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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Massive, Inc. v. Ricky Park

Case No. D2008-1375

1. The Parties

The Complainant is Massive, Inc. of New York, United States of America, represented by Cho & Partners of Seoul, Republic of Korea.

The Respondent is Ricky Park of Seoul, Republic of Korea, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <massivekorea.com> is registered with Inames Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in e-mail form on September 9, 2008, and in hard-copy form on September 16, 2008.

On September 10, 2008, the Center transmitted by e-mail to Inames Co., Ltd. a request for registrar verification in connection with the disputed domain name. On September 11, 2008, Inames Co., Ltd. transmitted by e-mail to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.

On September 16, 2008, the Center notified the Parties of the procedural rules relevant to the language of the proceeding. The Center entertained the arguments of the Complainant and the Respondent on September 20 and September 24, 2008, respectively.

On September 26, 2008, the Center notified the Parties of its preliminary decision to accept the Complaint in English and proceed with the case both in Korean and English. The Center also 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”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2008.

The Center received the Respondent’s Response to the Complaint in e-mail form on October 16, 2008 and in hard copy on October 21, 2008.

On November 11, 2008, the Center appointed Junghye June Yeum as the sole panelist in this matter. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

On November 12, 2008, the Complainant submitted an unsolicited supplemental filing to the Center in e-mail form. On November 15, 2008, the Respondent in turn submitted an unsolicited supplemental filing to the Center.

4. Factual Background

As indicated in the WhoIs registration record provided as Annex A to the Complaint, the Respondent registered the disputed domain name <massivekorea.com> on December 23, 2005.

The Complainant was established in 2002. The Complainant engages in creating a network for video game advertising, and provides software and services to host advertisements within video games. The WhoIs registration record and its underlying registry data (http://networksolutions.com/whois-search/massiveincorporated.com) indicate that the Complainant registered the domain name <massiveincorporated.com> on February 18, 2003. The Complainant operates its principal company website at “www.massiveincorporated.com”.

The Complainant owns Trademark Registration No. 3,039,460 obtained from the United States Patent and Trademark Office (the “USPTO”) on January 10, 2006 for the trademark MASSIVE, for communications services, namely, electronic transmission of advertisements in real time to users of computers and other electronic devices; communications services, namely, transmitting streamed visual advertising via the Internet; transmission and receipt of information by electronic communications networks, in Class 38. The USPTO registration certificate states that the first use in commerce of the trademark began in February 2004.

The Complainant also owns the registration for the trademark MASSIVE AND DESIGN in Republic of Korea (“Korea”).

The Complainant was acquired by Microsoft Corporation in May 2006. The Complainant’s website shows that it has offices in the United States of America (“United States” or “U.S.”), the United Kingdom of Great Britain and Northern Ireland, Canada, Germany, France and Korea.

The Respondent registered the disputed domain name <massivekorea.com> on December 23, 2005.

In addition to the disputed domain name <massivekorea.com>, the Respondent owns registration of the following domain names: <massivekorea.co.kr>, <massiveincorporated.kr>, <massiveincorporated.co.kr>, <massive.co.kr>, <massive.kr>, and <massivekorea.kr>. The domain names <massive.co.kr> and <massiveincorporated.co.kr> were registered on December 21, 2005. The domain name <massivekorea.co.kr> was registered on December 23, 2005. The domain names <massive. kr>, <massiveincorporated.kr>, and <massivekorea.kr> were registered on February 28, 2007.

None of these domain names are used to conduct any business or service, bur rather the screen at the corresponding website shows a sign that says “Under Construction.”

5. Parties’ Contentions

A. The Complaint

(i) Identical or Confusingly Similar

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s MASSIVE mark.

In support of this argument, the Complainant states that it owns a U.S. federal trademark registration for the trademark MASSIVE in the United States and for the trademark MASSIVE AND DESIGN in Korea. The Complainant points out that the disputed domain name is made up of its mark MASSIVE and the country name “Korea.” In that regard, the Complainant points to prior UDRP decisions holding that where registrants of disputed domain names simply added a country name to a registered trademark, such domain names are confusingly similar.

(ii) Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

In support of its argument, the Complainant cites the fact that the Respondent has made no use of the disputed domain name and that he does not hold any relevant trademark registrations.

(iii) Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is now using the disputed domain name in bad faith.

