1.1 The Complainant is Comvita Limited of Paengaroa, New Zealand represented by Balwins, New Zealand.
1.2 The Respondent is Kwan Kim Young of Gyeonggi-do, Republic of Korea. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 10, 2012. On September 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 2012 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2012.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 30, 2012. 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
4.1 The Complainant is a company incorporated under the laws of New Zealand in 1974. It forms part of the Comvita group of companies. Comvita New Zealand Limited is a wholly owned subsidiary of the Complainant. The Complainant (and/or other companies within the Comvita group) are engaged in the sale of natural health foods and cosmetics. Its business extends to Korea, where it deals in Manuka honey.
4.2 Comvita New Zealand Limited is the owner of numerous trade marks around the world that comprise or incorporate the term “Comvita”. Those marks include:
(i) New Zealand registered trade mark no 279155 dated July 2, 1997 in class 5 for the word mark COMVITA;
(ii) Community trade mark no 3933331 filed on July 14, 2004 in classes 3, 5 and 35 for the word mark COMVITA; and
(iii) Korean registered trade 4008519180000 applied for on July 2, 2009 in class 3 for what appears to be the word mark COMVITA.
4.3 The Respondent would appear to be an individual in Korea. It would also appear that the Respondent and the Complainant have had dealings with one another that pre-date the registration of the Domain Name. In particular:
(i) In or about 2003 the Respondent applied for, and subsequently obtained, two registered trade marks in Korea that reproduced in their entirety figurative marks of the Complainant. The marks incorporated and presented in a stylized form the word “Comvita”.
(ii) The Complainant brought proceedings against the Respondent in the Korean Intellectual Property Office in late 2009 to cancel these marks and cancellation occurred in or about June 2010.
4.4 The Domain Name was registered on July 21, 2010.
4.5 In September 2010, Comvita New Zealand Limited’s Korean lawyers wrote to the Respondent demanding that the Domain Name be transferred to Comvita New Zealand Limited.
4.6 From about July 2012 the Domain Name has been used to for a Korean language website that advertises products offered for sale by “Homebase”. That website continues to operate as at the date if this Decision. 5. Parties’ Contentions A. Complainant
5.1 The Complaint refers throughout to the marks and activities of the Complainant when the marks appear to be registered in the name of its subsidiary Comvita New Zealand Limited. It refers to no less than 38 Annexes but only 9 appeared in the Complaint provided to the Panel and the numbers of those annexes does not correspond to the numbers used in the Complaint. Further, some of the annexes provided were in Korean without translation with only a basic explanation as to what these documents were and with little, and at times no, explanation as to what they contained.
5.2 Nevertheless, it has not been necessary for the Panel to request the Complainant to address these issues, before issuing a decision. On examination of the materials provided, the Complainant’s case is relatively clear and in large part relates to historical dealings between the parties that are, or at least should be, within the Respondent’s own knowledge.
5.3 In particular, the Complainant references a large number of COMVITA marks around the world. It contends in this respect that the Domain Name is identical to these marks for the purposes of the Policy.
5.4 It asserts that there is no evidence prior to July 2012 of any use of the Domain Name in connection with a bona fide offering of services and asserts that the Respondent “does not appear” to be commonly known by the Domain Name and has not been making any legitimate noncommercial or fair use of the Domain Name.
5.5 The Complaint recites the history of the Complainant’s dealings with the Respondent. It asserts that the reason given by the Respondent during a telephone conversation as to why he had registered in Korea trade marks reproducing one of the Complainant’s figurative marks, was “in order to make business relations with the Complainant”.
5.6 One of the Korean language documents annexed to the Complaint is said to be the Respondent’s letter in response to the letter before action sent by the Complainant’s Korean lawyers in September 2010. According to the Complainant, in that letter the Respondent claimed that “he did not know of the Complainant”. The Complainant asserts that this claim is “clearly inaccurate”.
