ADMINISTRATIVE
PANEL DECISION
Deutsche
Messe AG v. Kim Hyungho
Case
No. D2003-0679
1. The Parties
The Complainant is Deutsche
Messe AG, Hanover, Germany, represented by Gramm, Lins & Partner, GbR, Germany.
The Respondent is Kim Hyungho,
Gwangju, Republic of Korea.
2. The Domain Name and
Registrar
The domain name in dispute
<cebit.com> is registered with Hangang Systems Inc. dba Doregi.com.
3. Procedural History
The Complaint was filed
with the WIPO Arbitration and Mediation Center (the Ў°CenterЎ±) on August
28, 2003. On August 29, 2003, the Center transmitted by email to Hangang
Systems Inc. dba Doregi.com a request for registrar verification in connection
with the domain name at issue. On September 2, 2003, Hangang Systems Inc.
dba Doregi.com transmitted by email to the Center its verification response
confirming that the Respondent is listed as the registrant and providing the
RespondentЎЇs administrative, billing, and technical contact details. In
response to a notification by the Center that the Complaint was administratively
deficient, the Complainant filed an amendment to the Complaint on September
5, 2003, correcting the deficiency regarding jurisdiction but requested that
the issue of language be decided by the Panel. The Center verified that
the Complaint, together with the amendment thereto, satisfied the formal requirements
of the Uniform Domain Name Dispute Resolution Policy (the Ў°PolicyЎ±), the Rules
for Uniform Domain Name Dispute Resolution Policy (the Ў°RulesЎ±), and the WIPO
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Ў°Supplemental
RulesЎ±).
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 September 12, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was
October 2, 2003. The Response was filed with the Center on September
29, 2003.
The Center appointed Boh
Young Hwang as the sole panelist in this matter on October 8, 2003.
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.
In response to the request
by the Complainant for permission to submit a Supplemental Filing, the Panel
rendered the Procedural Order No. 1, allowing the Complainant to submit the
Supplemental Filing and allowing both parties to submit any further documents
within 10 days from CenterЎЇs notification of the Procedural Order No. 1.
The Complainant submitted its Supplemental Filing on October 2, 2003, and other
than that, no further documents have been submitted by either party.
The language of the proceeding
is English but, in accordance with Paragraph 11 of the Rules and Panel Procedural
Order No. 1, the documents submitted by the Respondent in Korean are also accepted.
4. Factual Background
Over the past 25 years,
the Complainant has organized and conducted the trade fair and exhibition in
the area of computer technology in Hanover, Germany, named Ў°CeBITЎ±.
Many companies from around the world have been participating in the Ў°CeBITЎ±
exhibition and Korean companies are no exception. For example, between
1997 and 2000, the Ў°CeBITЎ± exhibition hosted between 30 to 70 exhibitors from
Korea.
The Complainant registered
the trademarks Ў°CEBITЎ± or Ў°CeBITЎ± in a number of countries. In Korea,
the wordmark Ў°CeBITЎ± has been used frequently for decades by the Complainant
to invite Korean companies to the Ў°CeBITЎ± exhibition through newspaper and
other mass media.
The domain name in dispute
has been registered by the Respondent in December 2000. In February 2001,
the Complainant had filed a UDRP Complaint against the Respondent on the domain
name in dispute, and the case was opened under the WIPO
Case No. D2001-0232. However, the case has been finally closed
in May 2001, due to the ComplainantЎЇs failure to reply to the Complaint Deficiency
Notification by the Center. A copy of the Complaint filed in the WIPO
Case No. D2001-0232 above with its Annexes was sent to the RespondentЎЇs
postal address by the Complainant.
The Respondent filed a
trademark application on March 6, 2002, regarding the mark Ў°cebit, »хєыЎ± before
the Korean Intellectual Property Office (Ў°KIPOЎ±) for dust-blocking glasses
and certain other products, and the trademark has been duly registered by the
KIPO on July 31, 2003.