As support, the Complainant states that the Respondent has registered six other domain names incorporating the Complainant’s mark MASSIVE, i.e., <massivekorea.co.kr>, <massiveincorporated.kr>, <massiveincorporated.co.kr>, <massive.co.kr>, <massive.kr>, and <massivekorea.kr>, none of which is being actively used.

The Complainant also points out that in response to its offer to purchase said domain names for 5,000USD, the Respondent stated his willingness to sell these domain names for approximately 100,000USD, which the Complainant asserts is far in excess of out-of-pocket costs directly related to the said domain names.

The Complainant further argues that bad faith is demonstrated by the fact that <massiveincorporated.co.kr> was among the very first domain names that the Respondent registered. The Complainant asserts that this domain name exactly corresponds to the Complainant’s website address (“www.massiveincorporated.com”) and is precisely the Complainant’s official name. In particular, the Complainant asserts that the term “incorporated” is not used in Korea as a company designation and that legally formed companies in Korea are designated as “Co., Ltd.”

B. The Response

The Respondent asserts that he has been planning on setting up an Internet business since 1997 and that is the reason why he registered the disputed domain name on December 23, 2005. He states that he never sought financial gains from the Complainant until the Complainant first contacted him for a possible purchase of the disputed domain name.

The Respondent further asserts that he is an individual and is not in competition with the Complainant, and that by registering the disputed domain name, he did not cause any confusion or interfere with the Complainant’s business.

The Respondent also asserts that the word “massive” is merely a dictionary word and thus the disputed domain name <massivekorea.com> should be treated differently from such domain names as <ebaykorea.com>, <attmexico.com> or <aolfrance.com>. The Respondent asserts that the Complainant, Massive, Inc., is not sufficiently well known to have an exclusive right in the mark MASSIVE.

The Respondent argues that just as the domain name <tour2korea.com> is a legitimate website and is not infringing the trademark right of the owners of such domain names as <pgatour.com> and <touramerica.com> despite their similarity, so should the disputed domain name <massivekorea.com> be found to be a valid domain name.

The Respondent asserts that a search of the USPTO website has revealed forty-two different trademarks MASSIVE, and that the Complainant has not shown as to why it should be allowed to claim an exclusive ownership right in the disputed domain name.

The Respondent also asserts that the facts that several MASSIVE marks have been already registered in Korea and that the Complainant’s trademark application for MASSIVE received final rejection support a finding against the Complainant in this case.

C. The Complainant’s Supplemental Filing

The Complainant’s supplemental filing was submitted to the Center in e-mail form on November 12, 2008.

In its supplemental filing, the Complainant contends that the Policy merely requires the existence of a trademark right and that a trademark registration in the country of the Respondent is not required.

The Complainant further contends that multiple registrations for the same term by different trademark owners can co-exist if the relevant goods/services are not conflicting with one another.

The Complainant also points out that the Respondent has not produced any evidence in support of the reference made to business plans in connection with the disputed domain name.

D. The Respondent’s Supplemental Filing

The Respondent’s supplemental filing was submitted to the Center in e-mail form on November 15, 2008.

The Respondent asserts that the Complainant’s trademark registration in the United States is insufficient to show its right to the disputed domain name because the Complainant’s trademark application in Korea was rejected. The Respondent asserts that the Complainant bears the burden of proving that it has an exclusive right to the disputed domain name <massivekorea.com>. In this regard, the Respondent argues that the Complainant has failed to prove that it has a greater right to the disputed domain name than the other U.S. federal trademark registration owners of the mark MASSIVE.

The Respondent also denies that the facts that disputed domain name is not being used and that he owns other domain names incorporating the word “massive” demonstrate bad faith registration. In support of this assertion, the Respondent states that the relevant Korean authorities rejected similar arguments made by the Complainant, thereby denying its application requesting the transfer of the other related domain names, namely <massivekorea.co.kr>, <massiveincorporated.kr>, <massiveincorporated.co.kr>, <massive.co.kr>, <massive.kr>, and <massivekorea.kr>.

6. Discussion and Findings

6.1. Language of Proceedings

Pursuant 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 Panel notes that 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, the possibility of delay in the proceeding in the event translations are required, and other relevant factors.

Here, the language of the Registration Agreement for the disputed domain name is Korean. Notwithstanding, the Complaint filed the Complaint in the English language. By way of reply to the Center’s inquiry, on September 20, 2008, the Complainant contended that English should be the language of the proceeding. The Complainant asserted that the Respondent is capable of communicating in English on the ground that he aptly responded to the communications from the Complainant made in English.

