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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Springborn Staffing Services, Inc. v. Choi Sungyeon

Case No. D2007-1589

1. The Parties

The Complainant is Springborn Staffing Services, Inc., Portland, Maine, United States of America, represented by Bernstein Shur, United States of America.

The Respondent is Choi Sungyeon, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <czone.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 October 26, 2007. On October 29, 2007, 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 October 30, 2007, Korea Information Certificate Authority Inc., d/b/a DomainCa.com, transmitted by email to the Center its verification response. The response includes the statement that “[t]he current registrant of the domain name is woong kang,” but then separately identifies the Respondent as the registrant, and provides the contact details of the Respondent indicated above. The registrar also informed that the language of the registration agreement was Korean. In response to the Center’s notification of the language of proceedings, the Complainant on November 1, 2007, submitted a request that English should be the language of proceedings, along with related evidence. 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, in both Korean and English, and by post, facsimile, and email delivery, and the proceedings commenced on November 8, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2007.

After receiving notification of the Respondent’s default, the Complainant’s counsel on December 3, 2007 requested that, in light of the Respondent’s default, the domain name be transferred to the Complainant as requested in the Complaint, and further that “this proceeding be dismissed without prejudice upon completion of such transfer and that Complainant be refunded the unused portion of its filing fee.” On December 10, 2007, the Center responded: under the Policy, a refund of fees is allowed only in cases of termination or withdrawal before panel appointment; under the Policy, a respondent’s default does not by itself necessitate an order transferring the domain name before panel appointment; and a transfer or cancellation may be granted only by an appointed panel if the requisite elements under the Policy are present. In the same correspondence, the Center notified, “[U]nless we hear from you otherwise, we will proceed to the Panel appointment.”

Receiving no reply from the Complainant, the Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 21, 2007. 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.

The Panel determines that the language of the proceeding will be English, as discussed herein.

4. Factual Background

The Complainant, Springborn Staffing Services, Inc. is incorporated under the laws of the State of Maine, United States of America. The company’s website, under the domain name <springbornstaffing.com>, indicates that it is in the business of placing “temporary, direct hire and temp-to-hire employees” for “Office/Clerical,” “Accounting/Finance” and “Legal Support” needs. The Complainant has been identified as “Maine’s office staffing leader in customer satisfaction and loyalty.”

The Complainant registered the mark CZONE for “temporary and permanent employment staffing services, namely, personnel placement and recruitment services,” with the U.S. Patent and Trademark Office on December 19, 2006. The registration documents indicate that the Complainant first used the mark on January 24, 2006, and filed its application for registration on the next day.

The Respondent registered the disputed domain name <czone.com> on September 18, 2002. Its date of expiration is September 18, 2008. At the commencement of this proceeding, the website for the domain name displayed an enlarged ampersand (“@”) on the left, a “Welcome to CZONE.COM” notation to its right, and the following text at the bottom: “This domain is for Sale! Please e-mail the webmaster for further details.” The display also included the email address of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant argues that: the Respondent’s domain name is identical or confusingly similar to the CZONE mark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith.

B. Respondent

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

Under Paragraphs 5(e) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint, and draw appropriate inferences from the Respondent’s default. The Respondent’s default allows the Panel to draw appropriate inferences from such default, as provided in Paragraph 14(b) of the Rules.

6. Discussion and Findings

Initially, the Panel must determine the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. The same provision, however, also states that the determination of the language of the proceeding is “subject to the authority of the Panel . . ., having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement here is Korean. The Complainant, however, has requested that the proceeding be in English, emphasizing that the parties have previously communicated with each other in the language. The Respondent objected, stating, “I wish that become WIPO progress in Korean language.”

It is not clear to the Panel that the Respondent has the language proficiency to defend its cause in English. Nevertheless, despite the Respondent’s request to proceed in Korean, and despite the Center’s invitation to file the Response in Korean, the Respondent has failed to participate any further in the action. The Respondent has been notified of its default. The remaining party requests the proceeding to be in English. Taking into account all the circumstances, the Panel agrees.

Turning to the merits, Paragraph 4(a) of the Policy states that the Complainant must show the presence of three elements:

(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the [C]omplainant has rights; and

(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.

