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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SK Energy Sales Co., Ltd. v. Superkay Comdomain

Case No. D2000-0380

 

1. The Parties

1.1 The Complainant is SK Energy Sales Co., Ltd. of 99, Seorin-dong, Jongro-gu, Seoul 110-110, Korea.

1.2 The Respondent is Superkay Comdomain of KPO Box 1027, Seoul 110-610, Korea.

 

2. The Domain Name and Registrar

2.1 The domain name at issue is <speedmate.com>. The domain name is registered with Network Solutions, Inc. ("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 May 4, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on May 11, 2000.

3.2 On May 11, 2000, WIPO Center transmitted via e-mail a Request for Registrar Verification to NSI.

3.3 By email dated May 14, 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 <speedmate.com>.

3.3.3 The Respondent, Superkay Comdomain, is the current registrant of said domain name. The contact details including the administrative contact and the billing contact are as follows:

Registrant: Superkay Comdomain
Postal Address: KPO Box 1027
Seoul, 110-610
Korea

Administrative and Billing Contacts for the domain name:

Name: Jung, Bong-Jo
Postal Address: KPO Box 1027
Seoul 110-610
Korea

Phone: (82-11) 986-33445
E-mail: interNic@SUPERKAY.COM

Technical Contact for the domain name:

Name: Jung, Bong-Jo
Postal Address: KPO Box 1027
Seoul 110-610
Korea

Phone: (82-11) 986-33445
E-mail: interNic@BLUECITY.COM

3.3.4 NSI’s 4.0 Service Agreement is in effect.

3.3.5 The domain name registration <speedmate.com> is in "Active" status.

3.4 Having verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), WIPO Center on May 19, 2000 sent by courier and email a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The communication to the Respondent by courier and email 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 June 7, 2000). However, the Respondent has made no Response to the Complaint. On June 8, 2000, WIPO Center notified the Respondent by courier and email of the consequences of its default.

3.6 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.

3.7 On June 16, 2000, WIPO Center notified the appointment of the Panel to the Complainant and the Respondent.

3.8 On June 29, 2000, the Panel issued Administrative Panel Procedural Order No. 1 requesting the Complainant to submit a copy of the Complainant’s company register. The Complainant submitted said copy to WIPO Center on July 6, 2000.

 

4. Factual Background

4.1 Complainant has submitted the following nine (9) trademark and service mark registration certificates in Korea for the marks SPEED MATE, SPEED MATE and Design, and SPEED MATE PROFESSIONAL AUTO CARE and Design (collectively called "the SPEED MATE marks"):

    (i) Trademark Registration No. 292,380
    Trademark: SPEED MATE
    Class: 037

    (ii) Trademark Registration No. 302,374
    Trademark: SPEED MATE and Design
    Class: 037

    (iii) Trademark Registration No. 302,375
    Trademark: SPEED MATE PROFESSIONAL AUTO CARE and Design
    Class: 037

    (iv) Service Mark Registration No. 024,216
    Service Mark: SPEED MATE
    Class: 105

    (v) Service Mark Registration No. 024,931
    Service Mark: SPEED MATE
    Class: 112

    (vi) Service Mark Registration No. 025,448
    Service Mark: SPEED MATE and Design
    Class: 105

    (vii) Service Mark Registration No. 025,449
    Service Mark: SPEED MATE PROFESSIONAL AUTO CARE and Design
    Class: 105

    (viii) Service Mark Registration No. 026,056
    Service Mark: SPEED MATE and Design
    Class: 112

    (ix) Service Mark Registration No. 026,955
    Service Mark: SPEED MATE PROFESSIONAL AUTO CARE and Design
    Class: 112

 

4.2 According to the registration certificates, the owner of the trademark and service mark registrations is Yu-Kong. Speedmate, Inc. is recorded as an exclusive licensee for the nine registrations. Speedmate, Inc. has been merged into the Complainant, SK Energy Sales Co., Ltd. ("SKES").

4.3 The Complainant has submitted evidence showing that the SPEED MATE marks are used by SK gas stations' auto maintenance shops.

4.4 The Respondent is not a licensee of the Complainant or the owner of the trademark and service mark registrations, nor is it otherwise authorized to use the SPEED MATE marks.

4.5 The Respondent registered the domain name <speedmate.com> with NSI on February 15, 1999.

 

5. Parties’ Contentions

5.1 The Complainant asserts:

(i) that the Respondent's domain name at issue is identical and/or confusingly similar to the SPEED MATE marks set forth in paragraph 4.1.

(ii) that the trademark and service mark registrations are owned by the Complainant's parent company and used by the Complainant as the successor in interest to Speedmate, Inc., the exclusive licensee appearing on the registration certificates;

(iii) that the Complainant is the largest energy company in Asia in the area of oil and petrochemical products, operating about 3,800 SK service stations in Korea, which constitute 53% of the market share in Korea, and over 700 auto maintenance shops in Korea;

(iv) that the SPEED MATE marks are used in the Complainant's shops, promotional materials, and television promotions, etc.;

(v) that given the fame of the SPEED MATE marks in Korea, the Respondent could have no reason for registering the domain name other than to profit from the association with the marks;

(vi) that during several contacts by Mr. Kim Seung-bock, an employee of the Complainant, the Respondent demanded US$15,000 at first and US$30,000 later for the transfer of the domain name to the Complainant;

(vii) that the Respondent is a Korean entity which is not operating an active website under the domain name, and the Complaint has found neither evidence of use nor demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known by the domain name; and

(viii) that the SPEED MATE mark is not descriptive in any manner, but unique and so closely identified in Korea with the Complainant and Complainant's parent company.