In reply, on September 24, 2008, the Respondent argued that the language of the proceeding should not be Engligh since he had the Complainant’s e-mail communications translated by others and that he had never lived in an English-speaking country.

On September 26, 2008, the Center preliminarily decided to accept the Complaint in English and proceed with the case both in Korean and English.

The Panel notes that although the Registration Agreement for the disputed domain name was made in the Korean language, the Panel is reluctant at this juncture to ask the Parties to submit all documents in Korean. The Panel further notes that the Center has conducted its communications with the Parties in both Korean and English and that the Respondent was given the opportunity to submit a Response in Korean or English, and in fact did submit all of his submissions in Korean.

Should the Panel now require translation of the Complainant’s submissions, this proceeding would be unduly delayed, and the Complainant would have to incur expenses for translation or additional legal costs. The Respondent has responded in Korean in a timely manner to both of the Complainant’s submissions in English. The Respondent has not indicated any difficulty or prejudice resulting from the English-language submissions. The Panel is thus of the view that requiring the Complainant to submit translated versions of its submissions is unlikely to make any substantial difference in this proceeding.

As such, the Panel finds that the proceeding has been efficiently conducted in both Korean and English languages without prejudice to either Party, and that the practical import of the Panel’s determination as to the language of the proceeding is as to which language the Panel’s Decision is to be rendered in.

Against this factual and procedural backdrop and in the interest of fairness to both Parties and efficacy of the proceeding, the Panel hereby decides, under paragraph 11 of the Rules, that both English and Korean shall be the languages of this proceeding and that both Parties were properly permitted to submit their respective submissions in either language.

As for the language of the Decision, the Panel notes that prior UDRP decisions deemed relevant to this proceeding and various standards and principles set forth therein are predominantly available in English. And for similar reasons that the Panel found that the Respondent would not suffer prejudice as a result of receiving Complainant’s pleadings in English in this case, the Panel finds that no prejudice will arise vis-à-vis this Decision being rendered in English. The Panel also notes that it is under a duty to “ensure that the administrative proceeding takes place with due expedition.” Paragraph 10(c) of the Rules.

Given the above-described circumstances of this proceeding, the Panel exercises its discretion pursuant to paragraph 11 of the Rules and thereby renders its decision in English. Windsolutions Sarl v. Jin-Hak Yoo, WIPO Case No. D2008-1204; Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002.

6.2. Procedural Findings

Both the Complainant and the Respondent submitted unsolicited supplemental filings in this proceeding. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings.

The Panel shares the view expressed by other panels that parties must refrain from submitting unsolicited further pleadings, that parties should only submit further pleadings upon request for such from the panel, and that further pleadings should be requested by the panel in exceptional cases only. The Leading Hotels of the World Ltd. v. Online Travel Group, WIPO Case No. D2002-0241.

In this case, while there has been no such request, the Panel reviewed and considered the supplemental filings of both Parties. The Panel did so in part because the Complainant’s additional filing challenges the factual credibility of statements made by the Respondent and purports to address facts that the Complainant initially deemed irrelevant and thus had not expected to address in the Complaint. Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005-0165; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

More importantly, the Respondent also had an opportunity to submit a reply to the Complainant’s supplemental filing. As such, the Panel notes that the Parties have been treated with equality and each Party has been given a fair opportunity to present its case, as provided for in paragraph 10 of the Rules. Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484.

6.3. Substantive Elements of the Policy

To succeed, the Complainant must establish under paragraph 4(a) of the Policy that

i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

iii) the disputed domain name has been registered and is being used in bad faith by the Respondent.

A. Identical Or Confusingly Similar

(i) Rights In A Mark

To show that it is the owner of the trademark MASSIVE, the Complainant has produced the Certificate of Registration No. 3,039,460 obtained from the USPTO on January 10, 2006, for communications services, namely, electronic transmission of advertisements in real time to users of computers and other electronic devices; communications services, namely, transmitting streamed visual advertising via the Internet; transmission and receipt of information by electronic communications networks, in Class 38.

Panels have consistently held that if a complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights, and that the location of the trademark office of the registered trademark is irrelevant when finding rights in a mark. Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358.

