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Neuf Telecom, Cegetel v. Hyun-Jun Shin [2005] GENDND 2097 (21 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Neuf Telecom, Cegetel v. Hyun-Jun Shin

Case No. D2005-1118

1. The Parties

The Complainants are Neuf Telecom, Boulogne-Billancourt, France, and Cegetel, Courbevoie Cedex, France, both represented by Cabinet Boettcher, Paris, France.

The Respondent is Hyun-Jun Shin, Gyeongbuk, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <neufcegetel.com> is registered with Hangang Systems Inc. d/b/a Doregi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2005. On October 25, 2005, the Center transmitted by email to Hangang Systems Inc. d/b/a Doregi.com a request for registrar verification in connection with the domain name at issue. On October 27, 2005, Hangang Systems Inc. d/b/a Doregi.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, requesting that English be the language of the administrative proceeding on November 10, 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2005.

The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 13, 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.

As discussed further below, the Panel determines that the language of the proceeding will be English.

4. Factual Background

According to news reports, Neuf Telecom and Cegetel, previously competitors in the telecommunication industry in France, merged in 2005. Neuf Telecom is currently the sole shareholder of Cegetel.

Cegetel registered the mark CEGETEL in France on July 18, 1996, and in the European Community on January 17, 1997, for use on telephone sets and telecommunication services. In the United States of America, Cegetel’s registration date for the CEGETEL mark is February 20, 2001. Neuf Telecom registered the mark NEUF in France on October 3, 2003, for use on telecommunication services. In addition, Cegetel registered the domain name <cegetel.com> on November 15, 1996; Neuf Telecom registered its domain name <neuf.com> on November 20, 1999.

The Respondent registered the disputed domain name <neufcegetel.com> on April 11, 2005.

5. Parties’ Contentions

A. Complainant

The Complainants argue that the Respondent’s domain name is identical or confusingly similar with the NEUF and CEGETEL marks in which the Complainants have rights; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

Paragraphs 5(e) and 14(a) of the Rules allow the Panel to decide the dispute based on the Complaint. The Respondent’s default requires the Panel to draw appropriate inferences from such default, as provided in paragraph 14(b) of the Rules. The Panel accepts as true the supported assertions in the Complaint necessary to the resolution of the dispute.

6. Discussion and Findings

Initially, the Panel must address the language of the proceeding. 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.” Here, the language of the Registration Agreement is Korean. The Complainants, however, request that English be the language of the proceeding. The Panel agrees, with regard to all circumstances of the case. Correspondence between the parties indicates that the Respondent is proficient in the English language. The Respondent has also declined to participate in the proceeding.

A. Identical or Confusingly Similar

The record demonstrates that Neuf Telecom has rights in the mark NEUF, and that Cegetel has rights in the CEGETEL mark. The Complainants obtained formal registration of the respective marks and used them in their business operations well before the Respondent registered the disputed domain name.

The Panel determines that the disputed domain name here is confusingly similar to marks in which the Complainants have rights. The <neufcegetel.com> domain name merely combines the two distinctive marks NEUF and CEGETEL. Although the record does not indicate that the Complainants have trademark or service mark registration of the term NEUFCEGETEL, this is of little consequence. In this regard, two previous UDRP decisions are informative: Telcel, C.A. v. jerm and Jhonattan Ramirez, WIPO Case No. D2002-0309 (June 5, 2002); and Compañía de Radiocomunicaciones Moviles S.A. and Bell South Corporation v. Argentina Web Design, WIPO Case No. D2000-0914 (October 5, 2000). In Telcel, C.A., the disputed domain name was <telcelbellsouth.com>, which combined the marks TELCEL and BELLSOUTH. The complainant therein had registered the mark TELCEL and was a licensee of the BELLSOUTH mark. In Compañía de Radiocomunicaciones Moviles S.A., the disputed domain name <movicombellsouth.com> combined the marks MOVICOM and BELLSOUTH, which the complainants had registered. In both cases, the same panelist determined that the lack of a separate registration of the combination of the two marks – TELCELBELLSOUTH in the former and MOVICOMBELLSOUTH in the latter – did not disturb the conclusion that the disputed domain name was confusingly similar to the complainants’ protected marks.

In addition, in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co. Ltd. v. IC, WIPO Case No. D2003-0112 (March 31, 2003), the panel concluded that the domain name <konicaminolta.net> was confusingly similar to KONICA and MINOLTA, registered marks of two companies that had merged. As the three-member panel explained, “Persons, worldwide, accessing the disputed domain name would be bound to think that the domain name had a connection with either Complainant or with the merged entity.” That statement is also apt here.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy allows the Respondent to demonstrate rights or legitimate interests in the domain name, by providing evidence of: (i) the Respondent’s use of the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent being commonly known by the domain name; or (iii) the Respondent making a legitimate noncommercial or fair use of the domain name. This list is not exhaustive. Nevertheless, the Panel is at a loss to ascertain any circumstances that would demonstrate the Respondent’s rights or legitimate interests in <neufcegetel.com>. Instead, the record indicates that the Respondent registered the disputed domain name on April 11, 2005, within days after reports of negotiations between Neuf Telecom and Cegetel toward a merger.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy describes circumstances that amount to evidence of registration and use of a domain name in bad faith. The Complaint alleges that the disputed domain name “is used for running a website primarily offering cell phones, mobile phones and wireless phones . . .” (Complaint, at 5 & Annex 3). This could be evidence that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users . . . by creating a likelihood confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or . . . of a product or service on [the Respondent’s] website.” (Policy, Paragraph 4(b)(iv).) (As of the date of this decision, the website for the disputed domain name does not refer to such products; instead the website is “Under Construction.”)

More pointedly, the Respondent’s demand of $1 million from Neuf Telecom as a “reasonable price” (Complaint, Annex 5) for the transfer of the domain name indicates that its registration was “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 . . . for valuable consideration in excess of . . . documented out-of-pocket costs directly related to the domain name.” (Policy, Paragraph 4(b)(i).) The Panel determines that there is sufficient evidence of registration and use of the domain name in bad faith.

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 <neufcegetel.com> be transferred to the Complainants.

Ilhyung Lee
Sole Panelist

Dated: December 21, 2005