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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cho Yong Pil v. ImageLand, Inc.
Case No. D2000-0229
1. THE PARTIES
1.1 The Complainant is Cho Yong Pil of YPC International, 1155 15th Street, N.W., Suite 911, Washington, DC 20005, USA.
1.2 The Respondent is ImageLand, Inc. of 2F, Hyunjung Bldg., 281-2, Yangjae-Dong, Seocho-Ku, Seoul 137-130, Republic of Korea.
2. THE DOMAIN NAME AND REGISTRAR
2.1 The domain name at issue is <CHOYONGPIL.COM>. The domain name is registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").
3. PROCEDURAL HISTORY
3.1 A Complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on March 30, 2000. The signed original Complaint was received by WIPO Center on March 31, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on April 3, 2000.
3.2 On April 3, 2000 a request for Registrar Verification was transmitted by WIPO Center to NSI to:
3.2.1 Confirm that a copy of the Complaint was sent to NSI by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
3.2.2 Confirm that the domain name at issue is registered with NSI;
3.2.3 Confirm that the Respondent is the current registrant of the domain name;
3.2.4 Provide the full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name;
3.2.5 Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain name at issue; and
3.2.6 Indicate the current status of the domain name.
3.3 By email dated April 3, 2000, NSI advised WIPO Center as follows:
3.3.1 NSI had received a copy of the complaint from the Complainant.
3.3.2 NSI is the Registrar of the domain name registration <CHOYONGPIL.COM>.
3.3.3 The Respondent, ImageLand Inc., is the current registrant of the said domain name. The contact details including the administrative contact and the billing contact are as follows:
Name: ImageLand Inc.
Postal Address: 2F, Hyunjung Bldg.,
Seocho-Ku, Seoul 137-130
Republic of Korea
Phone: (82-2) 578-5398
Fax: (82-2) 529-4785
Administrative and Billing Contacts for the domain name:
Name: Wang, Young-Kook
3.3.4 NSI’s 4.0 Service Agreement is in effect.
3.3.5 The domain name registration <CHOYONGPIL.COM> is in "Active" status.
3.4 Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on April 5, 2000 sent by courier, facsimile and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. The communication to the Respondent by courier, email and facsimile was recorded as successful. A copy of the Complaint was also emailed to NSI and ICANN.
3.5 The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by April 24, 2000).
3.6 The Respondent has made no Response to the Complaint. On April 27, 2000, WIPO Center notified the Respondent by courier, email and facsimile of the consequences of its default in failing to file a Response.
3.7 The Complainant elected to have its Complaint resolved by a single-member Panel and it has duly paid the amount required of it to WIPO Center.
3.8 On April 27, 2000, WIPO Center invited Young KIM of Kim & Chang, Seoul, Republic of Korea, to be the Panelist, which was accepted.
3.9 On May 1, 2000, the Complainant and the Respondent were notified of the appointment of the Panel.
3.10 On May 1, 2000, WIPO Center forwarded to the Panelist by courier the relevant submissions and the record. These were duly received by the Panelist. In the absence of exceptional circumstances, the Panel is required to forward its decision by May 14, 2000.
3.11 The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
3.12 The language of the administrative proceeding is English, being the language of the registration agreement.
4. FACTUAL BACKGROUND
4.1 The Complainant has submitted materials showing that Cho Yong Pil is the name of a famous Korean pop music artist who performs, records, and sells records, CDs, cassettes, and related music products under the name "Cho Yong Pil" (sometimes as "Cho Yong-Pil"), and that the name Cho Yong Pil has been used in association with his music products and performances over thirty years in Korea and internationally.
4.2 The Respondent is not a licensee of the Complainant, nor is it otherwise authorized to use the Complainant’s name.
4.3 According to the WHOIS information supplied by the Complainant, the <CHOYONGPIL.COM> domain name was registered on December 22, 1998.
4.4 The Complainant has failed to locate any active website under the domain name <CHOYONGPIL.COM>.
4.5 On January 18, 2000, a representative of the Complainant, Jin Hyun Ahn-Cho of YPC International, contacted Mr. Wang, Young-Kook, the administrative contact of the Respondent by telephone. During the conversation, the Respondent informed that it would not be willing to transfer the domain name. The Respondent also indicated during the telephone conversation that it had registered the domain name at issue along with several other domain names comprised of the names of famous people. On January 20, 2000, the Complainant sent a letter to the Respondent in an attempt to resolve the matter. However, the Respondent did not reply to the Complainant’s January 20, 2000 letter.