5.7 Against this background the Complainant contends that it has “grounds under paragraph 4(b)(ii) of the Policy to submit this dispute to a mandatory administrative proceeding”. If also contends that the Respondent’s activities fall within at least one of the examples of bad faith set out in paragraph 4(b)(i) to (iv) of the Policy. B. Respondent
5.8 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 Under Paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. In addition, under Paragraph 14 of the Rules, where a party fails to comply with any provision or requirement of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
6.2 This Panel does not find there to be any exceptional circumstances within Paragraph 5(e) of the Rules which would prevent the Panel from determining the dispute.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to establish its case in accordance with Paragraph 4(a) of the Policy and prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii));.
6.4 The Panel will address each of these requirements in turn. A. Identical or Confusingly Similar
6.5 The Complainant relies upon a number of trade mark marks, which include marks that are identical to the second level of the Domain Name. It is clear that for the purposes of the Policy that the Domain Name is “identical or confusingly similar” to these marks.
6.6 The Policy requires a Complainant to have rights in the marks relied upon, and the Complainant does not appear to be the registered owner of any of these trade marks. However, the relevant trade marks are registered in the name of one of its subsidiaries. As is recorded as a “consensus view” in section 1.8 of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.”
6.7 The Panel is of the view that it is appropriate to take a common sense approach to this question in this particular case. Not only is the owner of the relevant registered trade marks a wholly owned subsidiary of the Complainant, but the COMVITA trade mark also forms part of the Complainant’s own name. The only sensible inference in such a case is that the Complainant has a licence (albeit perhaps an informal one) from its subsidiary in relation to these marks.
6.8 In the circumstances, the Complainant has shown to the satisfaction of the Panel that the Domain Name is identical or confusingly similar to trade marks in which it has rights and has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.9 The Complainant relies in large part upon the fact that, for several years after the Domain Name was initially registered, the Domain Name was not used for any website. There is reference to the more recent use of the Domain Name in connection with a website that purports to be connected with “Homebase”. However, what connection (if any) that the Respondent has with “Homebase” is not clear. There certainly is no suggestion that the term “Comvita” has any obvious legitimate association with the business activities currently being promoted from that website.
6.10 Many UDRP panels have adopted the approach of saying that where a complainant credibly asserts that none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the respondent carries the burden of showing such a right or interest (see section 2.1 of the WIPO Overview 2.0). Although not putting forward an argument as to burden of proof, the Complainant has systematically asserted that none of the paragraph 4(c) examples applies in this case.
6.11 Therefore, the Panel could have on this basis alone have reached the conclusion that the Respondent has no rights or legitimate interests in the Domain Name. Nevertheless, the Panel prefers to decide this question in a somewhat more direct manner.
6.12 As is discussed in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Respondent registered the Domain Name in order to take unfair advantage of the Complainant’s trade marks. Not only is this relevant to the question of bad faith registration and use, but, in the opinion of the Panel, provides positive evidence of a lack of legitimate interest in the Domain Name on the part of the Respondent.
6.13 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.14 The term “Comvita” has no obvious generic or commercial meaning. As far as the Panel is aware, it is a term that can only be sensibly be associated with the activities of the Complainant.
6.15 Further, (as is apparent from the description to be found in the “Factual Background” section of this decision) the Panel accepts, in the absence of argument or evidence to the contrary, that the Complainant’s description of its past dealings with the Respondent is accurate. The registration of the Domain Name appears to be simply the latest of a number of acts of the Respondent to claim rights and interests in the “Comvita” name because of the association of that name with the Complainant.
6.16 Why exactly the Respondent has engaged in this course of conduct is not clear. According to the Complainant, the Respondent claims he has done this “in order to make business relations with the Complainant”. However, a wish to build a business relationship (whatever that may mean) with a rights holder does not of itself provide a good reason for seeking to register a Domain Name.
6.17 In the circumstances, the only sensible conclusion to be reached in this case is that the Respondent registered and subsequently held the Domain Name to obtain some form of unfair commercial advantage on the back of the reputation of the Complainant’s marks. This is registration and use in bad faith and the Complainant has sufficiently made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: November 1, 2012
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