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Generic Top Level Domain Name (gTLD) Decisions |
Raisio plc and Town of Raisio v. Lee Joohee, Yang Youngho
Case No. D2005-1041
1. The Parties
The Complainants are Raisio plc, Raisio, Finland and the Town of Raisio, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.
The Respondents are Lee Joohee, Seoul, Republic of Korea and Yang Youngho Gyeonggi-do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <raisio.com> is currently registered with HANGANG Systems Inc. dba Doregi.com. The registrar with which the domain name was registered when it was in the name of the first Respondent is eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2005. On October 4, 2005, the Center transmitted by email to HANGANG Systems Inc. dba Doregi.com a request for registrar verification in connection with the domain name at issue. On October 4-5, 2005, HANGANG Systems Inc. dba 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 on October 18, 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 5(a), the due date for Response was November 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2005.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 25, 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 first Complainant, Raisio plc, or its subsidiaries, are the owners of the trademark RAISIO, which is protected by numerous trademark registrations around the world (see Annex 8 to the Complaint). The trademarks cover many goods in different international classes, mainly in classes 1, 29, 30 and 31. The oldest trademark applications in different countries were filed during the 1980’s.
In Russia, Raisio plc also has two trademark registrations for the word RAISIO without figurative elements.
The first Respondent registered the domain name on May 20, 2002.
Raisio plc’s business operations are arranged into two areas: Raisio Nutrition and Raisio Life Sciences. Raisio employs some 1,400 people, about 70 percent of them in Finland. Raisio operates in 13 different countries.
In the beginning of the 21st century, Raisio plc had a Korean subsidiary company called Raisio Chemicals Korea Inc.
The second Complainant is the town of Raisio, Finland. Raisio is also the name of the town in Finland.
The first record of the name Raisio dates back to historical documents from the year 1292. Raisio is an active town in south-western coast in Finland.
5. Parties’ Contentions
A. Complainants
The textual part of the trademark is the word RAISIO, and the trademark registrations give full protection to this literal part of the trademark registration.
Raisio plc has acquired exclusive trademark rights to the word RAISIO by registration and by establishment.
The name Raisio was protected by the trade name registration in Korea, the home country of both Respondents, before the Respondents registered the domain name.
According to the Section 8 of the Finnish Trade Names Act, a trade name which consists of a geographical name as such may be considered as distinctive when it has become established.
According to Finnish law, a geographical name may be registered as a trademark or a trade name if it has become established.
The word RAISIO refers either to the protected names Raisio plc or Raisio town.
The Respondents do not have trademark registrations for the word RAISIO in Korea.
The Respondents cannot have any rights or legitimate interests in respect of the domain name <raisio.com>, since RAISIO is Raisio plc’s trade name and trademark and the name of the town of Raisio.
The Respondents do not use the domain name in any business activity.
The word “raisio” is a distinctive Finnish name, and as such is not one a trader would legitimately choose unless seeking to create an impression of an association with the Complainants.
It is not in the Complainants’ knowledge that the Respondents would have been in any way or anywhere ever commonly known by the domain name.
The Respondents are not making a legitimate non-commercial or fair use of the domain name.
The domain name has been registered in order to prevent Raisio plc from reflecting its trade name and trademark RAISIO in a corresponding domain name.
Raisio plc is globally known especially for its Benecol®-products. The Benecol-products have been present in Korea since 2000, and the Respondents must have been aware of the product and of Raisio as its manufacturer.
Raisio plc launched its website “www.raisiogroup.com” in 1997, and its website has been active ever since. The disputed domain name was registered to the first Respondent in 2002, and to the second Respondent in 2005, both over five years after Raisio plc began to exist also on the Internet and being listed in Internet search results for the word RAISIO.
It is presumed that the Respondents became aware of Raisio and tried to obtain money with the registration of the domain name.
The Complainants have learned that the first Respondent (Lee Joohee) has been the respondent in several prior UDRP disputes.
The Complainants have conducted a gTLD search in order to find out if there is a pattern of conduct at hand. The search revealed that the first Respondent has registered at least 287 generic domain names.
When the domain name was in the name of the first Respondent, the website had an “under construction” message. Now the website has no content at all.
Before filing the Complaint, Raisio plc tried to obtain the domain name voluntarily from the Respondents. First Respondent indicated he was willing to sell the domain name if offered a high price.
