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Lombardi & Ross Establishment v. Hyun-Ok Song [2004] GENDND 1203 (22 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lombardi & Ross Establishment v. Hyun-Ok Song

Case No. D2004-0421

1. The Parties

The Complainant is Lombardi & Ross Establishment, of Vaduz, Liechtenstein, represented by Zumtobel Kronberger RaeGmbH, Austria (hereinafter, the Complainant).

The Respondent is Hyun-Ok Song, of KyungKi-Do, Republic of Korea. (hereinafter, the “Respondent”)

2. The Domain Name and Registrar

The disputed domain name is <lombagine.com> (hereinafter, the “Domain Name”), being registered with OnlineNic, Inc. d/b/a China-Channel.com (hereinafter, “OnlineNic”).

3. Procedural History

The Complaint filed its complaint (hereinafter, the “Complaint”) with the WIPO Arbitration and Mediation Center (hereinafter, the “Center”) on June 9, 2004. On that date, the Center transmitted by email to OnlineNic a request for registrar verification in connection with the domain name at issue. On June 10, 2004, OnlineNic 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 14, 2004.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Policy)”, the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 June 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2004. The Respondent filed her response (hereinafter, the “Response”) with the Center on July 5, 2004.

The Center appointed Mr. Albert Agustinoy Guilayn as the sole panelist in this matter on July 14, 2004 (hereinafter, the “Panel”). 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 Paragraph 7 of the Rules.

On July 29, 2004, the Panel issued a procedural order (hereinafter, the “Procedural Order No. 1”) requiring the Parties to provide supplemental evidence, as the evidence initially filed was insufficient to decide the case. In order to file said supplementary evidence, the Parties were granted with a period of time that expired on August 9, 2004. In addition, the Parties were allowed to file comments on each other’s supplementary evidence until August 16, 2004.

On August 16, 2004, the Respondent filed before the Center her response to Procedural Order No. 1. The Complainant did not file any kind of response to said order. The Center contacted the Complainant in order to verify that it was not interested in responding to Procedural Order No. 1. Far from its intention, the Complainant had not filed any response as, due to technical problems, it had not received a copy of Procedural Order No. 1. On August 24, 2004, the Complainant did file a document showing that Procedural Order No. 1 had not been effectively delivered to it and requesting a copy of it as well as an additional period for providing the Panel with the requested information.

Taking into account the special circumstances evidenced by the Complainant, on August 26, 2004, the Panel issued a second procedural order (hereinafter, Procedural Order No. 2) granting the Complainant a supplementary period for filing the information requested by Procedural Order No. 1. Such a period expired on September 2, 2004. Moreover, Procedural Order No. 2 allowed the Respondent to file her comments on the documents filed by the Complainant until September 9, 2004.

The Complainant did file electronically the documentation requested by the Panel on September 2, 2004. On September 7, 2004, the Respondent sent the Center an e-mail requesting an extension of time for filing her comments on the Complainant’s supplemental filing, alleging that she had not received the annexes of the above-mentioned document. The Respondent did finally file her response to Procedural Order No. 2 on September 16, 2004.

4. Factual Background

The Complainant is an Austrian company based in Liechtenstein whose main activity is the development, manufacture and distribution of cosmetic products, focusing most of its activities in the field of skincare and body-care products and services.

The Complainant was incorporated on 1984, and it currently develops its activities at a European level. Certainly, the Complainant has over 2,500 established independent studios and saloons all over Europe, where its products are distributed.

The Complainant is the owner of the following trademarks registered before the European Community Office for Harmonization for the Internal Market:

- Community trademark no. 583773 registered on March 23, 1999, for the mark “LOMBAGINE”, for various goods in Classes 3, 14, 24 and 25.

- Community trademark no. 3028677 registered on April 27, 2004, for the mark “LOMBAGINE BIO BALANCE PROGRAMM” for various goods in Classes 3, 14, 24, 25, 29 and 30.

Lombagine is planing to expand its business to the United States of America as well as to Asia. In this respect, the Complainant has requested the registration of the “LOMBAGINE” trademark before the US Patents and Trademarks Office, though the registration procedure has not been completed yet.

