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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wilcom Pty Ltd v. Jinsu Kim

Case No. D2009-0670

1. The Parties

The Complainant is Wilcom Pty Ltd of Alexandria, Australia, represented by Spruson & Ferguson Lawyers, Australia.

The Respondent is Jinsu Kim of Ansan-si, Gyeonggi-do, Republic of Korea, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <wilcom.com> is registered with Cydentity, Inc. dba Cypack.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 21, 2009. On May 22, 2009, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the disputed domain name. On May 28, 2009, Cydentity, Inc. dba Cypack.com 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" or "UDRP"), 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").

On May 28, 2009, the Center notified the parties of the Center`s procedural rules relevant to the language of the proceeding. The Center entertained the arguments of the Respondent and the Complainant on May 28 and June 1, 2009, respectively. On June 5, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 25, 2009. The due date for the Response was extended to July 9, 2009, on the Respondent`s request. The Response was filed with the Center on July 9, 2009.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 14, 2009. 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 used the trademark WILCOM since 1981 for its computer software used to make embroidery designs and embroideries and related goods. The Complainant owns two WILCOM trademark registrations: 1) Australian Trademark Registration No. 1234691 for W WILCOM in Class 9 for "computer software and computer hardware including computer software and computer hardware for use in connection with embroidery and designs" (dated April 10, 2008) and 2) United States Trademark Registration No. 2313128 for W WILCOM in International Class 9 for "computer software used to make embroidery designs and embroideries" (dated February 1, 2000).

The Complainant is a global company with presence in Australia, United States, United Kingdom of Great Britain and Northern Ireland, People`s Republic of China, Japan, and Belgium. Since 2006, the Complainant has used a distributor in the Republic of Korea ("Korea") to sell embroidery software in Korea under the WILCOM trademark. The WILCOM trademark is used in all of the Complainant`s products and operations, and the Complainant has heavily promoted its services by reference to the WILCOM trademark.

In order to advertise its goods on the Internet using its WILCOM mark, the Complainant operates a website at "www.wilcom.com.au". Moreover, the Complainant owns other domain names incorporating the WILCOM trademark, including <wilcom-tecos.com>, <wilcomdirect.com>, <wilcomamerica.com>, <wilcom.co.uk>, <wilcomsupport.net>, <wilcomdiscovery.com>, <wilcomchina.com.cn>, and <wilcom-japan.com>.

The disputed domain name <wilcom.com> was registered on July 26, 1995, and is scheduled to expire on July 25, 2009.

The Complainant first became aware of the disputed domain name in 2005. At that time, the Respondent`s website at the disputed domain name offered for sale pirated copies of the Complainant`s computer software. The Complainant wrote to the Respondent on November 11, 2005, demanding that the Respondent cease the sale of the pirated software. After the Respondent amended the website, the Complainant requested the Respondent to transfer or sell the disputed domain name to the Complainant. According to an email on November 14, 2005, the Respondent refused to transfer or sell the disputed domain name.

In November 2007, the Complainant discovered that the disputed domain name was listed for sale on the "Afternic.com" website for USD7,000. The Complainant made a bid for the disputed domain name, but was later notified that the asking price of the disputed domain name had been increased from USD7,000 to USD21,500.

5. Parties` Contentions

A. Complainant

The Complainant asserts the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) The essential element of the Complainant`s trademark is the word "wilcom", and the ".com" portion of the disputed domain name, <wilcom.com>, is entirely generic and should be disregarded for the purposes of comparison between the domain name and the Complainant`s trademark using WILCOM.

(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. Internet searches using Google have failed to find any association between the Respondent and any business known as Wilcom.

(iv) The Respondent is and has never been known by the name Wilcom.

(v) The disputed domain name was registered and is being used in bad faith.

(vi) The Respondent, a known cyber-squatter, has used the disputed domain name in bad faith, selling pirated software and the domain name for profit.

(vii) The fact that the Respondent used a website at the disputed domain name to sell pirated copies of the Complainant`s software confirms that the Respondent was aware of the Complainant and its rights in the WILCOM trademark.

