The Complainant is 4activeSystems GmbH, Austria, represented by boesling IP Rechtsanwälte PartG mbB, Germany.
The Respondent is Domain Privacy Services, Republic of Korea / Magus Technology Corp, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name <4activesystems.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2021 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 24, 2021. The Center also sent an email communication to the Parties regarding language of proceedings on March 24, 2021. The Complainant requested English to be the language of proceedings on March 24, 2021. On March 29, 2021, the Respondent sent an email communication in Korean to the Center with procedural queries.
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 of the Complaint in Korean and in English, and the proceedings commenced on March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit a formal response. On April 22, 2021, due to an inadvertent administrative oversight with the notification, the Center granted the Respondent a five-day period in which to indicate whether it wished to participate in this proceeding through April 27, 2021. The Center did not receive any communication from the Respondent during this period. Accordingly, the Center commenced Panel Appointment Process on April 28, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on May 10, 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, 4activeSystems GmbH, is a private limited liability company incorporated under the laws of Austria on March 30, 2015. The Complainant is a market leader in advanced testing technologies for active vehicle safety and provides innovative solutions to reduce road fatalities and ensure safety and compliance with the highest international standards around the globe. The Complainant has offices in Austria, Japan, and Germany serving vehicle manufacturers, test labs and automotive suppliers worldwide.
The Complainant owns European Union and International trademark registrations for 4ACTIVE, and also owns the protection of its registered business name “4activeSystems GmbH” under Section 12 of the Austrian Act on the Protection of Trademarks. The Complainant uses the domain name <4activesystems.at> for its official website. Jurisdiction Trademark Registration No. Registration Date Classes
European Union
4ACTIVE
14777593
March 25, 2016
9 and 42
International
4ACTIVE
1303680
May 10, 2016
The Complainant requested English to be the language of proceedings on March 24, 2021. On March 29, 2021, the Respondent sent an email in Korean to the Center asking procedural queries concerning needed documents. However, the Respondent did not submit any formal response.
The disputed domain name <4activesystems.com> was registered by the Respondent on September 3, 2020 and resolves to a parking page. 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 four main reasons.
(a) The disputed domain name is a .com Top-Level-Domain (“TLD”), indicating that it is intended to be used by an international and commercial organization with no particular focus on any specific country, region or territory and therefore, it can be assumed that the Respondent is interested in using the disputed domain name in international commerce where English is commonly used and understood.
(b) Proceeding in Korean and requiring the Complainant to translate the Complaint and all other supporting documents into Korean will impose a burden on the Complainant and delay the procedure.
(c) The disputed domain name resolves to a parking page which is partly displayed in English which means the Respondent understands English.
(d) The Complainant is a German company, the Respondent is Korean and therefore, neither of them understands the language of the other party. English is the fairest neutral language for both Parties.
2. The Complainant contends that the disputed domain name should be transferred to the Complainant because:
(a) the disputed domain name <4activesystems.com> is identical and confusingly similar to the Complainant’s trademark 4ACTIVE in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark 4ACTIVE in its entirety, rendering it confusingly similar to the Complainant’s trademark. The addition of the words “systems” does not refute this finding. “Systems” is a descriptive term which indicates that certain components under reference are interrelated, or interacting, to function as a whole, and makes the disputed domain name even more identical to the Complainant’s registered business name “4activeSystems GmbH”. Also, the addition of the specific TLD such as “.com” and the suffix “GmbH” do not impact a finding of similarity because they are considered to be standard registration requirements and therefore, can be disregarded.
(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 there is no evidence of the Respondent’s use of, or preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parking page which informs the visitors that the website was being built and invites the people to return at later point in time. The Respondent also uses the disputed domain name to advertise its own domain registration and web hosting services by placing the links to the Respondent’s own web pages. Further, there is no indication that the Respondent is known under, or holds any rights in, the name or trademark “4active” or “4activesystems”. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Instead, the Respondent is using the disputed domain name to attract customers to its own website and show bids to rent the disputed domain name at a price of currently KRW 9800 per year.
(c) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the owner of the trademark or service mark or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Respondent is not making any use of the disputed domain name, other than offering it for lease, and diverting potential customers of the Complainant to the Respondent’s own websites.
Also, the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the business name “4activesystems” in the corresponding .com domain name, and the Respondent has engaged in a pattern of such conduct. The Respondent is offering for sale or lease multiple domain names which comprise <4activesystems.com>, <4activesystems.kr> and <4activesystems.co.kr>.
Thirdly, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, or of a product or service on the Respondent’s website. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions. 6. Discussion and Findings A. 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.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (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 4ACTIVE trademark, and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The mere addition of the descriptive term “systems” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, 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 (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 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 the 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), (ii), and (iv) 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, (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 and (3) attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark.
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 Respondent registered the disputed domain name which is confusingly similar to the Complainant’s trademark, 4ACTIVE and the Complainant’s business name “4activesystems”, with the knowledge of the Complainant’s world-wide famous business and its trademark. The Panel finds the Respondent intentionally registered the disputed domain name in bad faith. First, the Complainant’s commencement of its business in 2015, its use of the domain name <4activesystems.at> for the Complainant’s official website, and its registration of the 4 ACTIVE trademark in 2016 all pre-date the registration date of the disputed domain name by the Respondent in 2020. The Respondent registered the disputed domain name which is confusingly similar to the Complainant’s trademark, 4ACTIVE and the Complainant’s business name “4activesystems”, all of which clearly show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to falsely imply that there was a business relationship between the disputed domain name and the Complainant by creating a likelihood of confusion. Thus, it is clear that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s trademarks and business.
Second, the website to which the disputed domain name resolves is a parking page containing bids to rent the disputed domain name at a price of currently KRW 9800 per year and commercial links. The Respondent uses the disputed domain name just to advertise its own business 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 or be commonly known under the disputed domain name.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the confusing similarity between the disputed domain name and 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. Respondent registered the disputed domain name and is using the disputed domain name to attract Internet users to its website for commercial gain.
As the conduct described above falls squarely within paragraph 4(b)(i), (ii), and (iv) 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 <4activesystems.com> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: May 25, 2021
Full & Egal Universal Law Academy