The Respondent is an individual from the Republic of Korea. According to the statements included in the Response, the Respondent served in Indonesia as a short-term missionary with an underground religious group called Lomba Outreach Ministries, without providing any further information on such a missionary mission.

The Respondent states that the Domain Name is composed of two words: “Lomba” (which in Indonesian means ‘race’) and “Gine” (which among Muslims seems to mean spirit or soul that is opposite of an angel). However, the Respondent has not provided the Panel with any additional explanation on the combination of both words or the use a domain name composed by them could have.

The Domain Name was registered on October 21, 2001, by the Respondent. According to the documentation provided by the Complainant, the registration took place moments after it was released from its former holder.

At the time the Complaint was filed, the Domain Name was not linked to an active website but it was actually ‘parked’ on the generic web page of a Korean hosting-services provider named Simplex Internet. Nevertheless, the Domain Name was later activated and linked to a website containing several texts related to the Bible and the figure of Jesus Christ, being written in Indonesian.

5. Parties’ Contentions

A. Complainant

The Complainant contends in the Complaint that:

- The Domain Name is identical to the “LOMBAGINE” trademark on which it has rights; and

- The Respondent has no rights or legitimate interests on respect of the Domain Name. In this regard, the Complainant states that since the Respondent registered the Domain Name, she has not used it at all and, thus, it seems that the Respondent has not made a fair use of it; and

- The Respondent registered and used the Domain Name in bad faith as she intends to sell the Domain Name or simply prevent the Complainant from using the Domain Name for using its “LOMBAGINE” trademarks on the Internet.

Additionally, the Complainant contends in its response to Procedural Order No. 2 that:

- It has been using the “LOMBAGINE” trademarks since 1984, being at present one of the world’s leading brands in the sector of skincare, body care and cosmetic products; and

- The Domain Name was registered by the Respondent moments after it was released from its former holder, due to a mistake of the corresponding registration-services provider; and

- The Respondent was aware of the existence of the Complainant’s trademarks before the filing of the Complaint, as she had been contacted several times by representatives of the Complainant. In fact, the first time she was contacted was on December 12, 2001, by means of e-mail. Several e-mails and letters were sent to the Respondent in order to transfer the Domain Name to the Complainant. In this respect, in the last e-mail sent to the Complainant, the Respondent did ask how much money would the Complainant offer for the transfer of the Domain Name; and

- The Respondent has registered the <health-care-products.com> domain name and she is currently offering it for sale, clearly showing her bad faith relating to registration of domain names.

B. Respondent

The Respondent contends in the Response that:

- The Domain Name is identical to the Complainant’s “LOMBAGINE” trademark, except for the inclusion of the suffix “.com” in it; and

- Before receiving the Complaint she was not aware of the existence of the Complainant’s trademarks and products as said trademarks and products are not used in Korea (where she lives) or in Indonesia (where she served as a missionary); and

- The Domain Name has been online since its registration, almost three years ago. Nonetheless, the Domain Name has been disconnected on a few occasions due to several reasons (name-servers updates, for example); and

- The Domain Name is a result of the combination of the word “Lomba” (meaning ‘Race’ in Bamasa, Indonesian) and the word “Gine” (meaning, among Muslims, ‘spirit’ or ‘soul’ that is opposite of an angel); and

- Respondent has made no offer at all to sell the Domain Name, neither to the Complainant nor to any third party. In this regard, the Respondent states that the Complainant did actually contact her for making an offer for the purchase of the Domain Name. The offer was rejected by the Respondent, as she wished to use the Domain Name for the provision of information on her religious activities; and

- Currently, the website linked to the Domain Name is focused on providing information about a religious group named Lomba Outreach Ministries that develops its missionary activities among the Indonesian Muslim tribes as well as on the Bible and the figure of Jesus Christ. Therefore, the website does not involve any commercial activity and is clearly differenced from the trademarks and products of the Complainant; and

- The Complainant was the original holder of the Domain Name and decided to release it, showing no interest in it.

Additionally, the Respondent contends in its response to Procedural Order No. 1 that:

- She is a member of the Won Chun Presbyterian Church, located at Si-Heung City, South Korea, and she was sent as a missionary to Indonesia In 1992; and

- The word “Gine” is of Arabic origin and it is included in several paragraphs of Koran, the Muslims’ sacred book, being “Gine” the way Indonesians pronounce the original Arabic word; and

- At the time the Respondent registered the Domain Name she also registered the <e-mission.org> domain name, being linked as well to religious purposes since its registration.