(viii) Given that the Respondent offered the disputed domain name for sale and increased the asking price by substantial amount, it is clear that the Respondent has used the disputed domain name for the bad faith purpose of extracting unfair purchase price from the Complainant.

(ix) The fact that the Respondent has not published any website in connection with the disputed domain name without any reasonable cause since removing the pirated software from its website gives rise to inference of registration and/or use in bad faith.

B. Respondent

In response to the Complaint, the Respondent asserts the following:

(i) Given that the Respondent has been the registered owner of the disputed domain name since July 26, 1995 while the Complainant has only recently become the proprietor of the W WILCOM trademark (April 10, 2008 in Australia and February 1, 2000 in the United States), the Respondent could not have registered the disputed domain name with the Complainant`s trademark in mind.

(ii) The Respondent has only been using the disputed domain name through a widely known system of domain parking services.

(iii) The trademark of the Complainant registered in Australia and the United States is "W WILCOM," not "WILCOM."

(iv) The Complainant cannot claim exclusive rights to the disputed domain name <wilcom.com> since the domain name is not confusingly similar to "W WILCOM," and Internet searches reveal that companies with no relation to the Complainant have used the name "wilcom," such as Wilcom Products Inc.

(v) The Respondent`s possession of the disputed domain name for 14 years since the registration on July 26, 1995, demonstrates sufficient legitimate interests in the disputed domain name.

(vi) Mere possession and use of numerous domain names through the domestic domain parking service does not give rise to a finding of registration and use in bad faith, and the Respondent`s occasional auction and purchase of domain names through "Afternic.com" is not illegal.

(vii) The disputed domain name was not registered with bad faith intent of targeting a specific trademark, especially in light of the fact that the Respondent possesses other domain names similar to <wilcom.com> such as <alcom.com>, <signcom.com>, <ibcom.com>, <politcom.com>, <pincom.com>, <wellcom.com>, and <dealercom.com>.

(viii) The Respondent never communicated with the Complainant suggesting that the latter purchase the disputed domain name, nor did he accept the offer to sell or transfer the disputed domain name when approached by the Complainant.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden to prove each of the following elements:

(i) The disputed 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 disputed domain name; and

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

A. Language of Proceeding

The Complaint was filed in English, while the language of the registration agreement for the disputed domain name is in Korean. According to the Rules, paragraph 11, 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 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. Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

In the present case, it is undisputed that the registration agreement for the disputed domain name was made in Korean. On the one hand, while the Respondent, a Korean individual, has repeatedly complained about the fact that he is subject to a proceeding in English even though the proceeding is supposed to follow the language of the registration agreement (Korean), email exchanges between the parties have shown that the Respondent does have ability to communicate in English. On the other hand, the Complainant is unable to communicate in Korean so that the administrative proceeding would be unduly delayed should the Complainant submit all documents translated into Korean. In the interest of fairness to both parties, therefore, the Panel decides 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. Identical or Confusingly Similar

Through its extensive use and promotion of the WILCOM trademark worldwide, including in Korea¹, the Complainant has built a substantial and exclusive reputation with its WILCOM trademark globally in relation to embroidery software and related products.

The disputed domain name wholly incorporates the Complainant`s distinctive trademark WILCOM. The addition of a generic top level domain (gTLD) name such as ".com" is irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant`s trademark. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

Furthermore, even though the Respondent has been the registered owner of the disputed domain name before the Complainant registered its trademark, it is well-established that Paragraph 4(a)(i) does not require that the Complainant`s trademark be registered prior to the registration of the disputed domain name. In other words, the Respondent`s registration of a domain name prior to the acquisition of trademark rights by the Complainant does not preclude a finding of identity or confusing similarity. Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

Finally, absent formal registration of the trademark, the Complainant may still claim common-law or unregistered trademark rights by showing that the name WILCOM has become a distinctive identifier associated with the Complainant or its goods and services. For instance, in Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, the panel upheld the complainant`s rights in the unregistered mark CRUX on the ground that the complainant has been using the mark in association with its business for a number of years prior to the registration of the disputed domain name <crux.net>. Similarly, in this case, the Complainant has been using the mark WILCOM for 14 years in association with its goods and services prior to the registration of the disputed domain name by the Respondent in 1995.

