The Complainant is Stratenergy S.L., Spain, represented by Herrero & Asociados, S.L., Spain.
The Respondent is UPG, 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 May 12, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 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. On June 1, 2021, the Center notified the Parties in both Korean and English that the language of the registration agreement for the disputed domain name is Korean. On June 2, 2021 and June 7, 2021, the Respondent requested for Korean to be the language of the proceeding. On June 4, 2021, 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 of the Complaint, in both Korean and English, and the proceedings commenced on June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Response was filed in Korean with the Center on June 29, 2021 and July 5, 2021. The Center appointed Andrew J. Park as the sole panelist in this matter on July 23, 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, Stratenergy S.L., is a company incorporated in Spain and founded in 2014. It is part of the Velatia Group. Velatia is a group of companies that offer advanced technological solutions in line with the development of smart cities. Stratenergy provides efficient management of energy demand in organizations that seek to optimize their energy from the contracting phase to consumption at their facilities, with custom-designed services and efficient solutions. The Complainant owns various national and international trademark registrations for “STRATENERGY”, namely the following: Jurisdiction Trademark Registration No. Registration Date Int’l Classes International stratenergy 1297067 January 4, 2016 35 and 42 Spain STRATENERGY M3535977 March 4, 2015 35 and 42 United Kingdom stratenergy UK00801297067 October 11, 2016 35 and 42 The disputed domain name was registered by the Respondent on June 10, 2015. On June 1, 2021, the Center noted that the disputed domain name was set to expire on June 10, 2021. Since the disputed domain name expired during the course of this proceeding, the Center informed the Registrar that the disputed domain name was the subject of a UDRP dispute and that it should therefore be placed in Registrar LOCK status until the UDRP proceeding is concluded. Subsequently, the Registrar confirmed both the LOCK status, and that pursuant to the Registrar Accreditation Agreement either of the parties was able to renew the registration of the disputed domain name (it is not clear whether one of the parties did so). On June 2, 2021 and June 7, 2021, the Respondent requested for Korean to be the language of the proceeding. On June 4, 2021, the Complainant requested for English to be the language of the proceeding. The Response was filed in Korean with the Center on June 29, 2021 and related filing on July 5, 2021. On July 30, 2021, the Complainant submitted a supplemental filing in response to the Respondent’s responses, and in response, the Respondent filed a supplemental filing on August 5, 2021. 5. Parties’ Contentions A. Complainant 1) Language of Proceedings The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing four main reasons. (a) Although the Complainant is a Spanish company, its company name, Stratenergy S.L., and all the content that appears on its website are in Spanish and English because the Complainant’s business is aimed at a global audience. (b) The Complainant’s trademark, STRATENERGY and the disputed domain name (c) Proceedings in Korean and requiring the Complainant to translate the Complaint and all other supporting documents into Korean would be unfair, imposing a burden on the Complainant and delaying the proceedings. (d) English is universal language. 2) Substantive Issues The Complainant contends that the disputed domain name should be transferred to the Complainant for the following reasons. (a) The disputed domain name (b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that it is the party with exclusive rights to the STRATENERGY trademark and that it has control of the STRATENERGY trademark. The Respondent lacks any rights or legitimate interests in the disputed domain name because the Complainant has not licensed or otherwise permitted the use of its registered trademark STRATENERGY. The Respondent does not have any association with the Complainant 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 or services. The disputed domain name does not resolve to an active website and the Respondent has not been commonly known by the disputed domain name, nor has acquired the trademark or service mark rights. Therefore, it is proved prima facie that the Respondent has no rights or legitimate interests with respect to the disputed domain name which is the subject of the present Complaint. (c) The disputed domain name was registered and is being used in bad faith. The Complainant insists that the Respondent intentionally registered the disputed domain name, which is identical to the Complainant’s famous and well-known trademark. The Complainant Stratenergy S.L. is the only economic operator using the name STRATENERGY and the only one with registered trademarks in force holding an exclusive right to the name STRATENERGY. The disputed domain name was registered only a short time after the registration date of the Complainant’s trademark. The Respondent knew or should have known in advance of the registration and use of the Complainant’s trademark prior to the registration of the disputed domain name. Therefore, one may safely assume that the Respondent’s registration of the disputed domain name has been done with knowledge of this fact and, consequently, in bad faith. Also, the Respondent does not seem to be carrying out any legitimate activity with the disputed domain name because the disputed domain name does not have a website with content that offers products or services. This makes it clear that the Respondent is not using the disputed domain name in order to carry out a legitimate professional activity but rather to prevent the Complainant from registering it as a domain name