The Complainant is Fundación Universitaria Iberoamericana (Funiber), Spain, represented by EMME & PI, Spain.
The Respondent is Jungyuhkook, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 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 November 20, 2019, the Respondent requested for Korean to be the language of the proceeding. On November 22, 2019, 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 in English and Korean of the Complaint, and the proceedings commenced on November 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2019. The Respondent did not submit any formal response. The Center notified the Parties on December 20, 2019, that it would proceed to panel appointment. The Center appointed Andrew J. Park as the sole panelist in this matter on January 10, 2020. 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 Fundación Universitaria Iberoamericana, a Spanish scientific and research academic institution that links professional universities and institutions in order to offer a global education. Fundación Universitaria Iberoamericana is also known by its acronym “Funiber.” The Complainant incorporates the world of universities and the world of training to offer in-class and online courses to individuals and companies. The Complainant was created in Barcelona, Spain in 1997 and since then it has continued to grow creating an academic and professional network that is currently present in more than 30 countries, including those in Asia. Individuals in more than 60 European, the United States of America and Latin American universities, enterprises and organizations are part of this network. The Complainant filed and registered several trademarks both in the European Union and in other jurisdictions worldwide in order to protect its intellectual property rights over the name “Funiber.” The Complainant is the owner of the following FUNIBER trademark registrations. Graphic Trademark Jurisdiction Registration number Status Nice Class Registration date FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Peru S00055190 Registered 41 February 24, 2009 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Costa Rica 237181 Registered 41 July 31, 2014 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Mexico 1470352 Registered 41 July 15, 2014 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Spain 3535177 Registered 41 March 18, 2015 FUNDACIÓN UNIVERSITARIA IBEROAMERICANA FUNIBER Colombia 14255162 Registered 41 April 21, 2015 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Puerto Rico 208785 Registered 41 January 27, 2015 FUNIBER + LOGO African Intellectual Property Orginization 083312 Registered 35,41, and 42 June 30, 2015 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Uruguay 465731 Registered 41 June 21, 2017 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA European Union 014297865 Registered 16,41, and 42 October 26, 2015 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Chile 1274665 Registered 41 May 10, 2018 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Bolivia 134760 Registered 41 March 23, 2012 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Honduras 21477 Registered 41 July 21, 2015 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Nicaragua 2014104549 Registered 41 June 3, 2014 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Panama 245144 01 Registered 41 November 15, 2016 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA Guatemala 207492 Registered 41 July 10, 2015 FUNIBER Dominican Republic 2015-3373 Registered 41 March 16, 2015 The Complainant also owns more than 120 domain names that include the term “Funiber.” The disputed domain name The webpage which the disputed domain name resolves to contains messages related to a supposed website under construction. 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 2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent is not related in any way to the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Further, the Complainant has not granted the Respondent a license nor authorization to make any use of the trademark nor apply for registration of the disputed domain name. Also, the Respondent is not commonly known by the disputed domain name and has not acquired any rights on the term “Funiber.” The website which the disputed domain name resolves to includes only messages that the website is under construction. There is no evidence that the Respondent has used or has made demonstrable preparations to use the disputed domain name, or any name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without an intent of commercial gain. 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: (i) the Respondent was aware of the Complainant and its trademark at the time of registration of the disputed domain name; (ii) the Respondent attempted to sell the disputed domain name through domain name sales platforms such as “Sedo” and “GoDaddy” asking exorbitant prices, such as USD 99,000 and USD 77,000. The Complainant emphasizes that the Respondent’s general offer to sell the disputed domain name for an amount in excess of out-of-pocket costs can be evidence of bad faith under Policy, paragraph 4(b)(i); (iii) the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant, preventing the Complainant from reflecting its trademark in a corresponding domain name; and (iv) the Respondent was involved in a prior UDRP case, Institut de Recherche Biologique – IRB v. Jungyuhkook,WIPO Case No. D2018-2125. In this case, it was ruled that the disputed domain name included the trademark of a French Institute of Biology Research and was therefore transferred to the Complainant in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules. This case also concerns another European institute of education and research, and thus showing the Respondent’s same pattern of bad faith. B. Respondent The Respondent did not submit a formal response. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth three requirements which must 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 the Proceeding The registration agreement for the disputed domain name is in Korean. The Complaint has been submitted in English. 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 is in English and Korean; 3) the Panel is proficient in both English and Korean, capable of reviewing all documents and materials in both languages and giving full consideration to the Parties’ respective arguments; and 4) the Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is Spanish and the Respondent is Korean. Therefore, English would be a fair language for both Parties. In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) consider any relevant materials in Korean; and (3) 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 FUNIBER FUNDACIÓN UNIVERSITARIA IBEROAMERICANA and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the dominant feature of the Complainant’s trademark, FUNIBER, which is clearly recognizable in the disputed domain name as it is included in its entirety. The addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see 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 Panel finds 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 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 (ii) by registering the disputed domain name in order to (1) sell the disputed domain name to the public or to the Complainant in an amount in excess of the Respondent’s costs related to the disputed domain name, and (2) 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. As stated previously, the Respondent did not file any formal response to the Complaint, failing thereby 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 Complainant has been registering its trademarks in many countries since 2009 and has been using its trademark for approximately 10 years. The Complainant registered its trademark much before the Respondent registered the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s trademark and the website of the disputed domain name only contains messages that it is under construction and coming soon. Based on this fact, together with other facts noted herein, it is reasonable to conclude that the Respondent is not doing anything with the disputed domain name except trying to sell it through various domain name sales platforms. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s trademark and its business. The Panel also confirms that there is no evidence whatsoever that the Respondent is currently using or is 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 “Funiber.” The Respondent is attempting to sell the disputed domain name to the Complainant or to any other third party at advertised prices of USD 77,000 and USD 99,000, both of which are far in excess of the Respondent’s out-of-pocket costs for the registration of the disputed domain name. It is therefore clear that the Respondent is acting in bad faith. Furthermore, the Panel finds out that the Respondent was engaged in several other UDRP cases, one of which was related to a domain name that included a French Institute of Biology Research product. Based on the facts of record in this case, it is reasonable to believe that the Respondent acquired the disputed domain name for reasons consistent with his past pattern of conduct to register domain names bearing famous third-party trademarks in order to prevent the owner of the trademark or service mark from reflecting said mark in a corresponding domain name. Cybersquatting is clear evidence of bad faith registration and use of a domain name. 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 in violation of paragraph 4(b) of the Policy. As the conduct described above falls squarely within paragraph 4(b)(i) and (ii) 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 Andrew J. Park
Sole Panelist
Date: January 27, 2020
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