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Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi [2005] GENDND 157 (22 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi

Case No. D2004-0984

1. The Parties

The Complainant is Minka Lighting, Inc. d/b/a Minka Group, Corona, California, United States of America, represented by Jenkens & Gilchrist, PC, United States of America.

The Respondent is Lee Wongi, Seongbuk-gu, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <minkagroup.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2004. On November 26, 2004, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On November 26, 2004, Korea Information Certificate Authority Inc. d/b/a DomainCa.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 December 8, 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 (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 December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2005.

The Center appointed Ik-Hyun Seo, Jonathan Turner and Ilhyung Lee as panelists in this matter on January 27, 2005. The Panel finds that it was properly constituted. Each member of 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

Complainant Minka Lighting, Inc. is a corporation duly organized and existing under the laws of the State of California, with its principal place of business in Corona, California, United States of America. Complainant is in the business of designing, distributing, marketing and selling high quality lighting fixtures and ceiling fans, which it sells through authorized showroom dealers. Complainant was founded in 1982, and has been doing business as “Minka Lighting” for over 20 years.

Respondent is an individual and the registrant of the subject domain name registration, which was registered on June 17, 2002, via Korea Information Certificate Authority, Inc., the registrar.

Complainant holds three trademark registrations in the United States, which have been asserted in this proceeding: (1) MINKA (Reg. No. 1,641,175 – Reg. Date April 16, 1991); (2) MINKA LAVERY (Reg. No. 2,510,372 – Reg. Date November 20, 2001); and (3) MINKA-AIRE (Reg. No. 1,871,884 – Reg. Date January 3, 1995). All three registrations are for International Class 11, and designate products related to Complainant’s business. In addition to these, Complainant also asserts that it has common law rights to MINKA GROUP, which it uses to designate its family of businesses including numerous product lines: MINKA LAVERY, THE GREAT OUTDOORS, MINKA-AIRE, METROPOLITAN, AMBIENCE, and KOVACS. Complainant also owns the registrations for the following domain names: <minkagroup.net>, <minkagroup.biz>, <minka.com> and <minka.info>.

No content whatsoever is presently displayed at the website “www.minkagroup.com”. However, at least as of November of 2004, the subject domain name was used to display a page providing content completely in the English language (as evidenced by documents submitted by the Complainant). The home page provided tabs and links with titles such as the following: “Minka Lavery”, “Minka”, “Ceiling Fans”, “Chandeliers”, “Group”, “Fan”, etc. The homepage also included two large frames entitled “Sponsored Links” and “Top Sites”, which provided links to and summaries of third party sites, presumably in some relation to which tabs and links are selected. In some instances, these two frames would include links to pornographic sites, as well as the site of one of Complainant’s competitors.

The contents displayed in the two frames are provided via a link between the subject domain name and two third party domain names, <information.com> and <domainsponsor.com>, which are both operated by an entity by the name of Oversee.com (doing business as <domainsponsor.com>). domainsponsor.com offers a revenue program that pays domain name owners “50% of all revenues generated from searches, popunders, popups, and exit popups” by users directed to its website through the participant’s domain name. The subject domain name was linked to “domainsponsors.com”, displayed “Sponsored Links” and “Top Sites” content provided by “domainsponsors.com”, and also caused numerous popup and popunder advertisements to be displayed when a visitor accessed “www.minkagroup.com”.

The Complainant, through its legal representative, sent a letter to Respondent on November 5, 2004, (via email and facsimile) explaining its position and demanding, inter alia, the transfer of the subject domain name. The Respondent, via email dated November 10, 2004, responded in English essentially explaining that “minka” is simply a person’s name and denying Complainant’s assertions.

Respondent has been party to three prior domain name dispute proceedings. In all three of the cases, decisions were rendered against Respondent. See L’TUR Tourismus AG v. Lee Wongi, WIPO Case No. D2003-0194; Sydkraft AB v. Lee Wongi, WIPO Case No. D2003-0253; OTEX Corp. Ltd. v. Wongi Lee, NAF FA0206000114688.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the subject domain name is identical or confusingly similar to its trademarks MINKA, MINKA LAVERY, MINKA-AIRE and MINKA GROUP. Complainant submitted evidence of its US trademark registrations for the first three marks, and asserts that it has common law rights in MINKA GROUP.

Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name. In support, Complainant notes that the disputed domain name was being used to generate revenue via the link to “www.domainsponsor.com”, and that such use does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest. Complainant also asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent making a legitimate non-commercial or fair use of the domain name. Complainant also notes that Respondent registered the subject domain name long after Complainant first began using and registered its MINKA trademarks, and more than three years after Complainant registered its domain name <minkagroup.net>.

With respect to the issue of bad faith, Complainant made various assertions in support of its position. Respondent, without authorization from the Complainant, registered the subject domain name and used it for the sole purpose of diverting Internet users seeking information about Complainant and its goods to the services and contents provided by <information.com> and <domainsponsor.com>. This was done to receive money via the revenue program of <domainsponsor.com>. Complainant also contends that its trademarks are well-known internationally, such that Respondent must have known of them when he registered the subject domain name. Complainant also relies on the fact that Respondent has been party to other domain name dispute proceedings to support its assertions that Respondent engaged in a pattern of bad faith with respect to domain name registrations.

B. Respondent

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

6. Discussion and Findings

The first matter to be addressed is the language of the proceedings.

The registrar confirmed that the registration agreement for the subject domain name is in Korean. In its “Response to Notices Re: Complaint”, Complainant submits that English should be the language of the proceedings based on various theories and factual circumstances. Shortly thereafter, Respondent responded via email confirming that he is the current registrant, and that he “would like the proceedings to proceed in Korean” – Respondent’s email was written in English. Given the circumstances, the Center gave notice to the parties (both in English and in Korean) explaining that it would: (1) accept the Complaint in the English language and allow the proceeding to commence, (2) accept a Response in either Korean or English, (3) appoint a Panel familiar with both languages, if available, and (4) allow the Panel to make a decision regarding the language of the proceedings. It is also worth noting that all notices to the parties were provided in both languages.

Paragraph 11(a) of the Rules states: Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Among the theories asserted by the Complainant, one is that the Respondent implicitly agreed to proceed in English, noting that Respondent has communicated with the Complainant in English and also operated a site that provided content completely in English. However, the Respondent in this case has unambiguously expressed his preference for the proceedings to be in Korean, and as such, it would be difficult to find that there was an implicit agreement to proceed in English.

Notwithstanding the above finding and the Respondent’s preference for Korean language proceedings, the Panel finds sufficient reasons to exercise its discretion and render its decision in English. (See International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398; Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759).

First, Respondent has demonstrated a reasonable command of the English language. In response to a warning letter sent by the Complainant’s representatives, Respondent replied in English explaining his position on various points. Further to this, Respondent used the subject domain name to display a site that provided content only in the English language.

Respondent received all notices regarding this proceeding in both English and Korean, and therefore cannot deny being fully advised of all relevant developments. Also, the Center adopted a very equitable position of allowing the Complaint to be filed in English but allowing the Response to be filed in either English or Korean. Despite being given ample opportunity and options, Respondent did not submit a Response, nor did he complain of any matters regarding the adopted procedure.

Given the circumstances above, the Panel finds that the principles of fairness weigh heavily in favor of rendering this decision in the English language.

A. Identical or Confusingly Similar

Complainant has trademark registrations in the United States for “MINKA”, “MINKA LAVERY”, and “MINKA-AIRE” (all of which are registered on the Principal Register). In addition, Complainant asserts that it also has common law rights to “MINKA GROUP”.

The Policy requires the Complainant to demonstrate that it has rights to a trademark or service mark, and there is no express language in the Policy requiring that the asserted trademark or service mark be registered. On this issue, there is little question that Complainant has rights to “MINKA”, “MINKA LAVERY” and “MINKA-AIRE”, which are all registered on the Principal Register in the United States.

The subject domain name <minkagroup.com> fully incorporates Complainant’s distinctive MINKA trademark and simply adds the additional term “group”. The term “group”, however, is a non-distinctive term and fails to distinguish MINKAGROUP over Complainant’s MINKA trademark. Under these circumstances, the Panel finds that the subject domain name is confusingly similar at least to Complainant’s trademark MINKA, and Complainant has established the first requirement under Paragraph 4(a)(i) of the Policy.

