The Complainant is Wedi GmbH, Germany, represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Germany.
The Respondent is Dong Jin Kim, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2020, 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 15, 2020, the Center transmitted an email in English and Korean to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 16, 2020. On October 20, 2020, the Respondent requests to conduct the administrative proceeding in Korean. 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 October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. On November 6, 2020, the Respondent requested to extend the response due date. Accordingly, the Respondent was granted the automatic four calendar day extension for response. On November 12, 2020, the Respondent requested another extension for response. The Complainant gave the comments on November 13, 2020 regarding the extension. On November 24, 2020, the Center in accordance with paragraph 5(e) of the Rules grants the extension to file a response until November 30, 2020. The Respondent filed the response in Korean on November 30, 2020. The Center appointed Moonchul Chang as the sole panelist in this matter on December 30, 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. On January 9, 2021, the Panel issued a procedural order (the “Procedural Order”) directing the Parties to provide further information. On January 18, 2021, the Parties filed submissions and evidence in response to the Procedural Order. On January 22, 2021, the Respondent filed further submissions. 4. Factual Background The Complainant, Wedi GmbH, was founded in the 1983 as Wedi Wannenbauelemente GmbH by Helmut Wedi and has grown as a leading manufacturer and system provider of tileable building materials and waterproof shower and construction system in the European Union and North America. The Complainant has obtained registrations for the International Trademark WEDI Registration No. 780068 (Registration date of January 29, 2002); however, the evidences submitted to the Panel show that the WEDI trademarks predating the registration of the disputed domain name are all owned by SW Verwaltungs GmbH. In addition, the Complainant has used the domain name According to the publicly available WhoIs information and confirmed by the Registrar, the disputed domain name The Complainant contends that: (1) The disputed domain name is identical or confusingly similar to the Complainant’s trademark because it contains the WEDI mark in its entirety. Since the word “wedi” is a family name of the founder of the Complainant’s company, the Complainant has been using the WEDI mark as the trade name and the trademarks such as German WEDI mark of Registration No. 1056602 (registration date December 1, 1983), WEDI International mark of Registration No. 557360 (registration date February 19, 1990), and WEDI EU mark of Registration No. 66993 (registration date April 21, 1998) and International Trademark WEDI Registration No. 780068 (Registration date of January 29, 2002), etc. (2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has the exclusive right of the WEDI trademark and has never authorized the Respondent to register or use the disputed domain name. The Respondent is not commonly known by the disputed domain name. (3) The disputed domain name was registered and is being used by the Respondent in bad faith. Firstly, the Respondent has failed to explain why he has not properly used the disputed domain name for 20 years and to provide any plausible evidence demonstrating that he has a solid reason for using it. In addition the Complainant alleges that before the Complainant got into contact with the Respondent, the Respondent’s website only showed the sign “under construction” and then its website was in operation immediately after contacting the Respondent. Secondly, given the Complainant’s widespread use of the mark in connection with tileable building materials, the floor-level shower and the design modules the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and its use of WEDI mark at the time of registering the disputed domain name. Thirdly, the Respondent has a tendency to register the domain names that incorporate other’s trademarks. In addition the Respondent’s prior adverse UDRP decisions constitute further evidence of a pattern of bad faith registration. (see MPDV Microlab GmbH v Dongjin Kim, WIPO Case No. D2008-0065; Volkswagen AG 대김동진, WIPO Case No. D2003-0582). B. Respondent The Respondent contends that: (1) Although the disputed domain name is identical to the Complainant’s trademark, the Respondent registered the disputed domain name (2) The Respondent has rights or legitimate interests in the disputed domain name because the disputed domain name was legitimately registered and was not registered by the Respondent in bad faith. The Respondent registered the disputed domain in attempt to conduct its noncommercial business of wedding information, considering that “wedi” means “wedding information” service. In the beginning the Respondent failed to obtain the disputed domain name (3) The Respondent replies that the disputed domain name is neither registered nor is being used in bad faith. Firstly, it is impossible that the Respondent registered 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 or the registration date of the WEDI 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. The Complainant is unable to communicate in Korean and the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings. When the Complainant previously sent email communication to the Respondent, he responded to the Complainant in English, which indicates that the Respondent is able to communicate in English. On the other hand the Respondent requests to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and he does not fully understand English. 