Shortly after the first Respondent received the cease and desist letter from Raisio plc, the domain name was transferred to another Korean person, the second Respondent. It is obvious that the first Respondent transferred the domain name in order to avoid UDRP proceedings.
The fact that the first Respondent has no legitimate rights to the domain name and that the domain name has not been in actual use show that the domain name was registered and was used only in order to get money from the owner of the trademark RAISIO, i.e. bad faith is shown.
The second Respondent must be a close person with the first Respondent and must have been aware of the correspondence between Raisio plc and the first Respondent and the Complainants’ rights to the name RAISIO. The Complainants have reason to believe that the domain name was transferred to the second Respondent deliberately using e-mail addresses, which have not been used in connection with the previous registrations and previous UDRP cases.
The second Respondent registered and uses the domain name in bad faith as the transfer from the first Respondent to the second Respondent has been made only in order to obtain high payment from Raisio plc.
B. Respondents
The Center received an electronic communication in English from one of the Respondents. The latter enquired about why the Complaint and the Center’s communications had been transmitted in the English language, being himself a Korean national and noting that the disputed domain name had been registered with a Korean registrar. The Center replied to this communication by informing the Respondent that the Complainants had requested the Panel to determine that the language of the proceedings should be English, pursuant to Paragraph 11(a) of the Rules, and that the Respondent could argue against such request in his Response.
Following this exchange, the Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
As a preliminary matter, the Panel notes that the Complaint was filed in English, although the Registration Agreement entered into by the Respondent was itself drafted in Korean. Paragraph 11(a) of the Rules provides that, subject to the Panel’s discretion to determine otherwise, the language of the administrative proceeding shall be the language of the Registration Agreement. As mentioned above, the Complainants submitted pleadings requesting the Panel to exercise its discretion and to hold that English shall be the language of the proceedings.
Having taken note of the Complainants’ arguments, the Panel determines that the procedure was appropriately conducted in English and that the decision shall be written in the same language. In coming to this decision, the following elements were taken into account: the Respondent communicated in English with the Center; the Respondents did not oppose the Complainants’ request that English shall be the language of the proceedings; and finally, the Complainants and their representative certified that they did not master the Korean language and that access to qualified translators would have been both difficult and costly. Upon these considerations, the Panel accepts the Complainant’s request that the language of the proceedings shall be English.
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Rules, Paragraph 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, Complainants must prove each of the following:
(i) the domain name is identical or confusingly similar to Complainants’ trademark or service mark;
(ii) Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants’ marks are registered in many countries. The Complainants own numerous marks including the word “RAISIO”. The domain name wholly incorporates Complainant’s distinctive marks and is thus identical to them. The suffix “.com” does not contribute to distinguish the disputed domain name from the Complainant’s trademarks.
Therefore, the Panel finds that the domain name is identical to the Complainants’ marks pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondents have no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among other cases, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainants have asserted that the Respondents have no relationship with or authorization from the Complainants to use their marks; the Panel notes that there is nothing in the record to suggest that the Respondents have been commonly known by the domain name; the Panel further notes that the Respondents have not, and have never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven in the present case, provided that they have not been denied by the Respondents.
The Respondents have not submitted a proper response. Therefore, they have failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondents have no legitimate interests or rights in the domain name pursuant to Paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainants’ trademark is known worldwide and in Korea, it is unlikely that the Respondents, at the time of registration of the domain name or thereafter, were not aware that they were infringing the Complainants’ trademarks.
Bad faith can be inferred based on the fame of Complainants’ marks, such that the Respondent was aware or should have been aware of Complainants’ marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of many countries, including the Republic of Korea, would have made Complainants’ registrations known to the Respondents.
The Respondents had initially placed an “under construction” message on the web page associated with the disputed domain name, the latter of which now shows no content at all. A passive holding of a domain name incorporating a trademark can also constitute a use in bad faith, especially when the domain name is held in order to collect money (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. and Designor OY Ab v. Bames Enterprises, WIPO Case No. D2001-0643).
Further, the Panel notes that the contact details provided on the registrar’s Whois record on the date of notification was incorrect. This has been interpreted by previous UDRP panels as entailing bad faith.
In light of the above, the Panel concludes that the Complainants have proven bad faith in registration and use on the part of the Respondents.
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, <raisio.com> be transferred to the Complainants.
Thomas P. Pinansky
Sole Panelist
Dated: December 14, 2005
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URL: http://www.worldlii.org/int/other/GENDND/2005/2109.html