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Chung, Mong Koo and Hyundai Motor Company v. Individual [2005] GENDND 2096 (21 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chung, Mong Koo and Hyundai Motor Company v. Individual

Case No. D2005-1068

1. The Parties

The Complainants are Chung, Mong Koo, Seoul, Republic of Korea and Hyundai Motor Company, Seoul, Republic of Korea, represented by H.H. Nahm International Patent & Law Firm, Republic of Korea.

The Respondent is Individual, Totowa, New Jersey, United States of America.

2. The Domain Names and Registrar

The disputed domain names <chungmongku.com> and <chungmongku.net> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2005. On October 10, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with each of the domain names at issue. On October 13, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent in each case 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 Complainants filed an amendment to the Complaint on October 21, 2005. 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 November 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2005.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on December 12, 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.

The language of the Registration Agreement in the case of each domain name is English and, accordingly, pursuant to paragraph 11 of the Rules the language of the administrative proceeding is English.

4. Factual Background

The First Complainant is the Chairman and Chief Executive Officer of the Second Complainant which was founded in 1967 and which is part of the very large Hyundai automotive Group.

The Second Complainant is the registered owner of a large number of international trade and service marks, including one in particular which is HYUNDAI and which was registered as a Korean trademark on September 6, 1989. It also has trademark and service marks for HYUNDAI, HMC HYUNDAI and a well-known ‘H device’ in most countries of the world. However, the proceeding is also concerned with the claim of both Complainants that they both have a common law trademark and service mark rights in the personal name of the First Complainant, CHUNG MONG KOO.

The Respondent registered the two domain names in question on February 9, 1999.

5. Parties’ Contentions

A. Complainant

The Complainants allege that the contentious domain names <chungmongku.com> and <chungmongku.net> should no longer be registered in the name of the Respondent but that they should be transferred to one or other of the Complainants.

They contend that this should be done because, within the meaning of paragraph 4 the Policy, the domain names are identical or confusingly similar to certain unregistered common law and registered trademarks and service marks, the Respondent has no rights or legitimate interests in the domain names and the domain names have been registered and subsequently used in bad faith. The Complainants maintain that they can prove all three of these requirements and that the appropriate remedy is to transfer the domain names, preferably to the Second Complainant, but alternatively to the First Complainant.

In support of its case on the first of these three elements, the Complainants maintain that the domain names <chungmongku.com> and <chungmongku.net> are confusingly similar to the unregistered trademark and service marks CHUNG MONG KOO, which is the personal name of the Chairman and Chief Executive Officer of the Second Complainant. The Complainants say that they both have rights in this trademark and service mark. They point to the obvious similarity between the two expressions as they appear in the domain names and Mr. Chung’s actual name and also to the likelihood of confusion between them. They also maintain that the name of the First Complainant is very prominent and that he is identified with the Second Complainant and generally with the Hyundai Group. Indeed, they say, the Respondent chose Mr. Chung’s name for the domain names deliberately, so as to attract unsuspecting members of the public whom the Respondent would then subject to very damaging and abusive criticisms of Mr. Chung and Hyundai.

The Complainants also rely on a series of registered trademarks and service marks which are owned by the Second Complainant and which are in HYUNDAI, HMC HYUNDAU and ‘H device.’

The Complainants then contend, to establish the second element, that the same conduct as that already described shows that the Respondent does not and cannot have any rights or legitimate interests in the domain names, for his or her use of them is entirely illegitimate. In particular, the Complainants say that the Respondent has no rights or interests in the domain names because he or she does not conduct a business under that names, is not commonly known by it and does not use it in connection with a bona fide offering of goods and services.

