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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Maplin Electronics Limited v. Lee Jeongsoon

Case No. D2006-0011

 

1. The Parties

The Complainant is Maplin Electronics Limited, South Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Lee Jeongsoon, Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <maplin.com> is registered with Cydentity, Inc. d/b/a Cypack.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2006. On January 5, 2006, the Center transmitted by email to Cydentity, Inc. d/b/a Cypack.com a request for registrar verification in connection with the domain name at issue. On January 12, 2006, Cydentity, Inc. d/b/a 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 for the administrative, billing, and technical contact. 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 January 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2006. The Response was filed with the Center on February 7, 2006.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on February 17, 2006. 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.

The Complaint was filed in the English language, and provided Complainant’s reasons for requesting the proceedings to be conducted in English, although the registration agreement concerning the disputed domain name is in Korean. The Center notified the Parties that the Complaint would initially be accepted in English, reserving the ultimate decision for the Panel, and allowing the parties to submit documents in either English or in Korean. The Respondent filed her response in Korean.

 

4. Factual Background

Complainant is one of the United Kingdom’s largest specialist electronics suppliers and retailers with over 12,000 products on sale from an extensive catalogue made available via mail order and a network of over 100 retail stores. The Complainant’s headquarters are located in the United Kingdom, but it also has business operations in Taiwan, Province of China, Hong Kong, SAR of China, and China. Further, the Complainant has a number of United Kingdom and Community trademark registrations on the MAPLIN mark.

The Respondent registered the subject domain name on August 23, 2002. The Respondent holds a trademark registration in the Republic of Korea for the mark MAPLIN (Reg. No. 0108838), the application for which was filed on October 21, 2003, and which was registered on November 25, 2004. The Respondent holds the said trademark registration via assignment from another individual by the name of Lee Wongi on March 21, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights. More specifically, the Complainant has trademark registrations for MAPLIN, MAPLIN.CO.UK, MAPLIN.COM and MAPLIN.EU.

The Complainant also contends that the Respondent has no rights or legitimate interests in the subject domain name. More specifically, the Complainant asserts that the Respondent’s use of the disputed domain name thus far cannot be viewed as a bona fide offering of goods or services, since it has been used in connection with domain name parking services in the past, and presently is used to simply display content extracted from various other sites.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. More specifically, the Complainant asserts that the disputed domain name was registered and is being used by the Respondent with the intent of attracting web users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark and that the Respondent sought commercial gain through the pay-per-click benefits provided by the relevant domain name parking services to which the disputed domain name was linked in the past.

B. Respondent

The Respondent concedes that the subject domain name is “similar” to the Complainant’s trademarks, but asserts that she was not aware of the Complainant’s trademark when she obtained registration of the disputed domain name. The Respondent further contends that “maplin” was formed from the “two common nouns” “map” and “lin” because she intended to use the site as a sort of “map of the internet.” The Respondent also asserts that “maplin” is therefore a generic term.

The Respondent contends that she has a right or legitimate interest in the subject domain name. The Respondent relies on ownership of a trademark registration in the Republic of Korea for “MapLin” (Reg. No. 0108838), which was registered on November 25, 2004, and which the Respondent received via assignment on March 21, 2005.

The Respondent contends that there was no bad faith in her registration or subsequent use of the disputed domain name since she was unaware of the Complainant’s mark when she obtained the registration. Further, the Respondent argues that using a domain name in conjunction with a domain name parking service is common practice and not indicative of bad faith. The Respondent further contends that her present use of providing links and information to visitors is a legitimate use.

 

6. Discussion and Findings

A. Language of the Proceedings

The domain name registration agreement being in Korean, the default language of the proceedings is Korean. However the Complainant submitted arguments in the Complaint as to why the proceedings should proceed in English, without the necessity of submitting a translated complaint in the Korean language. The Center advised the Parties that the Center would accept the Response in either Korean or English. The Parties were further advised that the ultimate decision regarding the language of the proceedings would be within the discretion of the Panel, and that the Panel may request translations from either Party. The notice provided by the Center to the Parties was both in English and in Korean. The Respondent subsequently submitted her Response in the Korean language.

The Panel notes that the Respondent has sufficient ability to communicate in English. The disputed domain name was used in connection with domain name parking services in the United States of America, which certainly would have required the use of English to establish such services in connection with the disputed domain name. Further, based on the Respondent’s response, it is rather clear that the Respondent was able to competently understand the assertions made in the Complaint, which was submitted in English. Moreover, the Respondent cites various UDRP decisions rendered in the English language to support her assertions.

