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Sinbar v. Jin Hyun [2005] GENDND 1431 (28 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sinbar v. Jin Hyun

Case No. D2005-0529

1. The Parties

The Complainant is Sinbar, Paris, France, represented by Cabinet Plasseraud, Paris, France.

The Respondent is Jin Hyun, Nonhyun-dong, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <velosolex.info> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was initially filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2005. On May 18, 2005, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On May 24, 2005, Key-Systems GmbH dba domaindiscount24.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 24, 2005. The Center verified that the Complaint, together with the Amended 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 July 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2005.

The Center appointed Adam Samuel as the sole panelist in this matter on August 16, 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.

4. Factual Background

The domain name in dispute was registered on September 12, 2004.

Since February 14, 2001, the Complainant has been the registered owner in France of the trade mark VELOSOLEX. It acquired by assignment the rights to a registered trade mark VELOSOLEX in the Dominican Republic and to VELOSOLEX in Denmark and the logo VéloSoleX in a large number of countries throughout the world from Magneti Marelli Motopropulsion France SAS on June 21, 2004. The recording of the assignment is currently being dealt with by a number of Trade Mark Offices. These trademarks relate to motorcycles.

The Complainant has registered domain names including <velosolex-international.com> and <velosolex-international.fr>.

At the time of filing the original Complaint, the web page to which the domain name in dispute resolved just said:

“DOMAIN NAME FOR SALE

To inquire about this domain name, send your correspondence

namesale@hanmail.net”

On March 11, 2005, lawyers for the Complainant wrote to a Steave Lang in Seoul who presumably at the time was the registered owner of the domain name in dispute, requesting transfer of the domain name in question on the basis that it infringed the Complainant’s trademark rights.

A reply came from “namesale@hanmail.net” on March 17, 2005, in the following terms:

“We have reserved velosolex.info for our future business. So we do not agree with you. We feel very much offended with your rude and blackmailing email.

We have already consulted with our lawyers regarding this matter and are prepared for substantial countermeasures.

If you do go ahead and take legal actions against us, we will actively and aggressively protect our rights on our property and it would be quite interesting to us.

If you decide to pay $1500 US dollars, which of course is quite reasonable compensation for the domain name, we will discuss your offer with our lawyers to come up with mutually beneficial solution to transfer the domain name to you.

Unfortunately if you decide to take legal actions against us, panel fees (3 panels max, $1500 US dollars per each panel), translation fees of filing documents from English to Korean, FEDEX fees and legal fees of course would be YOUR expense.

Please know that the case will progress all in Korean.

All this cost to you would go from $4,000 up to $10,000 US dollars.

Even if you happen to win at WIPO proceedings, however, we would get Korea’s court order to stop the Registrar from transferring the domain name to you and we will see you in court in Seoul.

So your total cost would increase astronomically and both of us would be involved in long and costly legal suit.

Finally we expect you to consider our message and come up with smart move.”

The registrant’s e-mail for the domain name in dispute is namesall@hanmail.net.

5. Parties’ Contentions

A. Complainant

The Complainant owns a trademark registration for VELOSOLEX and owns the rights to registrations in that mark and other similar ways of presenting ‘Velosolex’ by virtue of an assignment from Magneti Marelli Motopropulsion France SAS. The domain name is identical to the mark in which they own trademark rights. The Respondent has no trademark or other rights to “Velosolex”. The e-mail of March 17, 2005, clearly indicates bad faith on the part of the Respondent. He asserted that he had reserved the domain name for his future use and then proposed to sell it. The actual web page downloaded refers just to the Respondent’s desire to sell the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name is identical to a trademark in which the Complainant has rights. At the very least, the Complainant has a trademark registration in France. It has also acquired by way of a contract of assignment the right to own and exploit Magneti Marelli’s very similar trademarks elsewhere in the world. As the Panel said in Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756:

“These rights need not be rights of ownership and need not be exclusive. A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark.”

B. Rights or Legitimate Interests

The Complainant has submitted evidence to support its claim that the Respondent lacks rights and legitimate interests in the domain name. There is no evidence in the record that any of the circumstances enumerated in paragraph 4(c) of the Policy would be present.

The Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights and legitimate interests and in the absence of a Response from the Respondent, the Complainant succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b)(i) of the Policy lists one of the circumstances which if found by the Panel constitutes evidence of registration and use in bad faith.

It reads:

“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.”

The content of the webpage suggests that the domain name was acquired purely for the purposes of transferring the name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket expenses. The website has no content otherwise. The word “velosolex” is clearly a made-up name, not in common use. So, the choice of it for a domain name appears to be motivated purely by the desire to persuade the owner of the trademark concerned to buy the domain name registration. See DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939.

This conclusion is supported further by the tone of the e-mail of March 17, 2005. Although every domain name owner has the right to defend its right to it in correspondence and receive money for the resolution of any dispute concerning it, there are a number of disturbing features to the e-mail. It begins by asserting that the owner has reserved the name for his future business without indicating what that would be. If the Respondent had a legitimate business for which the domain name was reserved, one would expect to learn about it in the e-mail.

There is a clear attempt by the sender of the e-mail to threaten the domain name owner with extensive costs and litigation in Korea if he did not buy the domain name for a sum of money significantly in excess of the out-of-pocket expenses incurred by the Respondent. While again, the Respondent is entitled to settle the dispute in a way that is financially favourable to it, the tone of the e-mail goes beyond the normal aggressiveness expected in the dispute resolution arena.

Finally, there is the question of the identity of the sender of the e-mail. The e-mail address is the same as the one currently given on the domain name’s registration although the name of the owner has apparently changed. The Panel concludes that on the balance of probability, the Respondent is either the same person as the person who sent the e-mail concerned or is working with him.

In light of all the evidence available, the Panel concludes that domain name has been registered and is being used in bad faith in that it is being used primarily to persuade the Complainant to buy the domain name for more than the Respondent’s out-of-pocket expenses.

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 <velosolex.info> be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: August 28, 2005