so as to secure financial gain from the sale of the disputed domain name. Further, the Complainant claims that although it tried several times to resolve this matter amicably, the Respondent did not cooperate. On July 30, 2021, the Complainant’s supplemental filing was received. The Complainant’s arguments are summarized as follows. (a) The due date to submit a Response was June 28, 2021. Since the Response was submitted on June 29, 2021, it should not be admitted. (b) Since the Respondent’s identity was not available, the Complainant sent a letter to the Registrar on April 6, 2021, in an effort to resolve the matter amicably. (c) The subject matter of the case is not whether the trademark is exclusive, but whether the Respondent had legitimate interests in registering the disputed domain name, to which the answer is no. (d) The Respondent has not proved any commercial activity under the name stratenergy. (e) The Complainant is a business group founded in 1967 and present in more than 19 countries. Therefore, a “.com” domain name is the most relevant thing regardless of whether the Complainant is known or not in the Republic of Korea. Further, the fact that there is another company in the Republic of Korea using the name “stratenergy” does not confer rights of legitimate interests to the Respondent and rather proves its bad faith of preventing others from operating with the said name and acquiring a corresponding domain name. The Respondent’s bad faith is also evident from the Respondent’s behavior trying to resell the disputed domain name at a high price. B. Respondent 1) Language of Proceedings In its June 2, 2021 email, the Respondent requested that the language of the proceedings be Korean for the following reasons. (a) The Respondent would need to bear translation costs. (b) Although the Complainant claimed that it had sent several written communications to the Respondent, the Respondent claims that it never received any letter from the Complainant. In addition, the Complainant failed to provide evidence that the letters were sent to the Respondent. (c) The Complainant might have sent the letters elsewhere and believed that the letters were sent to the Respondent. (d) The website that is currently under development is in Korean. Further, in its June 7, 2021 email, the Respondent requested once again that the language of the proceedings be Korean. It also submitted certain documents in support of its position. More specifically, the Respondent claimed the followings. (a) Stratenergy is a word made up of a combination of two words, “strategic” and “energy,” and if one states “strategic energy” in Korean, it is a foreign word that everyone working in the same field can understand. The word “energy” in Korean is a word written from the foreign word “energy.” (b) Since the Complainant’s representative is a professional lawyer, the said lawyer can fully translate all documents necessary for this case with the help of a professional translator. (c) The Respondent has been consistently preparing the website in Korean and has been in a very difficult situation since the Complainant filed this UDRP Complaint. 2) Substantive Issues The Respondent requests the Administrative Panel to deny the remedies requested by the Complainant because: (a) The Complainant’s trademark STRATENERGY, which the Complainant registered with WIPO in 2016, is a trademark that an Italian company also registered as a trademark in 2006 and is still in use. STRATENERGY is not a trademark registered and used only by the Complainant. Also, the Respondent insists that since the Complainant’s trademark was not even registered with the Korean Intellectual Property Office, the Respondent’s registration of the disputed domain name in 2015 is a very legitimate registration. It is quite obvious that the Respondent could have not known about the Complainant’s trademark, which was never known in the Republic of Korea at the time the Respondent registered the disputed domain name. In addition, even if a problem arises in relation to the Complainant’s trademark and the disputed domain name, since the disputed domain name was registered with a Korean Registrar, the problem should be handled in a Korean court of law. (b) Concerning whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Respondent asserts that it has a legitimate right to the disputed domain name. The Respondent claims that as an NGO, it is in the process of creating an official website and is temporarily using the website at “stratenergy.xyz”. Currently, the development of the website has been suspended due to the present UDRP proceedings. For reference purposes, there are many companies around the world that provide strategic energy services. The Respondent argues that any company can use the name “strategic energy”. (c) Concerning whether the disputed domain name has been registered and is being used in bad faith, the Respondent alleges that the disputed domain name neither was registered nor is being used in bad faith. The Respondent is in the process of making an official website for an NGO, of which the temporary website is at “stratenergy.xyz”, and that is the reason why the Respondent has not yet opened the website at the disputed domain name Finally, in its supplemental filing received on August 5, 2021, the Respondent focused on rebutting the arguments set forth in the Complainant’s supplemental filing received on July 30, 2021. The Respondent’s arguments are summarized as follows. (a) With regard to the Complainant’s claim that it had sent an email to the Respondent on April 6, 2021, to resolve the matter and the claim that the Respondent refused to cooperate, the Respondent argues that such email sent by the Complainant was sent to an email address different from the Respondent’s email address, and that the Complainant must have received a notice regarding the failure of the email transmission. If the Respondent had received such email, it would have explained how it came to use the word “stratenergy”, the current status, etc. The Respondent