4.6 Upon receipt of the Complaint, however, the Respondent sent an email to the Complainant stating that it is willing to assign the domain name to the Complainant if it can use the Complainant’s one cut picture in its advertisement. In its response email dated April 3, 2000, the Complainant refused to accept the Respondent’s proposal for the reason that such an endorsement is a business activity and additional source of revenue for the Complainant.
5. PARTIES CONTENTIONS
5.1 The Complainant has asserted that the name Cho Yong Pil (or Cho Yong-Pil) has attained the status as a common law mark of the Complainant, a famous Korean pop music artist, for the reasons that: the name has been used over thirty years in association with his music products and performances and his fame as a pop music artist is fully recognized both within Korea and internationally.
5.2 The Complainant has submitted that the Respondent is not operating an active website under the domain name.
5.3 The Complainant has submitted that the domain name at issue has been registered and used by the Respondent in bad faith because the Respondent has sought to assign the domain name to the Complainant in exchange for an endorsement, which exceeds "out-of-pocket" expenses.
5.4 The Respondent has made no submission.
6. DISCUSSION AND FINDINGS
1. The Complainant, under Paragraph 4(a) of the ICANN Policy, is required to show:
6.1.1 That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
6.1.2 That the Respondent has no legitimate interests in respect of the domain name; and
6.1.3 That the domain name has been registered and used in bad faith.
2. It is not disputed that the Complaint’s name Cho Yong Pil is essentially the same as the Respondent’s domain name <CHOYONGPIL.COM>. However, it should be reviewed whether the name Cho Yong Pil functions as the Complainant’s mark. It is noted that the Complainant has no trademark or service mark registration of the name and that the ICANN Policy and Rules do not require that the Complainant’s mark be registered with a government authority or agency for such right to exist. In Cases D2000-0014 and D2000-0015, the WIPO Panels considered that reputation in unregistered marks sufficient to give the Complainant a claim for passing off was sufficient to constitute trademark rights for the purpose of the Rules.
Here, the passing off is likely given Cho Yong Pil’s fame, especially in Korea and Asia. Accordingly, the Panel determines that the Complainant has shown that the fame in his name Cho Yong Pil is sufficient to give the Complainant trademark or service mark rights for the purpose of the Rules. The Panel thus concludes that the domain name <CHOYONGPIL.COM> is identical or confusingly similar to the Complainant’s mark, Cho Yong Pil.
6.3 The Panel determines that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:
(a) The Respondent has failed to submit any evidence that it has any right or legitimate interest in respect of the domain name at issue; and
(b) According to the Complainant’s search, the Respondent is not operating an active website under the domain name.
6.4 The Panel determines that the Respondent has registered the domain name in bad faith because the Complaint’s name was famous at the time of registration of the domain name, and according to the Complainant’s assertion, Respondent had registered the domain name at issue together with name of other famous people.
6.5 The domain name must not only be registered in bad faith, but must also be used in bad faith. In determining whether it has been so used, the Panel adopts with respect the reasoning set out in World Wrestling Federation Entertainment Inc. v. Michael Busman, Case No. D1999-0001 and Harrods Ltd v. Boyd, Case No. D2000-0060. The Respondents there had offered to sell the domain name to the Complainants "for valuable consideration in excess of out-of-pocket expenses." In the present case, there is evidence of an offer by the Respondent to sell the domain name to the Complainant in exchange for the endorsement from the Complainant for the Respondent’s business. Such endorsement is likely to exceed the Respondent’s out-of-pocket expenses. Thus, the Panel determines that the Respondent is using the domain name in bad faith.
7.1 For the foregoing reasons, the Panel decides that:
(a) The domain name registered by the Respondent is identical or confusingly similar to the trademark or service mark to which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent’s domain name has been registered and is being used in bad faith.
7.2. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel hereby orders that the registration of the domain name <CHOYONGPIL.COM> be transferred to the Complainant.
Date: May 10, 2000