Finally, the Complainants allege that the domain names were registered and are being used in bad faith. The Complainants contend that this is so because the Respondent chose the name so that he or she could deceptively attract consumers to his website and that constitutes bad faith. Moreover, they maintain that the Respondent cannot claim he is operating some sort of valid criticism site, for the Respondent is anonymous, the domain names falsely give the impression that they are genuine sites for Hyundai and Mr. Chung and they give no clue that they are actually being used for some very abusive criticism of both Hyundai and Mr. Chung.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

It is appropriate therefore to note the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence. In fact, Paragraph 4 of the Policy expressly provides that in administrative proceedings ‘ …the complainant bears the onus of proof ’and it follows that, as the proceeding is a civil one, the standard of proof must be the balance of probabilities. The onus of proof clearly remains on the Complainants even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.

The Complainants must therefore establish all three of the elements specified in Paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain names.

However, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, Paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.

That being so, the Panel will now proceed to enquire if the Complainants have discharged the onus on them to prove each of the three elements specified in paragraph 4(a) of the Policy.

Those three elements, all of which must be proved, are:

A. That the Respondent’s domain names are identical or confusingly similar to a name, trademark or service mark in which the Complainants have rights; and

B. That the Respondent has no rights or legitimate interests in respect of the domain names; and

C. That the domain names have been registered or subsequently used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainants contend that the two domain names are confusingly similar to a common law trademark and service mark that the First Complainant has in his own name. It is clear that <chungmongku.com> and <chungmongku.net> are both similar to the name Chung Mong Koo; the only differences are that the constituent personal names all commence with a capital letter, that the ‘Koo’ of the second given name is spelt ‘ku’ in the domain names and that the domain names carry the addition of two of the generic Top Level Domain suffixes, ‘.com’ and ‘.net’ respectively. These variations do not detract from the otherwise confusing similarity between the domain names and the claimed trademark and service mark, as the capital letters would not be used in a domain name, the spelling of the name as ‘ku’ is apparently understood in the Korean language to be the equivalent of ‘Koo’ and the gTLD suffixes have never been taken to detract from what would otherwise amount to confusing similarity.

Moreover, the domain names have the appearance of being virtually the same as Mr. Chung’s name and the unchallenged evidence is that they are also pronounced in the same way as Mr. Chung’s name. Finally, there is nothing in the evidence and nothing submitted by the Respondent to show that the domain names are anything other than confusingly similar to the common law trademark and service marks that are claimed.

However, the more substantial and difficult issue is whether the personal name of the First Complainant is in fact an unregistered trademark or service mark as is contended for by both Complainants. To succeed, the Complainants have to show that they, or at least one of them, has an interest in a trademark or service reflecting the personal name Chung Mong Koo.

This question raises the contentious issue of whether a personal name that has not been registered as a trademark can ever constitute a common law trademark. The issue is contentious enough for it to be the subject of a series of UDRP decisions and an issue discussed in the valuable WIPO Overview of WIPO Panel Views on Selected UDRP Questions.¹ The Overview summarises the current jurisprudence on this issue as follows:

“Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.

Relevant decisions:

- Julia Fiona Roberts v. Russell Boyd D2000-0210 <juliaroberts.com>, Transfer

- Jeanette Winterson v. Mark Hogarth D2000-0235 <jeanettewinterson.com> among others, Transfer

- Dr. Michael Crichton v. In Stealth Mode D2002-0874 <michael-crichton.com>, Transfer

However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.

Relevant decisions:

- Israel Harold Asper v. Communication X Inc. D2001-0540 <izzyasper.com> among others, Denied

- Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa D2003-0248 <gurusrichinmoy.com>, <aboutsrichinmoy.com>, Transfer.”

From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. It will instantly be seen that this is a considerable hurdle to vault and that the reason why some cases have failed to establish trademark rights in a personal name is that the evidence has shown only that the name is famous and not that it has been used in trade or commerce.

A recent decision that illustrates this dichotomy is Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, File No. FA0502000414641, (NAF March 18, 2005) where it was held that Senator Clinton had common law trademark rights in her own name, not simply because she was famous, for that would not have got her over the hurdle, but because she was also, as the panelist said,“…a best-selling author (who) has written four novels including, It Takes a Village: and Other Lessons Children Teach Us, which was published in 1996 and has sold 622,000 copies, and “Living History,” which has sold 1.68 million hard copies and 525,000 paperbacks since its 2003 publication.” In other words, her name had been used to sell books written in her capacity as an author.