Finally, in the response to Procedural Order No. 2, the Respondent states:

- The Complainant’s trademarks are not in use, as neither the products manufactured by the Complainant nor the websites related to them include any trademark-indicators; and

- The Respondent was not aware of the existence of the Complainant’s trademarks until she was notified the Complaint. Even though the Respondent acknowledges that she received several communications, she does point-out that those that were received by her never made any reference to the existence of “Lombagine” trademarks; and

- The Respondent is the owner of an online store offering honey and other natural-food products. Due to such an activity the Respondent registered the <health-care-products.com> domain name. Later, the Respondent considered that it was no longer useful, and consequently she decided to entrust it to a webmaster for whatever it wanted to do with it.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances in order to obtain the transfer of the Domain Name:

(A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(B) that the Respondent does not hold rights or legitimate interests in respect of the Domain Name;

(C) To prove that the Domain Name has been registered and is being used by the Respondent in bad faith.

It is important to note that according to the Policy and the Rules, the burden of proving a statement or allegation by the Parties is on of the party that made the statement or allegation. This is to say, both the Complainant and the Respondent must provide the Panel with concrete evidence confirming the allegations included in their submissions. Such a requirement has been established from the earliest decisions adopted under the Policy (see, for example, Inter-Continental Hotel Corporation v. Khaled Ali Soussi; WIPO Case No. D2000-0252 or Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270).

A. Identical or Confusingly Similar

The first element required by the Policy is that the Domain Name and the trademarks owned by the Complainant are identical or confusingly similar.

In the present case, the only difference between one of the trademarks owned by the Complainant (“LOMBAGINE”) and the Domain Name is the inclusion in the latest of the “.com” suffix.

Nonetheless, this difference is derived from the current technical structure of the Domain Names System (DNS) and it should not be considered as a relevant difference between the Domain Name and the “LOMBAGINE” trademark. Many decisions adopted under the Policy have embraced such an approach (see, for example, New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night Inc., WIPO Case No. D2003-0172).

Therefore, the Panel considers that the Domain Name is identical to the Complainant’s “LOMBAGINE” trademark and, consequently, that the Complainant has met the first requirement foreseen by the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Respondent does not hold rights or legitimate interests in the Domain Name. In this regard, Paragraph 4(c) of the Policy sets out a number of circumstances where the Respondent may be considered as holding said legitimate rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark right has been acquired; or

- To make a legitimate non-commercial 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.

In accordance to the statements included in the Response and the further filings of the Respondent, she registered, has used and uses the Domain Name in order to provide information on her religious activities that are framed within a supposed-missionary group named Lomba Outreach Ministries.

Nevertheless, the Panel finds several elements that pose significant doubts on the credibility of the above-mentioned statements.

First of all, the Respondent indicates that since she registered the Domain Name, it has been active and, therefore, providing information about her religious and missionary activities. In this respect, she includes in an annex of the Response a print-out of the historic contents of the website linked to the Domain Name, as they are included in the website operated by Internet Archive (located at “www.web.archive.org/web/*/lombagine.com”. The contents of the annex cover the period between August 23, 2000 and July 5, 2004. Surprisingly, none of the results featured in the annex link to the current website connected with the Domain Name or to any active web page. In fact, from January 21, 2002 to July 5, 2004 (after the Complaint had been filed) all the results were related to inactive websites, simply indicating that they were “under construction”. This conclusion is reinforced if the print-out of website connected to the Domain Name at the time of filing the Complaint is taken into account. Indeed, that print-out clearly shows that at that time the Domain Name was actually “parked” by a hosting-services provider.

The evidence clearly contradicts the statements made by the Respondent in the Response, indicating that the current website linked to the Domain Name has been online for years. On the contrary, according to the evidence filed by the Respondent herself, it is clear that said website was activated once the Complaint had been notified to the Respondent.

Secondly, as stated above, the website currently connected with the Domain Name contains several texts written in Indonesian, dealing with issues relating to the Bible and the figure of Jesus Christ.

