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Spacecode SA v. Kim TAEKYEONG [2005] GENDND 1308 (13 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Spacecode SA v. Kim TAEKYEONG

Case No. D2005-0549

1. The Parties

The Complainant is Spacecode SA, Verrières le Buisson, France.

The Respondent is Kim Taekyeong, Inchon, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <spacecode.com> (the “Domain Name”) is registered with YesNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2005. On May 24, 2005, the Center transmitted by email to YesNIC a request for registrar verification in connection with the Domain Name. On May 26, 2005, YesNIC 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 June 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2005. The Response was filed with the Center on June 7, 2005, by email and on June 10, 2005, as a hardcopy.

The Center appointed Thomas Legler as the sole panelist in this matter on June 20, 2005. 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.

After its appointment and in view of a certain lack of information in the file, the Panel ordered the parties on June 27, 2005, to submit further evidence. The parties submitted the supplemental information and evidence on June 28, 2005, (Respondent) and July 4, 2005, (Complainant). On July 7, 2005, the Respondent sent an additional email to the Center indicating that the Complainant had submitted "unrequired information and arguments obviously exceeding the extent of the Panel's Order" and inviting the Panel to reject the parts of the submission going beyond the said Order. The Panel does not share this opinion and proceeds with rendering the present decision.

4. Factual Background

The Complainant is a French company engaging in integrated Radio Frequency Identification (RFID) solutions. It is holder of the French combined trademark “SPACECODE” showing a logo in blue accompanied by the word “Spacecode”.

This trademark has been filed on March 17, 1997, and refers to classes 9, 35 and 42.

In addition, the Complainant filed shortly before this administrative proceeding i.e. on March 16, 2005, a US trademark application for the wordmark “SPACECODE” (serial-no. 78/588,155).

The Respondent is Kim Taekyeong, a first year student in the department of law of the graduate school (master course) of the Seoul National University. He registered the Domain Name on February 11, 2000. The Respondent has been the first registrant, has never transferred the Domain Name to a third person but has not activated any webpage under the Domain Name.

Before filing the Complaint, the Complainant initiated an exchange of emails with the Respondent through an advisor representing and acting for the Complainant. On November 22, 2004, the said advisor wrote a message to the Respondent informing the latter that he was advising a small business in France called “Spacecode SA” consisting of three people working in R & D in the traceability business. He indicated that Spacecode SA would have the desire to use <spacecode.com> for its website. The communication concludes with the question “could you tell us if this URL could be available for the French company Spacecode?”

On November 24, 2004, the Respondent replied indicating that he did not wish to sell the Domain Name because it had personal meaning to him. He added, however, that if an appropriate offer was made, he would carefully consider it.

On November 25, 2004, Complainant’s advisor invited the Respondent to advance a possible price.

In reply to this message, the Respondent invited the Complainant to indicate a price within a certain range, since he felt that it would be difficult to advance the proper price.

On December 2, 2004, the Complainant’s representative proposed US$ 750 for the transfer of the Domain Name.

On December 6, 2004, the Respondent rejected the offer explaining that he expected a larger offer.

After this correspondence, the Complainant decided to file the Complaint with the Center on May 23, 2005.

On May 30, 2005, the Respondent wrote to Complainant’s representative that he had received their Complaint, but would prefer a settlement before the procedure began. He invited the Complainant again to suggest an appropriate price.

On June 3, 2005, the Complainant itself wrote a message to the Respondent indicating that the Complainant would still be prepared to consider reaching an agreement. The message concludes with the words “please advise as to what you believe is the proper price”.

There was no further electronic correspondence between the parties.

5. Parties’ Contentions

A. Complainant

The Complainant is a provider of integrated Radio Frequency Identification (RFID)

solutions and owner of various patents in this area. Complainant offers a complete end- to-end RFID solution providing chips, tags, readers, consulting, integration and services.

Spacecode SA was incorporated in 1996, as a subsidiary of the French retailer Danone. As mentioned above, the Complainant applied for the trademark “SPACECODE” in France in 1997. The Complainant explains that the trademark “SPACECODE” refers to “code” in the sense of electronically coded information and “space” for transmitted through the open air by wireless radio waves.