Likewise, in Nick Cannon v. Modern Limited - Cayman Web Development, WIPO Case No. D2005-0757, it was held that the complainant had trademark rights in his own name because he could rely on “… his movie experience (six films, from 2002 to 2005) and his extensive career as an actor, writer, producer, and musical composer and performer under his name since the 1980s… The Panel verified the number of appearances of the Complainant’s name “Nick Cannon” on <google.com> on August 21, 2005, and at least one hundred thousand appearances of the Complainant’s name were observed. The Panel finds that the Complainant has demonstrated substantial use of the name “Nick Cannon” in association with his professional career and consequently enjoys common law trademark rights in “Nick Cannon”. The evidence, as well as the representations of the Complainants, are consistent with UDRP decisions cited by the Complainants; see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415.”

The Complainants also rely on Philip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661 and Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402, which are to the same effect.

On the other hand, cases involving business people who are the leaders of companies that do not carry their own names are much more difficult for complainants to prove. Thus, in the leading case cited in the Overview, Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, the prominent Canadian business person and philanthropist Mr. Israel Asper was held not to have acquired trademark rights in his name because ‘… (he had) not shown on a preponderance of the evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services, or that he intended to do so.’

However, as the panelist in the Asper Case observed, ‘The cases involving claims by or on behalf of business people do not demonstrate a pattern.’ Thus, although the complainant in Asper failed, the complainant in Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 succeeded, for it, the Complainant company, was able to show a clear commercial attachment to the use of the name of its founder and, in the case of Steven Rattner, the complainant showed that he provided investment banking and corporate advisory services under his own name and that he would therefore have an obvious interest in protecting his name for commercial use.

Eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. In undertaking that exercise, it is useful to consider a number of guides, for they can be no more than that, that will tend to suggest one way or the other, whether such a nexus has been established and might over time help to establish the ‘pattern’ of consistent authority that the panelist in the Asper Case lamented is presently absent. Those factors would include the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

In the present case, the Complainants’ representatives have presented a meticulous case, involving the history of the company and the involvement of the First Complainant in all of its activities. The uncontradicted evidence is that he has been internationally recognized as a leading figure in the automotive industry and that the awards showered on him have not simply been because of his involvement in that industry in general, but because it has been solely with the Hyundai Group. For example, when Mr. Chung was inducted into the US Automotive Hall of Fame, the Chairman of that institution observed that the recipient was …recognized as a world-class automotive expert, 27 years after he first entered the automobile sector as the president of Hyundai Service in 1974.

It is not necessary to recite the evidence set out in a series of exhibits annexed to the Complaint other than to say that it establishes the First Complainant’s fame and achievement, that these qualities have been recognized internationally, that they are on the public record and widely reported in the trade and general media and, most importantly, that they are at all times linked with the Hyundai Group and its success. Indeed, the record is clear that Mr. Chung is personally recognized as having restored the Group’s fortunes to the point where its present success is largely due to him, that he has given it a reputation for quality control because of his own personal pre-occupation with that objective and that there is a widely held view that the company’s fortunes would suffer if he were not in charge of them. The evidence and the public record show that Mr. Chung has put his personal imprimatur on the company and that the company is now virtually identified with him. In this particular case (which will not be the same in all other cases concerned with this issue,) the identification of the person with the company is strengthened by the fact that Mr. Chung is a substantial owner of the company, his family name has long been associated with it, as in the Monty and Pat Roberts, Inc case(supra) and a Google search reveals 48,000 references to him.

Accordingly, the Panel concludes that the First Complainant’s name is being used for trade or commerce, that this is being done for the benefit of both Complainants and that within the principle in Rattner’s Case, both Complainants have an interest in protecting his name for commercial use, for it materially advances the fortunes of both the company and the First Complainant himself if he is pre-eminent in its affairs.