Although the mark MASSIVE was registered after the Respondent registered the disputed domain name, that does not bar the Complainant from relying on it to show rights sufficient to satisfy paragraph 4(a)(i) of the Policy. As one panel noted, “Paragraph 4(a)(i) does not expressly require that a complainant demonstrate that it had rights in a trademark or service mark prior to the respondent’s registration of the disputed domain name. Instead, the Policy refers to the complainant’s ownership of trademark rights in the present tense.” Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038. Thus, it is sufficient that the Complainant has trademark rights at the time the Complaint is filed. Intuit Inc. v. Nett Corp., WIPO Case No. D2005-1206.

The Respondent raises serious allegations concerning whether the term “massive” is a generic or dictionary word such that the term has no trademark significance.

The Panel notes that questions of trademark invalidity are not within the purview of a UDRP proceeding and are best left for either court adjudication or inter-parties adjudication before appropriate governmental bodies having requisite jurisdiction and competence to handle such issues. Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824; Lake at Las Vegas Joint Venture v. Principal Equiti, Inc., WIPO Case No. D2002-0758; The Amazing Kreskin v. Gerry McCambridge, WIPO Case No. D2000-1730.

While the Complainant’s trademark application for the mark MASSIVE was denied by the relevant Korean authorities, the Panel notes that for purposes of the assessment of this first element of paragraph 4(a) of the Policy, prior UDRP panels have held that it is irrelevant that a complainant’s trademark was not registered in the country in which the respondent operates. Systea GmbH v. Marketpoints.com New Media Branding Services/DNS Administrator, WIPO Case No. D2006-0324. The Panel further notes that the identity or confusing similarity must be assessed regardless of the country of registration of the complainant’s trademark. Thaigem Global Marketing Limited, supra.

To the extent that the Policy and UDRP precedent do not require the Complainant to procure such registration in the country of the Respondent in order to show a valid trademark right, the Panel is reluctant to penalize it for unsuccessfully attempting to do so.

Accordingly, the Panel concludes that the registered trademarks for MASSIVE are prima facie evidence of validity and the proper forums for considering if the trademark MASSIVE lacks distinctiveness are cancellation or invalidity proceedings.

(ii) Identical or Confusingly Similar

The disputed domain name consists of the MASSIVE trademark plus the addition of the country name, “Korea”.

Panels considering similar cases where registrants simply added a country name to a registered trademark have consistently found such domain names to be confusingly similar. Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150. In so considering, these panels have not engaged in a classic trademark analysis, but rather in a direct comparison between the disputed domain name and the registered trademark. See ids. While the Panel is cognizant of certain previous decisions in which panels applied a traditional trademark standard in relation to assessing confusing similarity (e.g., Wal-Mart Stores. Inc., supra), the Panel notes that such decisions are rather uncommon and that the large majority of UDRP panels have declined to conduct a traditional trademark analysis. Confederation Nationale du Credit Mutuel v. Design Galaxy, WIPO Case No. D2006-1419; Accor v. Thawan Laungrungthip, WIPO Case No. D2006-0365; Lockheed Martin Corporation, supra; Lake at Las Vegas Joint Venture, supra; The Amazing Kreskin, supra.

Consistent with the majority view on this subject, the Panel declines to consider the validity (or invalidity) of the trademark MASSIVE, but rather limits its analysis to a direct comparison between the registered trademark and the disputed domain name.

The Panel finds that MASSIVE is a trademark of the Complainant and that the first seven letters of the disputed domain name are identical to that mark. The additional word in the disputed domain name, “korea”, is a geographical descriptor. In the Panel’s view, where a domain name is composed of a trademark juxtaposed with a place name, a reader will naturally split them in that way. Accordingly, the Panel is of the view that the disputed domain name comprises a portion identical to a mark (MASSIVE) in which the Complainant has rights, together with a portion (Korea) comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to the Complainant’s mark.

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark MASSIVE.

B. Rights or Legitimate Interests

The Complainant bears the burden of proof under paragraph 4(a)(ii) of the Policy, which shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; NEUSIEDLER AKTIENGESELLSCHAFT v. Vinayak Kulkarni, WIPO Case No. D2000-1769.

The Complainant satisfies this initial burden where it alleges and puts forward what it can in support (e.g., it has rights to the disputed domain name, the Respondent has no rights or legitimate interests to the disputed domain name of which it is aware, it has not given the Respondent any permission to use the disputed domain name). Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Respondent thereafter has to demonstrate his rights or legitimate interests in respect of the disputed domain name under paragraph 4 (c) of the Policy. Id.

