3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2007. On November 12, 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 November 14, 2007, 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. 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 19, 2007, submitted a request that English be the language of proceedings. The Respondent communicated its reply on the same day. 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 (with the Center’s covering email and the Notification of Complaint both in Korean and English), and the proceedings commenced on November 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. The Response (in Korean) was filed with the Center on December 13, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 8, 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 is an online community and entertainment service provider.
The Complainant is the owner of the following trademarks:
DADA NET, Italian Trademark 736304 dated December,11, 1997, filing date 04.07.1995.
DADA NET, Italian Trademark 797568 dated 20.12.1999, filing date July 4, 1997.
DADA WB CITY, Italian Trademark 775111 dated 08.03.1999, filing date June 21, 1996.
DADA, Italian Trademark 797435 dated 20.12.1999, filing date January 20, 1997.
DADA, Italian Trademark 797436 dated 20.12.1999, filing date January 20, 1997.
DADAMOBILE, International Trademark 871557 dated April, 15, 2005.
DADANET, International Trademark 912204 dated October 24, 10.2006.
DADANET, International Trademark 912205 dated October 24, 2006.
DADA, International Trademark 913375 dated October 24, 2006.
DADA, International Trademark 912206 dated October 24, 2006.
DADA, Community Trademark 1903244 dated October 13, 2000.
MOBI DADA NET, Community Trademark Appl. 5695325 dated February 16, 2007.
LIFE DADA NET, Community Trademark Appl. 5695218 dated February 16, 2007.
LOVE DADA NET, Community Trademark Appl. 5694211 dated February 16, 2007.
The Complainant is, also, the owner of numerous domain names which contain the word “Dada” or “Dadanet”.
The disputed domain name was registered by the Respondent on June 28, 2001.
5. Parties’ Contentions A. Complainant The Complainant contends that:
The disputed domain name is identical to DADANET and also to DADA in which the Complainant has rights.
The specific top level of a domain such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Registrant uses the domain name for a “parking” website.
The Respondent has never been commonly known by the domain name in dispute.
The domain name has been registered for the purpose of selling or otherwise transferring the domain name to the Complainant or to a competitor.
The domain name is for sale on Sedo and this shows that the registrant wants to sell the domain name and not to use it.
The domain name provides links to other websites which are of the Complainant, thus creating confusion.
The registrant, using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website or other on line locations, by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent The Respondent claims that it is the combination of two Korean words.
The Respondent further claims that he has no intention to confuse the public.
The Respondent states that in the course of his Internet-based business he tries to secure many domain names and the disputed domain name is one of them.
The Respondent requests the Panel make a finding of a reverse domain name hijacking against the Complainant.
6. Discussion and Findings A. Language of Proceedings The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name is Korean, however 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 registration agreement for the domain name was made in the Korean language. However, it is apparent from the fact that the website with the disputed domain name is used by the Respondent is not exclusively in Korean (English and Italian are utilized), that the Respondent has sufficient ability to communicate in the English language.
The Complainant has requested that the Language of Proceeding be English and has provided supporting arguments as to why the proceeding should be conducted in English to which the Respondent has objected. In view not to unduly delay the proceeding, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case, but to the extent the Respondent has submitted any documents or assertions in Korean, such documents or assertions have been fully considered by the Panel. The Respondent filed a response to the Complainant’s contentions dated December 13, 2007 and it has been reviewed by the Panel (see Groupe Industriel Marcel Dassault, Dassault Aviationv. Mr. Minwoo Park, WIPO Case No. D2003-0989).
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.”
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;
(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 domain name incorporates the Complainant’s registered trademark. Numerous panels have held that where a domain name substantially incorporates a complainant’s trademark, that is sufficient to make the domain name “confusingly similar” within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678; Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415; Xerox Corporation v Imaging Solution, WIPO Case No. D2001-0313).
Moreover, as previous panels have found, the addition of a generic top level domain such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark (see, e.g., Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA165119and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar 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 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 has asserted that the Respondent has no relationship with or authorization from the Complainant for using the 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 Respondent’s claim that he invented the mark is not persuasive. Although the Respondent notes that the domain name was registered prior to the “International Trademark’ registration, the Panel notes that Italian registrations pre date the domain name registration.
In light of the above, the Panel finds that the Respondent does not have rights or legitimates in the disputed domain name.
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 trademarks and service marks are 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 marks.
The Respondent is, in using the domain names, seeking to exploit user confusion by diverting Internet users away from the Complainant’s legitimate websites to the Respondent’s website for his own benefit and commercial gain. Diverting users in this misleading manner is further evidence of bad faith (see Viacom International Inc. v. Matrix Management and T. Parrott, WIPO Case No. D2001-1442).
Further, the Respondent is trading on the goodwill existing in the Complainant’s marks to attract Internet users intentionally to the Respondent’s website for purposes of commercial gain. This constitutes evidence of bad faith use and registration under paragraph 4(b)(iv) of the Policy (see Six Continents Hotels, Inc. v. Anti Globalization Domains, WIPO Case No. D2003-0765; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
It is also well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see Adidas Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Panel finds, in the absence of rebuttal in this respect by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the “intent to sell” requirement of paragraph 4(b)(i).
Accordingly the Panel concludes that the Respondent registered the domain name in bad faith.
In light of the above, the Panel finds that the Complainant has proven bad faith in registration and use on the part of the Respondent.
Furthermore, the Panel concludes that in the circumstances of the present case the Respondent’s request for a finding of reverse domain name hijacking be denied.
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 be transferred to the Complainant.