In conclusion, the Panel finds that the disputed domain name is essentially identical or confusingly similar to a trademark (WILCOM) in which the Complainant has rights.

C. Rights or Legitimate Interests

While the Complainant bears the burden of proof under paragraph 4(a)(ii) of the Policy, such burden shifts to the Respondent once the Complainant makes a prima facie case, showing that the Respondent lacks rights or legitimate interests. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

In this case, the Panel finds that the Complainant has made a prima facie case showing that the Respondent does not have rights or legitimate interests in the disputed domain name. Internet searches using Google have failed to reveal any association between the Respondent and any business known as Wilcom, as well as any evidence that the Respondent is known, or has ever been known, by the name Wilcom.

Paragraph 4(c) of the Policy allows three nonexclusive methods through which the Respondent can demonstrate that he has rights or legitimate interests in the disputed domain name in responding to the Complaint:

(i) The Respondent`s use of the disputed domain name is in connection with a bona fide offering of goods or services; or

(ii) The Respondent has been commonly known by the disputed domain name; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of the above circumstances apply to the Respondent`s case here. The Respondent`s possession of the disputed domain name for 14 years since the registration on July 26, 1995, fails to demonstrate sufficient legitimate interests in the disputed domain name. The Respondent appears to have been using the disputed domain name to sell pirated copies of the Complainant`s products, and such sale does not constitute a bona fide offering of goods or services. The Respondent has failed to rebut the Complainant`s claim that he has never been associated with the name Wilcom. Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name; on the contrary, the Respondent has been using the disputed domain name to make commercial gain by misleadingly diverting consumers in order to sell them the pirated copies of the Complainant`s computer software.

Accordingly, the Panel holds that the Respondent has no legitimate interests or rights in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides non-limiting circumstances that may demonstrate the registration and use of a domain name in bad faith:

(i) The Respondent has registered or acquired the disputed 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 the Complainant, for valuable consideration in excess of the Respondent`s documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent`s web site or other on-line location, by creating a likelihood of confusion with the Complainant`s mark.

The Panel notes, as also submitted by the Respondent, that the disputed domain name was registered prior to the Complainant`s trademark registrations in 2000 and 2008. However, the Panel further notes the Complainant`s submissions that it has been doing business in many countries since 1981 and has used the trademark WILCOM continuously. Based on the available record, and taking into account the Panel`s further findings under this heading, the Panel finds on balance that the Respondent registered the disputed domain name in bad faith.

In this case, the Respondent has improperly used the disputed domain name in bad faith, selling pirated copies of the Complainant`s software. The fact that the Respondent has used the disputed domain name to sell pirated copies of the Complainant`s software gives rise to a strong inference that the Respondent was aware of the Complainant and its rights in the WILCOM trademark. It is not unreasonable to suggest that the Respondent has intentionally sought to profit from the sales of pirated copies of the Complainant`s software by creating consumer confusion between the Respondent`s disputed domain name and the Complainant`s trademark.

Furthermore, it is plausible to conclude the Respondent acted in bad faith by increasing the asking price for the disputed domain name when the Complainant made a bid for the domain name on the "Afternic.com" website for USD7,000. Given that the Respondent initially refused to transfer or sell the disputed domain name to the Complainant, only to offer the same domain name for sale and raise the purchase price subsequently at a substantial premium, it is not far-fetched to find that the Respondent has registered the disputed domain name to ultimately sell it for windfall commercial gain.

Finally, even though not conclusive, the Panel notes that the Respondent has been a respondent in three other previous domain dispute cases resolved by the Center.

In light of the above, the Panel holds that the requirements of paragraph 4(a)(iii) of the Policy have been made out by the Complainant and that the Respondent`s bad faith registration and use of the disputed domain name has been proven.

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 disputed domain name <wilcom.com> be transferred to the Complainant.

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Thomas P. Pinansky
Sole Panelist

Dated: July 28, 2009