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 the 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 Decision in English and any other communications between the Center and the Parties in a bilingual manner in both English and Korean. 6.2. Substantive issues 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 The Panel observes that the disputed domain name was registered on August 10, 2000, predating the Complainant’s trademark which was registered on January 29, 2002. (International Trademark WEDI Registration No. 780068); the evidences submitted to the Panel show that the WEDI trademarks predating the Respondent’s registration of the disputed domain name are currently owned by SW Verwaltungs GmbH. 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 3.0). This will be discussed further under the Section 6.2.C. 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. These requirements are conjunctive; each must be proven or the Complaint fails. In this proceeding the Panel needs look no further than the Complaint to determine that the Complainant has not established that the Respondent registered the disputed domain name in bad faith. Firstly, in this present case, the disputed domain name was registered on August 10, 2000 prior to the Complainant’s registration of the WEDI trademark on January 29, 2002. Although the Complainant alleges its ownership of the numerous WEDI trademarks predating the registration of the disputed domain name, the evidences submitted to the Panel show that the WEDI trademarks predating the registration of the disputed domain name are currently owned by SW Verwaltungs GmbH, which is an independent legal entity, different from the Complainant. Here, it is questionable that the Complainant did not registered the domain name Even assuming that the Complainant could show authorization to hold and use the WEDI mark, it would not change the analysis or outcome here. Most importantly, given that the registration of the disputed domain name predates the relevant trademark rights, but not their claimed first use, it would be incumbent on the Complainant to show sufficient reputation that would make it incontrovertible that the Respondent knew of and targeted the Complainant when it registered the disputed domain name. Secondly, 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 Complainant’s trademark as of the time the domain name was registered.(Section 3.8.1 of WIPO Overview 3.0) These exceptional cases include the limited circumstances where the respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s unregistered mark in anticipation of obtaining trademark rights; for example, (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. In this respect the Complainant fails to prove such exceptional circumstances that the Respondent registered the disputed domain name in bad faith. Thirdly, the Complainant contents that the Respondent knew or at least should have known, of the existence of the Complainant’s trademark and its use of WEDI mark at the time of registering the disputed domain name. On the other hand the Respondent responds that he was not aware of the Complainant’s trademark at time of registering disputed domain name because the Complainant’s trademark is neither famous nor widely known in the Republic of Korea where the Respondent resides. The Respondent claims that he registered the disputed domain name for the noncommercial business of wedding information, considering that “wedi” means “wedding information” service. In this respect the Complainant failed to prove the distinctiveness and reputation of the WEDI mark in the jurisdiction of the Respondent at the time the disputed domain name was registered and could not persuade the Panel to consider that a respondent knew or should have known that its registration would be identical to the Complainant’s WEDI mark. Fourthly, the Complainant refers the Telstra case to prove the Respondent’s bad faith registration. (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.) However, the present case is quite different from the circumstance of the Telstra case, in which (i)the trademark was distinctive and widely known around world (ii) the Respondent took active steps to conceal its identity (iii) the Respondent breached the registration agreement by providing false contact details. Thus, so-called “passve holding” bad faith can not apply to this case. Finally, the Complainant asserts that the Respondent has the tendency of registering numerous numbers of domain names that incorporate others’ trademarks. However, simply owning a number of domain names is not of itself evidence of bad faith. Unless the Respondent does not infringe on the Complainant’s right in the WEDI mark, its registration and use of the domain name may be allowed. 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 trademark and to target the owner of the trademark. Further, there is no evidence before the Panel of any sale by the Respondent of these domain names. While passive holding can, in some circumstances, support a finding of bad faith registration given in particular the timing, there is no basis for such an assertion here because the trademark is neither famous nor widely known at the time of registration of the disputed domain name. 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”. In consideration of the circumstance that the Complaint had obtained the ownership of the WEDI trademark predating (in particular as to first claimed use) the Respondent’s registration of the disputed domain name which later transferred it to the other, 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. The Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking. 7. Decision For the foregoing reasons, the Complaint is denied. Moonchul Chang
Sole Panelist
Date: January 24, 2021
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