The Complainant is Actovent GmbH, Germany, represented by LS-IP Loth & Spuhler GbR Intellectual Property Law, Germany.
The Respondent is Beats, 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 February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2021, 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. 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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2021. On March 18, 2021, due to an apparent issue with the notification, the Center granted the Respondent a five-day period in which to indicate whether it wished to participate to this proceeding. The Center did not receive any communication from the Respondent. The Center appointed Andrew J. Park as the sole panelist in this matter on March 31, 2021. 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, Actovent GmbH, is a medium-sized German company which was established on August 13, 2008. The Complainant specializes in offering high quality products and extensive accessories in the area of ventilation to ensure that people breathe clean air and that polluted air is not released into the environment. The Complainant also offers various consulting services, such as customer needs assessments, project planning support, provision of technical aids, and arrangement of on-site consultations. The Complainant owns various national and International trademark registrations for “actovent.” The Complainant promotes its trademarks worldwide with its official website under the domain names Jurisdiction Trademark Registration No. Application Date Registration Date Germany 302008068302 October 27, 2008 April 1, 2009 European Union Trademark 008279689 May 5, 2009 January 9, 2010 The disputed domain name The disputed domain name does not resolve to an active website. Prior to the filing of the complaint, the Complainant contacted the Respondent in connection with the possible transfer of the disputed domain name, and at that time, the Respondent offered to sell the disputed domain name for USD 50,000. The Respondent holds over 100 domains including the disputed domain name. 5. Parties’ Contentions A. Complainant 1) The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing two main reasons, a) English is a language of business, which is understood by the Respondent and the Registrar, and the Registrar’s website is also available in English. b) The Respondent and the Complainant have corresponded in English in the past regarding the transfer of the disputed domain name 2) The Complainant contends that the disputed domain name should be transferred to the Complainant because: (a) the disputed domain name (b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any right or legitimate interest in the disputed domain name because the Complainant has not licensed or otherwise permitted the use of its registered trademark ACTOVENT, and there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. There is also no indication of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods and services. In addition, the Respondent has not been commonly known by the disputed domain name, nor has acquired the trademark or service mark rights. (c) the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent intentionally registered the disputed domain name, which is identical to the Complainant’s famous and widely known trademark. The Complainant contends that the disputed domain name was registered only after the filing date of the Complainant’s trademark. The Complainant further contends that even if the disputed domain name was registered before the filing date of the Complainant’s oldest trademark, this registration took place only a short time before the filing date of the Complainant’s oldest trademark and only after the Complainant had registered several domain names including the term “actovent.” This, the Complainant insists, demonstrates that the Respondent knew or should have known in advance of the possible registration and use of the Complainant’s trademark prior to the registration of the disputed domain name. The Complainant believes that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent trademark rights. The Complainant also claims that the Respondent had acquired and registered the disputed domain name in bad faith either to display a “for sale” indication or to use it as a parking site. The Respondent has used the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name and for the purpose of disrupting the Complainant. The Respondent’s passive holding of a disputed domain name without using it in the course of business for an extended period of time is within the concept of “being used in bad faith”. Further, the Respondent had offered to sell the disputed domain name B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Issue: Language of the Proceeding The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) 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 Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments; and 3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in Germany while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties. 4) Even though given the opportunity, the Respondent has not objected to English being the language of proceeding, or made any other comments in this regard. 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. 6.2. Substantive Issues 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 trademark ACTOVENT 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 use 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 identical to the Complainant’s trademark. 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 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. The Respondent has shown no actual intention to use the disputed domain name. The website which the disputed domain name resolves to is inactive. 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. In addition, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). 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. 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 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 Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly 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 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 registered multiple domain names with various Top-Level Domains (“TLDs”) on August 9, 2008 which is prior to the Respondent’s registration date of the disputed domain name and also filed the trademark, ACTOVENT on October 27, 2008. Ever since the Complainant registered its trademark ACTOVENT in 2009, it has been using the trademark (for more than 10 years now). During the course of the Panel’s review of the Complainant’s website, it discovered the sentence “actoVent: we act for ventilation – we care about clean air!”. This sentence affirms that the Complainant created its own trademark ACTOVENT that serves as an identifier of the Complainant and its goods/services. The Panel finds that these facts clearly show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it registered the disputed domain name in an attempt to show some business relationship between the disputed domain name and the Complainant. Thus, it is determined that the Respondent registered the disputed domain name more likely than not in bad faith with the knowledge of the Complainant’s trademarks and business. Also, the website which the disputed domain name resolves to is inactive and 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 the disputed domain name. Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the Complainant’s trademarks and prevented the Complainant from reflecting the mark in a corresponding domain name in order to resell the disputed domain name to the Complainant or its competitors for commercial gain. The Panel further notes from the evidence of record, that the Respondent offered to sell the disputed domain name to the Complainant for the price of USD 50,000, which is significantly more than the actual cost to register the disputed domain name. 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: April 15, 2021
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