A. Identical or Confusingly Similar

With use and registration, the Complainant has proven its rights in the mark, CZONE. The disputed domain name is <czone.com>. The Panel determines that the domain name is identical or confusingly similar to the Complainant’s mark in which it has rights. This conclusion is not disturbed by the fact that the Complainant achieved its rights in the CZONE mark after the Respondent registered the domain name. The Policy does not require that the Complainant obtain its rights at any particular time. Indeed, panel decisions have held that registration of a domain name that predates the acquisition of rights in a mark does not bar a finding of identity or confusing similarity. AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

The Complainant has proven the first element.

B. Rights or Legitimate Interests

The Policy, Paragraph 4(a)(ii), explicitly states that the Complainant “must prove” that the Respondent has no rights or legitimate interests in respect of the domain name. Panels have recognized that in practice, imposing this burden on the complainant could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. To address this reality, panels have employed a two-step, burden-shifting process: the complainant is initially required to make a prima facie showing that the respondent lacks rights or legitimate interests in the domain name; once such a showing is made, the burden shifts to the respondent to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied the second element. Decathlon v. Tariq Ghafoor, WIPO Case No. D2007-1256; Croatia Airlines, supra.

Here, the Complainant appears to have met its burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the domain name. This burden is “light,” Croatia Airlines, supra; the prima facie standard requires only that the evidence that the complainant offers is “sufficient on its face,” Black’s Law Dictionary 1071 (5th ed. 1979); see Belupo d.d. v. WACHEM d.o.o., supra (stating that complainant’s burden is met unless its allegation “is manifestly misconceived”).

Thus, the burden shifts to the Respondent to show that it has rights or legitimate interests in the domain name. A non-exhaustive list of ways to demonstrate such rights or interests is provided in Paragraph 4(c) of the Policy. But the Respondent failed to submit a reply to the Complainant’s contentions, and this does not work in its favor. The Respondent’s default requires the Panel to conclude that the second element of the Complainant’s case is satisfied.

C. Registered and Used in Bad Faith

To prevail, the Complainant must also show the Respondent’s bad faith, as provided in Paragraphs 4(a)(iii) and 4(b) of the Policy. The Panel concludes that bad faith is absent here. The Respondent registered the domain name more than three years before the Complainant could have asserted rights in the mark by first using it in commerce. Panel decisions have advanced the general view that registration of a domain name is not in bad faith when registration occurs before rights in a mark are established, simply because the registrant could not have contemplated that another party would achieve rights in a mark identical or confusingly similar to its domain name at a future date. Digital Vision, Ltd., supra; John Ode d/b/a ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.

Importantly, there are exceptions to the general rule, and bad faith can be found even when registration of the domain name predates rights in a mark. An example is when the respondent is aware of the complainant, and the aim of the registration is to take advantage of the confusion between the domain name and any potential complainant rights. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (discussing situations “where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners” and “where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter’s development of a new trademark”). The Panel sees nothing in the record to suggest that an exception is available here.

The Complainant urges that bad faith is demonstrated by the Respondent’s offer of US$9,000 for the domain name, apparently relying on Paragraph 4(b)(i) of the Policy. Paragraph 4(b)(i) provides as an example of evidence of the registration and use of a domain name in bad faith:

circumstances indicating that [the respondent] ha[s] 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[.]

But again, the Respondent registered the domain name before the Complainant established rights in its mark; this is an impassable hurdle for the Complainant. Given that the domain name preceded the mark by over three years, it is difficult for the Panel to find “circumstances indicating that [the Respondent] registered. . . the domain name primarily for the purpose of selling . . . the domain name” to the Complainant or its competitor.

The Panel also notes that, while not by itself dispositive of the matter, the CZONE mark does not appear to be a strong or well-known mark for the Complainant’s services. A Google search of “czone” yields multiple references to the “czone” or “c-zone” phrase for a variety of other organizations, products, and services, including: “DJ and Live Jazz for Weddings, Corporate Events, Clubs, and Parties in Boston and New England;” computer systems and peripherals; “schools and children’s services professionals in East Sussex, [United Kingdom];” a “Japanese Animation Costume Store;” two religious organizations; a web design service; and an internet cafй in Fresno, California. The “czone” phrase specifically appears in the domain names for some of these websites, including one whose website is in Japanese text and another in Romanian.

The third element of bad faith is absent.

7. Decision

The Complainant has proven the first and second elements of Paragraph 4(a) of the Policy. The Complainant has failed to prove the third element. Therefore, as the Policy directs, the Complaint is denied.

Ilhyung Lee
Sole Panelist

Dated: January 4, 2008