In 2000, there was a spin-off from Danone so that Complainant became a totally separated small company.

Pursuant to Complainant’s submission, it was until 2004 largely a R&D company focused on developing superior RFID technology. Following substantial investment and new management in 2004, the focus of its activities has now shifted towards full commercialisation of its technology.

Accordingly, prior to 2004, the company’s business was limited to France. In 2004, the headquarters of the company were moved to Geneva, Switzerland. The research and development facilities continue in Paris, while sales and marketing operations are currently being extended to UK, US, Germany, Switzerland and France. The company currently employs 12 staff comprising full and part-time engineers, business development and management personnel.

The Complainant indicates that Spacecode SA has yet to break even with monthly costs still in excess of sales. However, sales should be increasing following the recent investment and the new management with a commercial focus.

The Complainant asserts that the Domain Name is identical or confusingly similar to the trademark “SPACECODE” and to the company name Spacecode SA used in commerce during the last 8 years, i.e. 3 years before the Domain Name was registered.

The Complainant asserts further that the Respondent has no rights or legitimate interests in respect of the Domain Name. Pursuant to the Complainant, when typing the Domain Name, the user is led to an “error 404” page. Accordingly, the Respondent has not been using the Domain Name for more than 5 years after its registration on February 11, 2000. Furthermore, and pursuant to Complainant, the Respondent is not known by the Domain Name and is not making any non-commercial or fair use of the Domain Name. Finally, the Complainant has the opinion that the Respondent has registered the Domain Name and uses it in bad faith. Complainant asserts in this regard that Respondent has asked a high price for transferring the Domain Name to the owner of the trademark in response to a US$ 750 offer. That amount would already exceed the Respondent’s out of pocket costs directly related to the Domain Name.

The Complainant concludes that, in accordance with paragraph 4(i) of the Policy, the Domain Name has to be transferred to the Complainant.

B. Respondent

The Respondent stresses that the French combined trademark contained a bundle of squares located at the left of the name “Spacecode” whereas it recently applied for the US wordmark “SPACECODE” leaving out the essential graphic elements. The Respondent sees in this proceeding an attempt for reverse domain name hijacking. Moreover, the Respondent insinuates that Complainant’s company name is Spacecode SA and not “Spacecode”. <spacecodesa.com> or <spacecode-sa.com> would be available.

The Respondent points out that he is a law student of the Graduate School of the Seoul National University. He produces a confirmation letter from the University to this effect. The Respondent indicates that he was always interested in space law. When he tried to register <spacelaw.com>, the domain name was already occupied. So he chose the terms “code” for “collective of law” and “space” for “space law”. The formation of the Domain Name was a creative production. His intention was to make up a forum about aerospace law and related materials. The Respondent indicates that he intends to fill its future website with contents in accordance with his learning steps at the university. The Respondent underlines his serious intent of setting up such a website with the purpose of building a public space law forum for legal opinions and critical views on controversial subjects but not for a commercial use.

Regarding Complainant’s bad faith argument, the Respondent replies that the trademark “Spacecode” was neither well-known nor prominent and only known in France at the time when he registered the Domain Name. He indicates that he could not know about a small French company since he is living far away in the Republic of Korea.

He stresses that it was not him but the Complainant who contacted him for the first time indicating that they would be interested to buy the Domain Name. He stresses the fact that he never suggested to them a concrete price and was waiting for their offer when they abruptedly terminated the discussions by raising the Complaint. He adds that a mere offer for sale a domain name cannot be conclusive evidence for bad faith.

Therefore, the Respondent requests the Panel to dismiss the Complaint and to hold that the Complaint was brought in bad faith (reverse domain name hijacking).

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

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

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel has the opinion that the Domain Name is confusingly similar to the combined French trademark registered by the Complainant in 1997. The squares contained in the mark are a secondary graphic element compared to the word “Spacecode” prominently reproduced in big capital letters. Hence, the Complaint satisfies the first element of the Policy and there is no need to further examine the reason for and the scope of the US wordmark registration which occurred shortly before filing the Complaint.