This conclusion is reinforced by the inference that the Respondent must have been of the same opinion when he registered the domain names. He registered both domain names using Mr. Chung’s name. He did not register them using Hyundai’s name. The only inference open is that he did this because he knew that people looking for a website on Hyundai were just as likely to look for it under Mr. Chung’s name as under Hyundai’s name. Indeed, having registered two domain names under Mr. Chung’s name and none under Hyundai’s name, he must be taken to have believed that people were more likely to look for Hyundai under Mr. Chung’s name than under Hyundai’s name.

Moreover, the Respondent can hardly be heard to say that the Complainants do not have a commercial interest in Mr. Chung’s name when he took aim at Hyundai by registering two domain names in Mr. Chung’s name.

It should also be pointed out that the Second Complainant has registered more than twenty domain names in various combinations of the spelling of Mr. Chung’s name, for the commercial reality is that people seeking information on Hyundai will seek out Mr. Chung’s name.

As in the Monty Roberts Case, the Respondent has also directed the use of the name ‘…precisely at the market for Complainant’s services…’, being in the present case potential buyers of Hyundai motor vehicles.

For these reasons, the Complainants have common law trademark rights in the name Chung Mong Koo and both domain names are confusingly similar to that name.

The Complainants have therefore satisfied the first requirement.

B. Rights or Legitimate Interests

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission.

That is so in the present case, where the Respondent was given notice on November 2, 2005 that the administrative proceeding had been commenced and was served with a copy of the Complaint, which of course included the allegation that he had no rights or legitimate interests in the domain names <chungmongku.com> and <chungmongku.net>.

The Respondent was also given notice that he had until November 22, 2005 to send in his Response, that he would be in default if he did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

As the Respondent is in default, the Panel, after considering all of the evidence, draws the inference that the Respondent has no rights or legitimate interests in the domain names. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, the substance of what has happened in this matter is that the Respondent has taken the First Complainant’s personal name, giving rise to the possible explanation that he did so for some deceptive purpose, an inference which is easy to draw against someone who takes another’s name without consent. If there were, however, a more innocent or legitimate explanation for his conduct, which of course is also possible, the Respondent could have given it, but this he has failed to do. The inference that the Respondent took the First Complainant’s name for an illegitimate purpose is reinforced by the fact that the Respondent has sought to hide behind a cloak of anonymity in registering the domain names in the name ‘Individual’.

In the absence of an innocent explanation for all of this conduct, as the Panel observed in Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273, the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in his favour’.

Furthermore, the Respondent had the opportunity to bring himself within paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name.

However, the Respondent has not endeavored to establish even one of the criteria set out in Paragraph 4(c) of the Policy, giving rise to the inevitable inference that he could not do so by credible evidence.

Finally, even on the most charitable interpretation of the website to which the contentious domain names resolve, the Panel is not prepared to find that the Respondent could bring him or herself within any of these criteria.

Nor could the Respondent remotely succeed in arguing that he had the protection of free speech or that this was one of the so-called protest cases. That is so for the reason that the Respondent has not been open or transparent and has not publicly announced that his domain names will lead to a criticism or protest site. Instead, he has falsely pretended that the domain names will lead to genuine websites for Mr. Chung and Hyundai. See in this regard: Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372; Hollenbeck Youth Center, Inc. v. Stephen Rowland, WIPO Case No. D2004-0032; Banque Cantonale de Geneve v. Primatex Group S.A., WIPO Case No. D2001-0477; and Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776.

The anonymity of the Respondent adds to the impossibility of a finding that he had rights or legitimate interests of this sort.