goes on to argue that despite such circumstances, the Complainant did not follow-up and that based on these circumstances, it is unreasonable for the Complainant to claim that the Respondent does not have rights or legitimate interests in the disputed domain name. (b) For commercial purposes or not, the Respondent has rights to register a domain name. Moreover, the Complainant, albeit its alleged registration of the trademark in Spain on Marcy 10, 2015, did not prove that it operated its global business in the Republic of Korea or in Asia. The registration of the disputed domain name predates the Complainant’s other trademarks in the United Kingdom and in the WIPO. (c) Since the policy changed in 2017, many energy-related businesses in the Republic of Korea have suffered from deficit. (d) With regard to the Complainant’s argument that the Stratenergy company was founded in 2014 in Spain and that it is part of Velatia Group founded in 1967, the Respondent argues that this falsely suggests that the Complainant’s company has been in existence since 1967. (e) With regard to the Complainant’s argument that the Respondent registered the disputed domain name in bad faith, the Respondent argues that it is inconceivable that the Respondent knew of the Complainant in 2015 when searching for the Complainant with the word “stratenergy” is difficult even today as there are several different companies using the said name. 6. Discussion and Findings A. Language of the Proceedings 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 followings 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. 3) The website with the disputed domain name that is being created by the Respondent in 2021 is in Korean and English which means that the Respondent is capable of understanding English. 4) 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 Spain 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 both English and Korean; and (3) issue a decision in English. B. Late and Supplemental Filings Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint. Paragraph 14(a) of the Rules is counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case. The Response was filed one day late. Based on the totality of the circumstances, and also taking into account the fact that the Response was filed before the appointment of the Panel, and that the delay has not delayed the resolution of this proceeding – and also bearing in mind the Panel’s obligations under paragraph 10(b) of the Rules – the Panel has decided that it will accept the late filing of the Response. Further, for the same reason above, the Panel has decided that it will consider the supplemental filings from the Complainant and the Respondent received respectively on July 30, 2021 and August 5, 2021. C. 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 STRATENERGY trademark, 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. The mere 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 identical 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 production of demonstrating its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining on the Complainant. 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 Select 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 sought to confirm whether the Respondent is or was developing an official website for an NGO organization under the domain name Further, this Panel notes that the Respondent has been holding the disputed domain name passively and no evidence that the Respondent is actually trying to use the disputed domain name in the ordinary course of business was uncovered. Finally, the Panel notes that while the overall burden of proof is on the Complainant, panels in past UDRP decisions have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in a potentially impossible task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. In this case, since the Complainant has been found to have made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. The Respondent, however, failed to come forward with such relevant evidence, and thus, 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. 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 filed responses to the Complaint to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name. The Panel 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 registered its trademark in Spain prior to the Respondent’s registration date of the disputed domain name, and also filed and registered its trademark, STRATENERGY internationally, including in the United Kingdom. The Complainant has been using its trademark STRATENERGY continuously since it was first registered in 2015. The Panel found that the Complainant’s registration of its trademark and its business activities are sufficiently qualified as identifiers of the Complainant and its global commercial business activities. These facts show that the Respondent could have had knowledge of the Complainant’s trademark and business when it registered the disputed domain name. Also, the Complainant alleged in its supplementary documents that the main issue here is whether the Respondent had legitimate interests in registering the disputed domain name. Since registration of the disputed domain name, the Respondent has not had any commercial activity. Furthermore, the Respondent did not have a registered trademark. The Respondent has not proved why it did not carry out any commercial activity under the name stratenergy, nor – despite its claims to be in support of an NGO – has it provided any actual proof that it had any entrepreneurial initiative with respect to that name. The Panel notes the Respondent’s own statement that it recently started to build a webpage with the domain name Accordingly, the evidence shows that the Respondent more likely than not knew of and had sought to take unfair advantage of the 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 for commercial gain. 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: August 10, 2021
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