By making a simple search on the Internet, the Panel has been able to find out that all the texts and most of the images included in the Respondent’s website are literally copied from third-parties’ websites. The texts included in the homepage as well as in most of the sections of the website are exactly the same ones than those included in the Indonesian section of the website “www.greatcom.org” (located at “www.greatcom.org/indonesian/whois.htm”. This website is owned and operated by a religious US corporation seated in Orlando, Florida without any apparent relationship with the Respondent.

The same occurs regarding the remainder of the Respondent’s website. They are copied from those included in the websites “Who is Jesus Really?” (located at “www.whoisjesus-really.com/indonesian/whois.htm”, being owned and operated by Campus Crusade for Christ International, Inc. as well) and “Einjil.com” (located at “einjil.com/cgi-bin/forum_read.pl?forum_id=3694”, being owned and operated by an Indonesian non-for-profit religious entity).

In conclusion, the Panel has found evidence showing that the Respondent has kept the Domain Name inactive for years, that she has created a website linked to it after having received a copy of the Complaint and that such a website does only contain texts and images copied from third-parties’ websites.

In her response to Procedural Order No. 1, the Respondent did provide the Panel with a copy of a letter from Reverend Byong-Koon Cheong, from the Won Chun Presbyterian Church, seated at Si-Heung City, South Korea, stating that the Respondent had been one of the founders of said church. Moreover, the letter indicates that the Respondent is an online communicator for a web project aimed at promoting gospel activities among the Indonesian Muslims, project being developed anonymously due to security reasons.

The Panel does not consider that this evidence may be considered as convincing, since neither in the Respondent’s response to Procedural Order No. 1 nor in the letter from Reverend Byong-Koon Cheong is any reference made to the necessary linkage between the name “Lombagine” and the Respondent’s missionary activities. In fact, at no point does the above-mentioned letter confirm that the so-called ‘Lomba Outreach Ministries’ religious group really exists or that it is linked to the Won Chun Presbyterian Church.

In addition, the Respondent did file a number of photographs allegedly corresponding to her stay in Indonesia twelve years ago. Once again, the Panel does not consider that this evidence may be considered relevant as, by itself, it does not constitute conclusive evidence of the actual missionary activities of the Respondent, as they are neither dated nor authenticated as having been made in Indonesia in 1992.

Taking into account the exposed facts, the Panel considers that the Respondent has not proved that she has a right or legitimate interest in the Domain Name. The arguments and evidence provided by the Respondent in this respect are not convincing at all and, consequently, the Panel considers that in the present case the Respondent lacks rights and legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The last of the elements foreseen by Paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the Domain Name in bad faith.

In regards to this issue, it is important to note that both conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, for example). Consequently, the Complainant must clearly show that: (i) the disputed domain name was registered by the Respondent in bad faith, and, (ii) the disputed domain name has been used by the Respondent in bad faith.

First, the Complainant must prove that, at the time she registered the Domain Name, the Respondent had a bad faith intent. In this regard, the Respondent has not provided any convincing evidence against the claims made by the Complainant. On the contrary, the Panel has found many inconsistencies in the arguments alleged by the Respondent in the different documents she has filed during this proceeding.

Moreover, it is important to remember that the Domain Name was registered moments after it was released from its former holder. Thus, it seems clear that the Respondent was technically prepared for registering the Domain Name as soon as it was released. Taking into account this fact, it seems unlikely that an unfortunate coincidence was made but that the Respondent was determined to register the Domain Name for a bad faith purpose.

Given the above-mentioned circumstances and the evidence supported by Complainant, the only feasible possibility seems to be that the Respondent registered the Domain Name in order to unfairly benefit from the Complainant’s trademarks. None of the numerous statements made by the Respondent effectively denies such an intent.

In order to evaluate the existence of said bad faith, Paragraph 4(c) of the Policy must be taken into account. Said Paragraph states:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 website 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 website or location or of a product or service on your website or location.”

Moreover, many decisions adopted under the Policy have considered that the list of circumstances foreseen by the above-mentioned paragraph are non exclusive (See, for example, Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010; Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 or Wal-Mart Stores, Inc. v. Su Rong Ye, WIPO Case No. D2002-0771). For that reason, any other circumstance that may give the Panel clear evidence of the Respondent’s bad faith must also be taken into account.

