The Complainant is BP Europa SE of Hamburg, Germany, represented by Mikijelj Jankovic & Bogdanovic, Serbia.
The Respondent is Lee Dong Wan of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is with Megazone Corp., dba HOSTING.KR (the "Registrar"). 3. Procedural History
The Complaint was filed in Korean and English with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 8, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details. On April 17, 2014, the Complainant submitted an amended Complaint.
On April 14, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On April 16, 2014, the Complainants requested for English to be the language of the proceeding. The Respondent did not submit a language of the proceeding request.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") approved by doMEn on October 1, 2012, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 21, 2014. On the same day, in response to the notification of default, the Respondent communicated with the Center that it does not speak English and expressed that it will transfer the disputed domain name if desired. The Center invited the Complainant to submit a suspension request to explore possible settlement options. On May 23, 2014, the Complainant confirmed to the Center that it does not wish to engage in settlement negotiations with the Respondent and requested the Center to proceed with the present proceeding. On May 23, 2014, the Center notified the Parties that the case will proceed to panel appointment. On May 25, 2014, the Respondent communicated once more with the Center reiterating its willingness to transfer the disputed domain name.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 2, 2014. 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 is BP Europa SE of Hamburg, Germany. The Complainant owns Aral, which is a brand of automobile fuels and gas stations mostly located in Germany and Luxembourg. The company behind the brand name, Aral AG (previously Veba Öl AG), was established in 1898 as Westdeutsche Benzol-Verkaufs-Vereinigung GmbH. The Aral brand was introduced in 1924 and is a combination of the German words "Aromaten" and "Aliphaten," alluding to the aromatic and aliphatic components found in gasoline, respectively. The brand ARAL is well-known and has won numerous international awards, including, for example, "Most Trusted Brand" award from Reader's Digest from 2002 through 2013, and "Fleet Award" from the magazine Autoflotte from 1999 through 2012.
In addition to being Germany's leading fuel brand, Aral is also the country's third largest fast food retailer, after McDonald's and Burger King. The Complainant owns 15 international trademarks ARAL in over 50 countries, including six international trademarks designated for protection in Montenegro where the country code Top-Level Domain ("ccTLD") is ".me." Some of the trademarks have been registered for more than 60 years.
The disputed domain name was registered to the Respondent on October 29, 2013. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the ARAL brand and trademarks owned by the Complainant. The Complainant contends that due to the extensive international use of its ARAL trademarks, they have become internationally "well-known." The Complainant contends that the dominant and distinctive feature of the disputed domain name is the well-known element "aral," and that the addition of the ".me" ccTLD is not sufficient to distinguish the disputed domain name from the Complainant's registered trademarks.
As to the rights or legitimate interests in respect of the disputed domain name , the Complainant contends that the Respondent has never been authorized or licensed by the Complainant to use the word "aral" in the disputed domain name. The Complainant also argues that to the best of its knowledge, the word "aral" is not often used, if ever, as a personal name or a nickname in the Republic of Korea, therefore, the Complainant contends that the Respondent has not registered the disputed domain name in connection with a bona fide intent.
Finally, the Complainant contends that disputed domain name was registered and is being used in bad faith as it is being used as a "parking site" leading to websites with explicit and pornographic material, i.e., financial profit. The Complainant argues that such pornographic material can damage the reputation that the Complainant's trademarks have earned for decades. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. As per the Respondent's communications indicated above, the Respondent appears to lack interest in the disputed domain name and is willing to transfer the disputed domain name to the Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent's domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Language of the Proceeding
Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Korean.
The Complainant submitted its Complaint in Korean and English and requested the language of the proceedings to be English. The Respondent has not submitted a formal response. The Center notified the Respondent in both Korean and English, and taking into account the circumstances of this case, the Panel concludes that, according to Rules, paragraph 11(a), the language of the proceedings shall be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L,WIPO Case No. DRO2006-0001.
Therefore, the Panel has decided to 1) accept the Complainant's filings in English; and 2) issue a decision in English. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the disputed domain name is in its relevant distinguishing part identical to the brand and trademark ARAL owned by the Complainant. First, it is uncontroverted that the Complainant has established rights in the ARAL trademark based on both longstanding use as well as its 15 international trademarks for ARAL in over 50 countries, including six international trademarks designated for protection in Montenegro. Second, the disputed domain name consists of the ARAL trademark in its entirety. "The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). Third, the addition of a Top-Level Domain, such as ".me", is technically required after the domain name. It is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. 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. B. Rights or Legitimate Interests
Under 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 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, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Nonetheless, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
There is no evidence that the Respondent has registered the disputed domain name in connection with a bona fide offering of goods or services. The Panel accepts the argument of the Complainant that it has never authorized or licensed the Respondent to use its trademark ARAL within the disputed domain name and therefore in the circumstances the Respondent is not able to establish rights or legitimate interests in the disputed domain name. Mere registration of the disputed domain name does not of itself confer rights or legitimate interests in the disputed domain name (Terrain Inc. v. Geocaching Zero,WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg,WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia,WIPO Case No. D2010-0490). The Respondent is not an authorized dealer, distributor or licensor of the Complainant. There is no evidence that the Respondent is commonly known by the disputed domain name, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent indicated that it agrees to transfer the disputed domain name.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel accepts the arguments of the Complainant that the disputed domain name was registered and is being used in bad faith as it is using the Complainant's mark to attract Internet users to a "parking" website that contains links to other websites containing explicit and pornographic materials. There is no doubt in the Panel's mind that the Respondent knew or should have known about the Complainant's trademark rights before registering the disputed domain name, and that the disputed domain name is being used for financial gain. Such use of the disputed domain name is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's trademark is evidence of bad faith. See, e.g., Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michaelin Recherche et Technique S.A. v. Horoshiy Icorporated,WIPO Case No. D2004-0752). Similarly, the registration of an identical domain name in order to misdirect Internet users or display links to third-party commercial websites, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Hanover Communications Ltd., v. Maison Tropicale, S.A.,WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited,WIPO Case No. D2007-0883.
Finally, the Respondent's bad faith can also be inferred from its lack of reply to the two cease and desist letters sent by the Complainant's counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that that the disputed domain name has been registered and used in bad faith by the Respondent. 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 be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: June 16, 2014
Full & Egal Universal Law Academy