The Complainants have therefore made out their case on the second requirement.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

The Panel accepts the persuasive arguments advanced in the Complaint to the effect that the known conduct of the Respondent in registering the domain names and using them to direct internet traffic to a website ‘definitely constitutes bad faith as stipulated under paragraph 4(b)(iii) and (iv) of the Policy’. The English translation of pages of the website that are annexed to the Complaint have given the Panel a clear picture of its contents. In essence it is a website which purports to be the website of Hyundai and Mr. Chung Mong Koo, for it is reached by domain names consisting solely of his name, it includes a series of questions where the answers are by implication being given by Mr. Chung, it carries a photograph of Mr. Chung with greetings from the website and it gives his name in Chinese characters. It also underlines the connection between Mr. Chung and the Second Complainant by prominently displaying the word HYUNDAI which is a registered Korean and international trademark and by inviting the reader to send an email to chungmongku@[email address]. The real vice in the website is that it poses questions, the answers to which are derogatory of Hyundai and which are falsely portrayed as coming by implication from Mr. Chung himself. Whilst this is being done, the website carries the exhortation ‘don’t buy Hyundai’, an assertion that the First Complainant illegally paid 9 billion won to a political party and another assertion that Hyundai is ‘ junk’. Clearly some consumers will find all of this ludicrous and will ignore it. But the Panel finds that in all probability at least some people will take notice of the false assertions on the website and many more will certainly be mislead and confused by them, leaving an overall impression that is damaging to both Complainants, derogatory of them and disruptive of the Second Complainant’s business and the First Complainant’s management of it.

That conduct comes within paragraph 4(b)(iii) of the Policy, for, although it is unlikely that this process was devised by a competitor in the automotive industry, its perpetrators are certainly competing with both Complainants in the official presentation of the Hyundai case and the information market about its products.

In any event, the same conduct comes within paragraph 4(b)(iv) of the Policy, for it is intentional conduct designed to create confusion as to whether the website and the assertions carried on it are genuine products and services of Hyundai and Mr. Chung.

As to whether this is conduct engaged in for ‘commercial gain’ the Panel accepts that there is a probability of that being the intention, either in the benefits to a competitor if Hyundai’s business suffers from the deception or, more likely, the establishment of a track record in using the domain names and attracting ‘hits’, that can then be turned to a commercial advantage later or alternatively being able to build up a list of visitors to the site.

Moreover, the deceptive nature of the entire modus operandi of a registrant supplying false information to hide his identity is itself evidence of bad faith: Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003.

Finally, as has already been said under paragraph 4(a)(ii) of the Policy, any attempt to make out a case that this was a legitimate ‘protest’ site, relying on free speech to negate any finding a bad faith would fail. That is so because of the inherent deception that is at the root of the way the site has been constructed. It is one thing to criticize Hyundai, even unfairly, but it is another thing altogether to mislead people into believing that it is the Chairman and CEO of a company who has taken to disparaging it.

The Complainants have therefore succeeded in proving this element.

7. Decision

As the Complainants have made out all of the elements necessary, the Panel is of the view that the domain names should be transferred from the Respondent. The Complainants say that their first preference is that the domain names be transferred to the Second Complainant. However, they also say that if the panel ‘deems more appropriate’, it requests that the domain names be transferred to the First Complainant.

The Complainants’ case was that both Complainants had interests in the common law trademark and service mark in Mr. Chung’s name and the Panel has so decided. They both therefore have an entitlement to the domain names.

However, courts and tribunals called upon to make orders of this sort traditionally take into account the balance of convenience and all the circumstances. The Panel will therefore order that the domain names be transferred to the Second Complainant, specifically for the following reasons. First, although the trademark and service mark embody Mr. Chung’s name, it is because of his association with the company that it is a trademark and service mark at all, so the link with the company is of paramount importance. Secondly, the Second Complainant already has a series of domain names in various spellings of Mr. Chung’s name and it seems convenient that all relevant domain names should be in the one ownership. Thirdly, if the Panel orders that the domain name be transferred to Mr. Chung, he will no doubt transfer it to the company as a matter of practicality, so that step may as well be taken immediately as a matter of convenience.

This course also seems consistent with The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731, where the order was made after agreement between two Complainants and Boston Beer Corporation and BBC Brands, LLC v. Netsolutions Proxy Services, WIPO Case No. D2004-0920, where the order was for transfer to the Complainants ‘or as they may direct’.

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 names, <chungmongku.com> and <chungmongku.net> be transferred to the Second Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: December 21, 2005

¹ http://arbiter.wipo.int/domains/search/overview/index.html