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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Companhia Paulista de Papйis e Artes Grбficas - COPAG v. Lee Youngho

Case No. D2006-0166

 

1. The Parties

The Complainant is Companhia Paulista de Papйis e Artes Grбficas - COPAG, Sгo Paulo, Brazil, represented by Edmundo Brunner Assessoria S/C Ltda., Brazil.

The Respondent is Lee Youngho, Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <copag.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2006. On February 8, 2006, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On February 9, 2006, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2006.

The Center appointed Thomas Pinansky as the sole panelist in this matter on March 28, 2006. 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 trademark upon which the Complaint is based is COPAG, which is a well-known trademark in Brazil, used since 1908, when Albino Gonзalves founded the company in San Paulo in the field of playing cards.

The name “copag” is also a corporate name of the Complainant- Companhia Paulista de Papйis e Artes Grбficas – COPAG, a company constituted in 1966, specialized in manufacturing decks of cards.

The first trademark COPAG filed in Brazil was on September 3, 1951, and the registration was granted in April 30, 1953 (duly renewed) under the registration No. 001528742, in local class 28.10 to distinguish “games, entertainment goods and toys.”

The Complainant also achieved other registrations in Brazil incorporating the expression “copag,” in the international class 28 to distinguish decks of cards.

The trademark COPAG is protected in many countries.

A related company, named Copag da Amazonia SA., is a partner of the Complainant and owns the country code top level domain <copag.com.br>, registered since July 24, 1996.

The disputed domain name was registered on March 21, 2002.

 

5. Parties’ Contentions

A. Complainant

The domain name <copag.com> is identical to the Complainant’s trademark COPAG because the particle “.com” is merely an attribute to the domain name <copag.com>, as a kind of gTDL domain name.

The domain name is also confusingly similar to its previously registered local country domain name in Brazil <copag.com.br>.

The Respondent has no legitimate interest in the domain name, because “copag” is not a generic term, a common word, nor descriptive of the Respondent’s products, and it is not a dictionary word either in Portuguese, English, French or any other language.

COPAG is a word created by the initial letters of each word of the corporate name of the Complainant – COMPANHIA PAULISTA DE PAPЙIS E ARTES GRБFICAS – COPAG. The trademark COPAG is therefore distinctive.

The element “copag” does not appear in the Respondent’s trade name, nor in its name, surname or nickname of any of its partners;

The Respondent uses the expression “copag” since March 21, 2002, when the domain name was registered, exactly the same year when the Complainant’s sales increased around the world. The use is not associated with a bona fide offering of goods or services, but indicating a clear and unfair commercial gain.

The Respondent is not, and never has been, a representative or licensee of the Complainant, nor is otherwise authorized to use the Complainant’s trademarks.

The print of the formal homepage “www.copag.com” reveals that the Respondent knows the trademark COPAG and offers on this website the Complainant’s products and other products of the Complainant’s competitors.

The Complainant claims that the domain name <copag.com> was registered in order to mislead the public that the Respondent’s website is connected with or authorized by the Complainant, which is not the case.

The Respondent knew of the existence of the Complainant and of its COPAG trademark, and nevertheless proceeded with the registration of the litigious domain name.

The Complainant argues that the domain name was registered and used in bad faith, since it is used for a website which offers playing cards products that are neither produced nor licensed by the Complainant and which constitutes an improper use of the Complainant’s trademark in order to attract Internet users to the Respondent’s site for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Language

The Complaint, although submitted to the Respondent in the Korean language, was originally prepared in the English language. Yet, there was no response in either language. Although the Korean language is the language of the registration agreement for the domain name, 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 parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the Respondent has not objected to English as the language of this proceeding.

Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel’s discretion, Korean language documents submitted, have been reviewed by the Panel.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as considered appropriate. (See paragraph 14(b) of the Policy; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Complainant’s marks are registered in many countries. The Complainant owns numerous marks including the word “copag.” The domain name wholly incorporates the Complainant’s distinctive marks and is thus identical to it. The suffix “.com” does not contribute to distinguish the disputed domain name from the Complainant’s trademarks.

Therefore, the Panel finds that the domain name is identical to the Complainant’s marks pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing.” (See Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant asserted that the Respondent has no relationship with or authorization from the Complainant for using the Complainant’s marks; that the Respondent had no prior rights or legitimate interests in the domain name; and that the Respondent has not been commonly known by the domain name. The Panel’s view is that facts must be taken as proven provided that they have not been denied by the Respondent.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(c) of the Policy.

E. Registered and Used in Bad Faith

Under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are known, it is very unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s mark.

The conduct described above falls squarely within the Policy and accordingly the Panel concludes that the Respondent registered the domain name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <copag.com>, be transferred to the Complainant.

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Thomas P. Pinansky
Sole Panelist

Date: April 28, 2006