Here, the Complainant has shown that it has no relationship with the Respondent and has never authorized the Respondent to use the disputed domain name or any other domain name incorporating the Complainant’s trademark. The Complainant has also shown that the disputed domain name has not been in use by the Respondent.

As such, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.

The Policy provides that the burden then shift to the Respondent to show one of the following three circumstances under paragraph 4(c) of the Policy:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

For the following reasons, the Panel concludes that the Respondent has failed to show any of the three above circumstances.

First, the Respondent has failed to adduce any evidence supporting his use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. While the Respondent claims that he registered the disputed domain name in 2005 to advance his goal of setting up an “Internet business,” he has not produced any proof supporting his claim.

Second, the Respondent has failed to show that he has been commonly known by the disputed domain name.

Third, the Respondent has not shown that he is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent admits that he is not using the disputed domain name at the present time. Instead, the Respondent argues that he has a legitimate interest in the disputed domain name because the word “massive” is a generic or dictionary word. But the question before the Panel in this proceeding is not whether the word “massive” could potentially be used by the Respondent in a generic or dictionary sense, but whether it is so being used. It is also well established that where what may be a generic or dictionary term is a registered for its trademark value, that will not constitute a right or legitimate interest under the Policy. See e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. In the present circumstances, the Panel is prepared to draw the inference that the disputed domain name was in fact registered by the Respondent with the Complainant’s trademark rights in mind, noting in particular the fact that the Respondent had previously registered domain names that incorporate the Complainant’s name.

The Respondent’s assertion that the Complainant is required to show why it has a greater right to the disputed domain name than others who also own valid trademark registrations of the mark MASSIVE is misplaced. Paragraph 4 of the Policy requires a showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Here, the Respondent does not claim that he is among those who own valid trademark registrations of the mark MASSIVE or otherwise asserts facts showing one of the three circumstances discussed above.

Because the Respondent has not provided any evidence or circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name, further to the Panel’s findings under the third element, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel finds that the Complainant has shown circumstances described in paragraph 4(b)(i).

The Panel notes that while the Respondent’s domain name registration slightly predates the Complainant’s trademark registration, the USPTO registration certificate indicates that

first use began in February of 2004, about 22 months before the Respondent’s domain name registration.

The Panel notes that the Respondent has made no use of the disputed domain name although it has been almost three years since the registration. The Respondent has not developed any active web site at the disputed domain name <massivekorea.com> or made any other use of the disputed domain name <massivekorea.com>. Prior UDRP panels have held that such failure to use a domain name in a bona fide manner may constitute bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468.

While the Respondent claims that he has wished to set up an “Internet business” since 1997 and registered the disputed domain name in 2005 to further that business plan, the Respondent’s submissions, while appending other supporting documentation, do not include any fact or documents supporting this particular allegation. Nor does the Respondent’s supplemental filing address the assertion made in the Complainant’s supplemental filing that no evidence exists to support the reference made by the Respondent to business plans in connection with the disputed domain name.

Further relevant to a showing of bad faith is evidence of offers to sell the disputed domain name. In response to the Complainant’s offer to purchase the domain names incorporating the mark MASSIVE for $5,000, the Respondent demanded approximately 100,000USD, which is clearly in excess of out-of-pocket costs directly related to said domain names. CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243.

The Panel is particularly troubled by the fact that he registered the domain names incorporating the term “massiveincorporated”, i.e., <massiveincorporated.kr> and <massiveincorporated.co.kr>. The websites to both of these domain names all show they are “under construction” and only show the Respondent’s e-mail address for inquiries. The Respondent has produced no evidence supporting his intended use of any of these domain names.

The Panel notes that the Complainant asserts that the term “incorporated” is not used in Korea as a company designation and that legally formed companies in Korea are designated as “Co., Ltd.” The Panel further notes that the Respondent, while responding to other allegations made by the Complainant, has failed to rebut this particular allegation. The Panel is of the view that the term “Inc.” or “Incorporated” is not commonly used as a company designation in Korea.

The Respondent argues that there is no showing of bad faith because he had taken no active steps to sell the disputed domain name or contact the Complainant until the Complainant initiated contact. These facts, however, have not prevented a finding of bad faith. Telstra Corporation Limited, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.

In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

The Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used by the Respondent in bad faith.

Accordingly, the Panel decides that the domain name <massivekorea.com> be transferred to the Complainant.


Junghye (June) Yeum
Sole Panelist

Dated: December 11, 2008

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2008/d2008-1375.html

 

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