for the MEDIAHAWK trademark. It is a well-settled principal that panels will not find bad faith registration (barring certain limited exceptions that do not apply in this case) where the respondent’s domain name registration predates the complainant’s trademark rights. See section 3.8.1 of WIPO Overview 3.0. Thus, the question is how each of the Respondent’s arguments summarized above, can be valid and/or material, when the Complainant did not have any trademark rights at the time the Respondent registered the disputed domain name. In this case, the Complainant has not offered any factual nor legal arguments, nor evidence to address this key issue.
The Complainant’s evidence to support the claim that the Respondent engaged in a pattern of bad faith registrations (namely, by providing a list of prior WIPO panel decisions involving the Respondent) is not persuasive. It is certainly recognized that such fact can be material to the issue of bad faith registration under certain circumstances. However, as mentioned above, the principle that bad faith will not be found where the respondent’s domain name registration predates the complainant’s trademark rights must dictate a finding of no bad faith registration in this case. Moreover, even putting aside this conclusion for the moment, the Panel notes that the level of materiality of the prior cases can vary significantly from case to case, depending on the individual factual circumstances and the legal merits. In this case, the Complainant did not discuss any of the factual and legal circumstances surrounding the prior WIPO decisions that could lead to even an inference that the Respondent’s registration of the disputed domain name was in bad faith due to a pattern of engaging in such conduct. The Panel notes, for instance, that many of the other cases concerning the Respondent involved well-known trademarks whose trademark registrations predated the respective domain name registrations. Therefore, the relevance of such prior cases and their impact on this case does not assist the Complainant.
Accordingly, the Panel concludes that the Complainant has not met its burden pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Date: September 25, 2019
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