Meanwhile, with the ComplainantЎЇs
letter dated April 10, 2003, the parties engaged in negotiations in writing
exploring the possibility of voluntary transfer of the domain name in dispute
by the Respondent. However, the negotiations were not successful due to
the partiesЎЇ failure to agree upon the amount of the consideration for such
transfer. The Complainant proposed an amount in the range of US$7,000
to US$15,000, while the Respondent in the range of US$65,000 to US$85,000.
The domain name in dispute
is currently used by the Respondent for a website which contains and displays
certain information about eyes and optical products.
5. PartiesЎЇ Contentions
A. Complainant
The domain name in dispute
<cebit.com> is identical or confusingly similar to the trademark
and service mark Ў°CEBITЎ± and Ў°CeBITЎ± in which the Complainant has rights.
The Respondent has no rights
or legitimate interests in respect of the domain name in dispute.
Although the Respondent registered a trademark which includes the word Ў°cebitЎ±,
the Respondent filed its trademark application after the Complainant had already
acquired trademark rights regarding its Ў°CeBITЎ± mark in various countries
around the world, and also after the Respondent became aware of the possible
conflict with the ComplainantЎЇs right to use the domain name in dispute because
the Complainant had commenced an arbitration proceeding against Respondent in
the year of 2001.
The domain name in dispute
was registered and is being used in bad faith by the Respondent. The Respondent
registered the domain name in dispute for the purpose of selling it to the trademark
owner (the Complainant) for an amount, which does not correspond with the cost
of registration, and in the meantime, is using the domain name with the intention
to attract Internet users to the RespondentЎЇs website to make commercial gains.
B. Respondent
The purpose of registration
of the domain name in dispute by the Respondent is to maintain a website dealing
with various optical products of the Respondent, and the Respondent is currently
operating the website using the domain name in dispute.
The Respondent has obtained
rights and legitimate interests in respect of the domain name in dispute by
registering the trademark Ў°cebit, »хєыЎ± in Korea on July 2003.
The RespondentЎЇs proposed
amount for a voluntary transfer of the domain name, namely US$85,000, is based
on a fair calculation of the total amount invested or expended by the Respondent
during the last 2 years in maintaining the website and related business.
Since the website that
is currently operated by the Respondent using the domain name in dispute is
dealing with optical products, there is no likelihood of confusion among the
general Internet users between the products provided by the Respondent and the
services provided by the Complainant.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed
in the English language. The Respondent asserts that all documents in
the arbitration proceeding should be filed in the Korean language, which is
the language of the registration agreement for the domain name in dispute, whereas
the Complainant asserts that English should be the language of the proceeding.
According to Paragraph
11 of the Rules, the language of the administrative proceeding shall be the
language of the registration agreement unless the Panel decides otherwise.
The spirit of Paragraph 11 is to ensure fairness in the selection of language
by giving full consideration to the partiesЎЇ level of comfortability with each
language, the expenses to be incurred and possibility of delay in the proceeding
in the event translations are required and other relevant factors.
In the present case, it
is without question that the registration agreement for the domain name in dispute
was made in the Korean language. However, it is also apparent from the
written communications exchanged between the parties with respect to a possible
voluntary transfer of the domain name in dispute that the Respondent has no
difficulties in communicating in the English language. The English used
by the Respondent in his letters demonstrates his ability to understand and
communicate in English without difficulties.
On the other hand, the
Complainant is not able to communicate in Korean and therefore, if the Complainant
were to submit all documents in Korean, the arbitration proceeding will be unduly
delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of the above circumstances and in the interest of
fairness to both parties, the Panel hereby decides, under Paragraph 11 of the
Rules, that (i) English shall be the language of administrative proceeding in
this case, but on the condition that (ii) the Respondent shall be permitted
to submit any documents or assertions in Korean.
B. Transfer of the Domain
Name in Dispute
To qualify for cancellation
or transfer, a Complainant must prove each element of paragraph 4(a) of the
Policy, namely:
(i) the domain name in
dispute is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights; and
(ii)
the Respondent has no rights or legitimate interests in respect of the domain
name in dispute; and
(iii)
the domain name in dispute has been registered and is being used in bad faith.