In accordance with the statements made by the Complainant in the Complaint, the Respondent used the Domain Name in bad faith as she did offer it for sale to the Complainant, constituting such an offer a bad-faith behavior as foreseen by Paragraph 4(b)(i) of the Policy.

In this respect, the evidence provided to the Panel by both parties does not show such a type of behavior. Indeed, the Complainant contacted the Respondent several times at its own initiative. Furthermore, the Respondent only replied once in an e-mail dated March 18, 2004, asking how much could the Complainant offer for the Domain Name, without having previously contacting the Complainant nor having demanded any consideration derived from an eventual transfer of the Domain Name to the Complainant. Such a behavior does not fulfill the requirements established by the Policy, being that approach consistent with numerous previous decisions adopted under the Policy (see, for example, Banco Atlántico, S.A. v. Infomax 2020, SL, WIPO Case No. D2000-0795; Sloan Capital Companies & Stuart M. Sloan v. Sloan E-Mail Services, WIPO Case No. D2001-0138 or Rogers Gable, Inc. v. Arran Lal, WIPO Case No. D2001-0201).

Even if the Panel rejects the first claim of the Complainant relating to the Respondent’s use in bad faith of the Domain Name, the Panel does consider that other circumstances must be taken into account in order to obtain an adequate examination of the Respondent’s behavior regarding the use of the Domain Name. In this respect, it is important to be reminded that, even though the Respondent alleges that she registered the Domain Name and has kept it active for years in connection with her missionary and religious activities the truth is that it has been disconnected and passively held by the Respondent for almost three years. Certainly, the evidence filed by the Respondent herself proves such a fact. This is to say, the Domain Name has been activated and linked to a website when the Complaint had been already notified to the Respondent.

Moreover, as analyzed in regards to the lack of a legitimate interest or right in the Domain Name, the website currently linked to <lombagine.com> is composed of a structure and a number of texts that have been copied from third parties’ websites without their apparent authorization or endorsement.

All those facts lead the Panel to consider that by creating the website that is currently linked to the Domain Name the Respondent aimed to create an appearance of fair use that did not correspond to the reality of the situation. Such behavior has been considered as use in bad faith in abundant decisions (see, for example, Harrods Ltd. v. Vision Exact; WIPO Case No. D2003-0723, Belupo d. d. v. WACHEM d.o.o. WIPO Case No. D2004-0110; or Campsa Estaciones de Servicio, S.A. v. Maninfor Murcia GB, S.L., WIPO Case No. D2004-0467).

Other contradictions found by the Panel in the Respondents’ arguments seem to be quite conclusive in this respect as well. Among others, the following inconsistencies can be noted:

- The Respondent has persistently denied any knowledge of the Complainant’s trademarks before the Complaint was filed. Such an assertion seems to clash with the fact that the Respondent received several e-mails and letters from the Complainant, where it was clearly stated that it held rights on the “LOMBAGINE” trademarks.

- The Respondent has stated that when she received the first communication from the Complainant, aimed at starting negotiations for its transfer, she did reject such a possibility stating to the Complainant that the Domain Name was being used in connection with the Respondent’s religious activities. Nonetheless, after reviewing the content of all the communications between the parties, the Panel has discovered that the Respondent never stated to the Complainant that she was using the Domain Name to link to her religious and missionary activities.

- In order to strengthen her arguments, the Respondent states that at the same day she registered the Domain Name she did also register the <e-mission.org> domain name, being also linked to her religious and missionary activities. Nonetheless, <e-mission.org> has been inactive for years, just like the Domain Name, only being activated at the same time the Domain Name was activated (i.e. once the Complaint had been filed).

The sum of the above-mentioned circumstances leds the Panel to believe that the Domain Name has been used in bad faith by the Respondent from the moment it was registered.

Taking into account the above-mentioned arguments, the Panel concludes that the Complainant has been able to prove that the Respondent registered and has used the disputed domain name in bad faith, fulfilling the requirements set out by Paragraph 4(a)(iii) of the Policy.

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 <lombagine.com> be transferred to the Complainant.

Albert Agustinoy Guilayn
Sole Panelist

Dated: September 22, 2004