While common law (i.e. unregistered) rights have also been asserted and recognized in prior UDRP proceedings (see CBS Broadcasting Inc. v. Nabil Z. Aghloul, WIPO Case No. D2004-0988; True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Sealite Pty Limited v. Carmanah Technologies, Inc., WIPO Case No. D2003-0277), there can be differences in standards (varying from country to country, as well as jurisdictions within a single country) regarding how common rights are acquired as well as the level of proof that is required. Since the issue of whether Complainant has common law rights to “MINKA GROUP” is not necessary in reaching its conclusion, the Panel chooses to base its finding on Complainant’s clear and undeniable registered rights to the trademark MINKA.

B. Rights or Legitimate Interests

Complainant has made all the necessary allegations to support its assertion that Respondent has no rights or legitimate interest in the subject domain name. Respondent, however, has elected to not file a Response and thereby has not disputed any of Complainant’s allegations on this point. Notwithstanding the lack of a Response, the Panel has reviewed the entire record, including communications involving the Respondent, but found nothing to support a finding that Respondent has a legitimate right or interest.

In view of these circumstances and pursuant to Paragraph 14(b) of the Rules, the Panel finds that the Complainant has established the second requirement under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Four non-exclusive examples that would satisfy the requirements of paragraph 4(a)(iii) are provided in paragraph 4(b)(I -iv).

While it may be possible in this case to find the necessary bad faith based on more than one example under paragraph 4(b), the Panel notes that correspondence with only one example is necessary, and finds the clearest support for paragraph 4(b)(iv).

Paragraph 4(b)(iv) states as follows:

“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.”

As already discussed in previous sections, the subject domain name is confusingly similar to Complainant’s trademark MINKA. Also, the links and content provided at the subject domain name (when it was operating) corresponded to the business of the Complainant, i.e. lighting fixtures, ceiling fans, etc. For example, the site displayed by the subject domain name included tabs/links labeled MINKA LAVERY (which is identical to one of Complainant’s registered trademarks), MINKA (which is also identical to one of Complainant’s registered trademarks), as well as “Ceiling Fans”, “Chandeliers” and “Fans” (which are all products within the scope of Complainant’s business). In summary, it seems quite a remarkable coincidence that Respondent not only registered a domain name that was confusingly similar to Complainant’s registered trademark, but also provided content that used terms identical to two of Complainant’s registered trademarks, and also corresponded with Complainant’s area of business. Given these circumstances, coupled with the fact that Respondent has chosen not to dispute Complainant’s allegations, the Panel has little hesitation in finding that the Respondent knew of Complainant and its business, and registered the subject domain name intentionally to attract users. Further, given the close relationship between the content of Respondent’s site and the Complainant’s business, there is a clear likelihood of confusion as to source, sponsorship, affiliation and/or endorsement.

With regard to Respondent’s commercial gain, Complainant has alleged that the subject domain name was linked to commercial services sponsored by the site “www.domainsponsor.com”, which provides financial benefits to domain name owners who enter into a relationship with domainsponsor.com. The Complainant’s allegations were supported by documentary evidence, and no rebuttal was made by the Respondent. In this regard, the Panel notes that the operations and commercial benefits offered by “www.domainsponsor.com” have been the subject of several prior UDRP proceedings. See Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795. The Panel in Deloitte made the following factual findings:

“The domain name is directed to a search engine and portal at ‘www.dp.information.com’ operated by an entity called ‘domainsponsor.com’. This provides links to sponsored websites on a variety of topics … The ‘www.dp.information.com’ website also causes numerous ‘pop-up’ and ‘pop-under’ advertisements to be displayed when it is accessed. Domainsponsor.com offers a revenue program which pays domain name owners ‘50% of all revenues generated from searches, popunders, popups, and exit popups’ in respect of users directed to its website through the participant’s domain name.”

Under the circumstances described above, the Panel finds that the Respondent sought or realized commercial gain.

For the reasons given above, the Panel finds that the Complainant has established the third and final element under paragraph 4(a)(iii) via the example provided in paragraph 4(b)(iv) 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, <minkagroup.com> be transferred to the Complainant.

Dated: February 22, 2005