B. Rights or Legitimate Interests

The Complainant indicates that the Respondent is not actively using the Domain Name and has not been known by the Domain Name. Furthermore, the Complainant asserts that the Respondent is not making any legitimate non-commercial or fair use of the Domain Name.

The Panel does not share this opinion and finds that the Complainant has not submitted sufficient evidence to support its argument.

The Domain Name is a combination of two generic terms. The Respondent proves that he is a law student and indicates that he would like to set up a website for space law. Since the domain name <spacelaw.com> had already been occupied, he chose the terms “space” and “code” for that purpose. The Panel finds that there is no evidence contrary to Respondent’s assertion which seems credible in view of his confirmed interest as a law student and in view of the fact that the Domain Name is composed of generic terms.

The Complainant is, according to its own assertions and evidence, a small start-up company in France. It is also the developer of a promising new RFID technology and holder of several patents. Its real commercial start of business dates back to only 2004. This coincides with a certain expansion towards a market outside France. In other words, there is no reason to believe that the Respondent, resident in the Republic of Korea, could or should have known the combined French trademark when he registered his generic domain name on February 11, 2000. Indeed, the status and fame of the trademark at stake is one of the important aspects when considering whether a respondent has a legitimate interest in a domain name comprised of generic words. Accordingly, a respondent would probably have problems in convincing a panel that he would have a legitimate interest in the generic domain name <apple.com> compared to the famous character of the Apple-trademark of the respective computer company, except possibly in certain circumstances where the generic word describes respondent’s bona fide business or is being used in its dictionary sense.

Consequently, the Complainant has failed to make a prima facie case that the Respondent has no rights or legitimate interests.

C. Registered and Used in Bad Faith

For the sake of completeness, the Panel is also considering whether the Domain Name has been registered or used in bad faith.

There is no proof showing that the Respondent has registered the Domain Name in bad faith. Indeed, and as pointed out above, it is understandable that the Respondent, when registering the Domain Name in February 2000, was not aware of the use of the trademark “SPACECODE” in France at the time when the Complainant had only a limited national R&D activity.

Moreover, in view of the given circumstances, the fact that the Respondent does not actively use the Domain Name is not a sign of bad faith. Indeed, in the absence of a well-known trademark and given the fact that the Respondent advances good reasons in his Response for conceiving a good faith use of the Domain Name, the Panel can see no bad faith in the passive holding of the Domain Name under the concrete circumstances.

Finally, the Panel does not share Complainant’s view that Respondent tried to sell the Domain Name to the Complainant for an amount of money exceeding Respondent’s out-of-pocket costs directly related to the Domain Name. It was the Complainant who contacted first the Respondent (more than 4 years after Respondent’s registration of the Domain Name) and invited him to transfer the Domain Name through payment. The correspondence produced by the Parties shows that there were simply negotiations and discussions on the correct price, which were disrupted by Complainant’s filing of the Complaint. The Panel can find no trace of a bad faith act or proposal from the Respondent who simply entered into a price negotiation for a generic domain name which he registered more than 4 years ago in good faith. To be willing to sell a Domain Name is in itself neither unethical nor contrary to the Policy.

In view of the foregoing, the Complainant has not proven all three elements necessary under the Policy.

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name" (see also Paragraph 15(e) of the Rules). To prevail on such a claim, Respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (See Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151), or that the Complaint was brought in with a knowing disregard of the likelihood that the Respondent possessed legitimate interests (see Smart Design LLC v. Hughes, WIPO Case No. D2000-0993).

In the present case, the Complainant did not know about Respondent’s status as a law student nor of his intention to use the Domain Name for a good faith purpose when filing the Complaint. These circumstances were only revealed during the administrative proceeding.

Although the Panel finds it surprising that the Complainant did not bring the negotiations for a transfer of the Domain Name to an end, but instead suddenly decided to file a Complaint, it does not regard the Complainant as having acted in bad faith in bringing this proceeding. Indeed, the Panel cannot exclude that Complainant filed the Complaint based on a misinterpretation of Respondent’s reaction to Complainant’s offer to sell the Domain Name; in addition, the Complainant was at that time not aware of Respondent’s background and intentions for the use of the Domain Name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Thomas Legler
Sole Panelist

Dated: July 13, 2005