5.2 The Complaint thus sought the remedy that the domain name at issue be transferred to the Complainant.

5.3 The Respondent has not filed any response to the Complaint.

 

6. Discussion and Findings

6.1 The Complainant, under Paragraph 4(a) of the Policy, is required to show:

(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;

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

6.2 The Panel determines that the Respondent has no rights or legitimate interests in respect of the domain name for the following reasons:

(1) The Respondent has failed to submit any evidence that it has any rights or legitimate interests in respect of the domain name at issue; and

(2) According to the Complainant's search, the Respondent is not operating an active website under the domain name.

(3) The Panel determines that the Respondent has registered the domain name in bad faith because the SPEED MATE marks had attained their fame in Korea before the Respondent registered the domain name.

(4) The domain name must not only have been registered in bad faith, but must also be used in bad faith. In determining whether it is being so used, the Panel adopts the reasoning set out in World Wrestling Federation Entertainment Inc. v. Michael Busman, WIPO Case No. D1999-001 and Harrods v. Boyd, WIPO Case No. D2000-0060. The Respondents in these cases had offered to sell the domain name to the Complainants "for valuable consideration in excess of out-of-pocket expenses." In the present case, it is considered that in exchange for the transfer of the domain name, the Respondent demanded US$15,000 at first and increased to US$30,000 later, both of which clearly exceed the out-of-pocket expenses. Thus, the Panel determines that the Respondent is using the domain name in bad faith.

6.5 The Panel finds that the domain name <speedmate.com> is confusingly similar to the SPEED MATE marks because the word "SPEED MATE" is a predominant part of the SPEED MATE marks.

6.6 The Complainant, however, does not appear on the trademark and service mark registration certificates, and the Panel must address the issue of whether the Complainant has rights for the SPEEDMATE marks so as to request the transfer of the domain name to the Complainant under Paragraphs 3(c) and 4(a) of the Policy.

(1) According to the registration certificates, the owner of the trademark and service mark registrations is Yu-Kong. The Complainant asserted that Yu-Kong has changed its name to SK Corporation, the Complainant's parent company. The Panel finds that the company registration of SK Corporation (the original Korean document, unlike its English translation), attached to the Complaint as Exhibit 1, does not indicate the name change from Yu-Kong. Nonetheless, in view of the public information, the Panel accepts the Complainant’s assertion that SK Corporation is the current name of Yu-Kong and thus is the owner of the trademark and service mark registrations.

(2) On the registration certificates, Speedmate, Inc. is shown as the exclusive licensee. The company registration of the Complainant shows that Speedmate, Inc. has merged into the Complainant. Thus, the Panel concludes that the Complainant is the exclusive licensee for the trademark and service mark registrations.

(3) The Panel finds that the SPEED MATE marks are extensively used in Korea by the Complainant.

(4) The Panel also finds that the SPEED MATE marks are closely identified in Korea with the Complainant and the Complainant's parent company, as asserted in the Complaint (see Section C. Paragraph 9 of the Complaint).

(5) In view of the above, the Panel reviews whether the Complainant has rights for the marks so as to request the transfer of the domain name to the Complainant under the Policy. If the SPEED MATE marks had attained their fame by the use of the Complainant without the registration of trademarks and service marks, the Complainant would be considered to have such rights for the marks. However, the Complainant has used the marks under an exclusive license from the owner of the trademark and service mark registrations. It is noted from the registration certificates that the exclusive license is to expire on February 11, 2005. Although the license may continue to be granted, it is limited in nature. A license can and may be revoked at any time. Further, as asserted in the Complaint, the SPEED MATE marks are closely identified by consumers with SK Corporation, the owner of the trademark and service mark registrations, as well as with the Complainant. Therefore, the Panel concludes that the Complainant does not have rights for the marks which can override the rights of the owner of the trademark and service mark registrations.

(6) The Panel's above conclusion is supported by other decisions including The Avenue, Inc. and United Retail Incorporated v. Chris Guirguis doing business as Lighthouse Web Design, WIPO Case No. D2000-0013; and Westfield Corporation, Inc. and Westfield Limited v. Graeme Michael Hobbs, WIPO Case No. D2000-0227. In these cases, the complaints were filed by more than two complainants (e.g., the owners of trademark registrations and licensees of the trademarks). The panels in these cases determined that the domain names at issue be transferred only to one of the complainants who are the owners of the trademark registrations.

 

7. Decision

The remedy requested by the Complainant pursuant to Paragraph 4 of the ICANN Policy is denied because the Complainant, as the exclusive licensee, failed to show that it has rights for the SPEED MATE marks so as to request the transfer of the domain name to the Complainant.

 


 

Young Kim
Presiding Panelist

Date: July 19, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0380.html

 

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