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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sandisk Corporation v. Soocheon Lee

Case No. D2008-0269

1. The Parties

The Complainant is Sandisk Corporation, California, United States of America, represented by White & Case, LLP, United States of America.

The Respondent is Soocheon Lee, Busan-si, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <sansa.com> is registered with Netpia.com. Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2008. On February 22, 2008, the Center transmitted by email to Netpia.com. Inc. a request for registrar verification in connection with the domain name at issue. On February 25, 2008, Netpia.com. Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 March 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2008.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on April 22, 2008. 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 has widely used its SANSA trademark in commerce in the United States and other countries around the world to identify its MP3 players and related products.

According to the Complainant’s submissions, the Complainant’s “Sansa” MP3 players have achieved market share second only to the Apple iPod and are very popular, well publicized, and critically acclaimed products.

The Complainant owns United States trademark registration number 3,178,105 for its SANSA mark covering “digital audio players”. The Complainant also has numerous registrations and pending applications for the SANSA mark around the world.

In additional, the Complainant owns both US and international trademark registrations and applications for other marks in its “SANSA” family of marks.

5. Parties’ Contentions

A. Complainant

The domain name is identical to the Complainant’s trademark, as the Complainant’s trademark is “SANSA” and the Respondent is the registrant of the domain name.

It is well established that the Respondent’s use of a generic top-level domain such as “.com” is without legal significance and does not serve to distinguish two otherwise identical terms or identify a particular party’s goods or services.

The Respondent has no rights or legitimate interests in respect of the domain name.

To the best of the Complainant’s knowledge, the Respondent does not hold himself out as, and does not otherwise do business under the name “Sansa”. Furthermore, the Respondent does not hold any corporate, partnership, or fictitious business name registrations involving the name “Sansa”.

The Respondent has not used the domain name in connection with a bona fide offering of goods or services.

The Respondent is not known by the domain name or mark.

The Respondent has not made any legitimate non-commercial or fair use of the domain name. To the contrary, the Respondent’s use of the domain name has consisted of the unauthorized use of Complainant’s mark and an image of its products, shown next to two competing products.

The domain name was registered and is being used in bad faith.

Although the Respondent has no legitimate interest in the trademark SANSA, it registered the domain name and for several months operated a website that included an image of the Complainant’s “SANSA” brand MP3 player with the word “Sansa” underneath and also pictures of Apple iPod and and iRiver brand MP3 player.

The page also contained the prominent statement “Domain for Sale” and provided an e-mail address for contact on potential purchases/sales, making it clear that the Respondent believed the domain name to be of value either to the Complainant or to its principal competitors.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

The Complaint was originally filed in the English and Korean languages. There was no Response. It is noted that the language of the registration agreement for the domain name in dispute is Korean.

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 Complainant has provided a Korean translation of the Complaint. Also, the Respondent’s website content indicated familiarity with English. 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.

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 it considers appropriate (see Paragraph 14(b) of the Rules; see 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 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; and

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

C. Identical or Confusingly Similar

The Complainant has registered the SANSA marks. The domain name wholly incorporates the Complainant’s distinctive trademark. The Respondent’s use of a generic top-level domain such as “.com” is without legal significance and does not serve to distinguish two otherwise identical terms or identify a particular party’s goods or services (see e.g., The Toronto-Dominion Bank v. Karpachev, WIPO Case No. D2000-1571 “the suffix ‘.com’ has no significance”).

Therefore, the Panel finds that the domain name is identical to the Complainant’s trademark 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 decisions of WIPO panels have held that “once a complainant establishes 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 among others, 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 has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that there is no evidence that the Respondent has ever been commonly known by the domain name. The Panel’s view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, it has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.

Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Both 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 paragraph 2 of the Policy), 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 trademark is widely known worldwide, it is 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 trademarks.

Bad faith can be reasonably inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States of America, or of many other countries, would have made the Complainant’s registrations known to the Respondent.

The Respondent has, in using the domain name, diverted Internet users to a competing website. The act of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at paragraph 8). Moreover, the seeming removal or any modification of the contents or links displayed at the disputed domain name, apparently following contact by the Complainant’s counsel, does little to assist the Respondent’s case.

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the domain name in bad faith.

The Panel deems it unnecessary to address the “Domain for Sale” language contained on the website.

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 <sansa.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Date: April 29, 2008