B1. Identical
or Confusingly Similar
The Complainant has registered
and currently owns trademarks and rights on the marks Ў°CEBITЎ± and Ў°CeBITЎ±,
and these registered marks are in fact identical with the domain name in dispute
excluding the part Ў°.comЎ± which merely shows the character of the domain name.
Therefore, the Complainant has established this element.
B2. Rights
or Legitimate Interests
Based on the evidence submitted
before the Panel, it is recognized that the marks Ў°CEBITЎ± and Ў°CeBITЎ± owned
by the Complainant were widely known and recognized around the world including
Korea before the domain name in dispute was registered by the Respondent.
It is also clear from the record that the Respondent has registered and currently
owns the trademark Ў°cebit, »хєыЎ± in Korea. Therefore, the central issue
is whether or not the RespondentЎЇs registration of the trademark including
the word Ў°cebitЎ± can be construed to give the Respondent rights or legitimate
interests in the domain name in dispute.
First of all, it should
be stated that the registration of a trademark which is identical with or similar
to the domain name in dispute does not always or automatically provide the registrant
with rights and legitimate interests in respect of the domain name, although
it can be strong evidence of the existence of such rights or legitimate interests.
The existence of any right or legitimate interest on the domain name in dispute
should be determined by taking in consideration all relevant factors, including
without limitation, the registration of a trademark corresponding to the domain
name.
As demonstrated in Paragraph
4(c) of the Policy, the use of a domain name or a name corresponding to the
domain name can be recognized as giving the user rights and legitimate interests
only when such use is made Ў°in good faithЎ±. In the present case, it
is recognized from the evidence submitted by the parties that the Respondent
filed its trademark application after the ComplainantЎЇs filing of the complaint
in the WIPO Case No. D2001-0232 case. In
this regard, it seems that the Respondent had or could at least have had an
ample opportunity to notice the ComplainantЎЇs desire to file a legal proceeding
for transfer of the domain name in dispute.
Moreover, upon observation
of the RespondentЎЇs website using the domain name in dispute, it is noted that
the website consists only of three web-pages in total, and also that although
the main page of the website shows ten categories of information including the
Company Introduction, Q&A, Eye Info, Company News, Product Introduction,
Guestbook, Eye Times, Eyedaq, Color Vision and Eyewearmall, only two of those
categories, namely Eye Info and Eyewearmall, contain information, which is displayed
only on one simple webpage. The website does not provide any details about
the identity of the entity that operates the website, and no further clicks
are allowed regarding all of the twelve products shown in Eyewearmall.
Furthermore, apart from the operation of the above website, the Respondent has
not submitted any evidence which goes to show that the Respondent has made actual
use of the registered trademark or maintained any actual business using the
trademark.
Therefore, in consideration
of all of the circumstances described above, including, among others, the reputation
and wide recognition of the ComplainantЎЇs trademark which had been firmly established
and had existed prior to the RespondentЎЇs registration or use of the domain
name in dispute and the lack of evidence establishing good faith in the RespondentЎЇs
use of the domain name in dispute and his registered trademark, the Panel concludes
that the Respondent has no rights or legitimate interests in respect of the
domain name in dispute.
Therefore, the Complainant
has established this element of its case.
B3. Registered
and Used in Bad Faith
The Panel finds that, knowing
of the ComplainantЎЇs well established reputation in the trademark Ў°CEBITЎ±
and/or Ў°CeBITЎ±, the Respondent, by using the domain name in dispute, has intentionally
sought to cause confusions among Internet users as to the source, sponsorship,
affiliation or endorsement of his website. Further, the evidence submitted
before the Panel shows that the Respondent proposed to receive a sum of at least
US$65,000 in exchange for the transfer of the domain name in dispute to the
Complainant, which also makes this case fall under Paragraph 4(b)(i) of the
Policy. As stated above, the RespondentЎЇs registration of the trademark
and operating a website using the domain name in dispute do not constitute sufficient
evidence to negate the existence of bad faith in the RespondentЎЇs use of the
domain name in dispute.
Therefore, the Complainant
has also established this element of its case.
7. Decision
For all of the foregoing
reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules,
the Panel orders that the domain name <cebit.com> be transferred to the
Complainant.