In view of the Respondent’s apparent competency in English and considering she has been given the opportunity to respond in Korean, the Panel finds that both Parties have been given a fair opportunity to present their case. In the circumstances of this case, paragraph 11 of the Rules is best served by accepting the filings in the preferred languages of the Parties, and rendering the decision in the English language. Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

B. Identical or Confusingly Similar

The Complainant has submitted evidence of its rights for the mark MAPLIN. The domain name in dispute is identical to the Complainant’s mark. Therefore, the first element (Paragraph 4(a)(i) of the Policy) has been established.

C. Rights or Legitimate Interests

The Respondent contends that she has a right and legitimate interest in the domain name since she holds a trademark registration corresponding to the subject domain name. Having a trademark registration can create a right or legitimate interest to a corresponding domain name for the purposes of the UDRP. “However, it would be a mistake to conclude that mere registration of a trademark right creates a legitimate interest under the Policy. … To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purposes of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847. See also Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679:

“First of all, it should be stated that the registration of a trademark which is identical with or similar to the domain name in dispute does not always or automatically provide the registrant with rights and legitimate interests in respect of the domain name, although it can be strong evidence of the existence of such rights or legitimate interests. The existence of any right or legitimate interest on the domain name in dispute should be determined by taking in consideration all relevant factors …”

Turning to the Respondent’s trademark registration, the application was filed on October 21, 2003, by an individual named Lee Wongi. The registration was issued to Lee Wongi on November 10, 2004. The registration was then assigned to the Respondent on March 21, 2005, which was ten days after the Complainant first wrote to the Respondent regarding the disputed domain name.

Upon review of the Korean trademark records, this Panel notes that the original trademark registrant (Lee Wongi) and the present Respondent (Lee Jeongsoon) appear to be siblings. These individuals share the same last name, are very close in age, and have identical home addresses as reflected in the Korean trademark records.

The Panel notes that this is not the first time it is encountering the name Lee Wongi (the original registrant of the asserted trademark registration). This individual was the losing party in a prior WIPO UDRP case in which this Panel served as the Presiding Panelist. Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984. Before that decision, Lee Wongi was the losing party in three other domain name proceedings. L’TUR Tourismus AG v. Lee Wongi, WIPO Case No. D2003-0194; Sydkraft AB v. Lee Wongi, WIPO Case No. D2003-0253; OTEX Corporation Limited v. Wongi Lee, NAF FA0206000114688.

Given the long and well documented history of domain name abuses by the brother of the Respondent, as well as the fact that the domain name has been used in connection with parking services for commercial gain, the Panel concludes that there are sufficient circumstances to find that the trademark registration asserted by the Respondent does not provide evidence of a right or legitimate interest to the subject domain name. To the contrary, it appears that the trademark registration was acquired from the Respondent’s brother after receiving notice of this dispute merely for the purpose of making a seemingly legitimate claim on rights to the disputed domain name in this proceeding.

For the reasons provided above, this Panel finds that the second element (Paragraph 4(a)(ii) of the Policy) has been satisfied.

D. Registered and Used in Bad Faith

The Respondent claims that she was not aware of the Complainant at the time she registered the domain name in dispute. This is hardly credible. If the Respondent did, in fact, have any intentions of making a bona fide use of the subject domain name, it would have been quite natural to run a search of the term via any number of popular search engines, which would easily have identified the Complainant and its related sites.

The Respondent further contends that using the domain name in connection with a domain name parking service does not constitute a bad-faith use, and also explains that she had intended to run the web site as a sort of “map of the internet.” If such had been her intent, it is difficult to understand why the Respondent merely parked the disputed domain name at various domain name parking sites for almost three years after she registered it. The content of the site only changed after Complainant sent a letter to the Respondent. As determined by prior UDRP decisions, parking a domain name in such a manner for financial gain is common among cyber-squatting cases and may demonstrate bad faith on the part of the registrant. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

The Respondent also argues that her present use of the site (no longer linked to a domain name parking service) is a good-faith use. First, the content displayed after receiving notice of the dispute is suspect at best and, without other circumstances and objective evidence, does not serve as evidence to dispel the use of the disputed domain name in bad faith by the Respondent before being alerted of the dispute.

The changed content in fact further supports a finding of bad faith in this case. The Respondent put up the new content shortly after a communication was allegedly forwarded to the Respondent by the Complainant. The changed content tries to give the appearance of a substantive site that provides services and goods. However, the site is in fact nothing more than a skeleton of frames that are filled with pictures and content automatically pulled from other sites. In the Panel’s view, this is an intentional attempt to mislead and further suggests the Respondent’s bad faith.

For the reasons provided above, this Panel finds that the third element (Paragraph 4(a)(iii) of the Policy) has been satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <maplin.com> be transferred to the Complainant.


Ik-Hyun Seo
Sole Panelist

Dated: April 10, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0011.html

 

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