WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ollyís B.V. v. CPS Korea

Case No. D2000-0203

 

1. The Parties

The complainant is Ollyís B. V., a corporation organized under the laws of the Netherlands, whose principal place of business is 1822 BK Alkmaar, Netherlands, represented by Edwin A. Getz, Tina D. Kourasis, and Liisa M. Thomas, of Gardner, Carton & Douglas, of 321 N. Clarke Street, Suite 3300, Chicago, IL 60610, USA.

The respondent is CPS Korea Corp, of Baekguang Bldg., 4th Floor, 946-5 Dogok-dong, Kangnam-gu, Seoul, Korea.

 

2. Domain Name and Registrar

The domain name at issue is <oilily.com>, and the registrar is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

The complaint was submitted on March 23, 200. A timely response was submitted to and received by WIPO on April 17, 2000. George R. F. Souter was appointed as sole panelist on April 20, 2000.

 

4. Factual Background

The complainant claims to be the owner of all rights in and to the trademark OILILY, and to have obtained registrations throughout the world. Copies of the following registrations, all of which are still in force, were supplied: Benelux Registration No. 0460848; South Korean Registrations Nos. 216779, 217522, 219873, 221746, 221747, 225394 and 236539; Hong Kong Registrations Nos. 0958, 0959, B1755, 01888, 03118, 03796, and 03797; Indian Registrations Nos.543037, 543038 and 543039; Japanese Registrations Nos. 2036994 and 2464465; Singapore Registration Nos. 2441/90 and 2442/90; Nepalese Registration No. 10727/052; Taiwanese Registrations Nos. 642197 and 853718; Australian Registrations Nos. B545320 and A545321; United Kingdom Registrations Nos. 1270935 and 1513431; Canadian Registration No. TMA371731; and United States Registrations 1630912, 1634679 and 1665617.

Benelux Registration No. 0460848 covers goods in classes 3, 9, 16, 18, 24 and 25.

The South Korean Registrations mentioned above relate respectively to "Handbags, satchels, trunks, suitcases, rucksacks, purses, boxes, packing bags, closures of packing containers, bottles" (No 216779); "Dress coats, trousers, evening dresses, suits, skirts, childrenís clothes, overcoats, half coats, raincoats, cloaks, jumper, sweaters, cardigan jackets, waistcoats, white shirts, blouses, sportshirts, poloshirts, undershirts, pants, combinations, chemises, slips, pajamas, nightgowns, sportswear (uniform), hosieries, stockings (No. 217522); "Shoes, boots, lace up boots, leather shoes, gym shoes, baseball shoes, handball shoes" (No. 219873); "Letter paper, notebooks, sketchbooks, envelopes, cards, albums, seal materials" (No. 221746); "Ordinary spectacles, sunglasses, eyeglass case, frame" (No. 221747); "Magazines, picture postcards, calendars, dailies, other printed matters, writings and paintings, photographs" (No. 225394); and "Perfume, perfumed oil, general toilet water, skin lotion, hair cream and hair spray, compound perfumery, pomade, hair tonic (No. 236539).

The respondent registered the domain name <oilily.com> on September 28, 1998.

The complainant claims that it contacted the respondent on numerous occasions in an effort to amicably resolve the domain name dispute. On January 21, 2000, a Korean patent attorney representing CPS Korea, in response to previous correspondence, e-mailed the complainant, stating: "In principle, CPS Korea has a willingness to transfer the domain name if Ollyís BV offers reasonable price." On February 2, 2000, the Korean patent attorney e-mailed the complainant, stating: "As I talked to the President of CPS Korea, Mr. Gary Koo, he is willing to transfer the domain name. Mr. Koo, his staffs of CPS and an appraiser thoroughly evaluated the reasonable price for the transfer of oilily.com. As a result, CPS Korea offers the transfer of the domain name for US$520,000."

 

5. Partiesí Contentions

A. Complainant

The complainant claims to be the deviser of the trademark OILILY, from the nickname, "Olly" of Willem Olsthoorn who, with Marieke Olsthoorn created the complainant company in 1963.

The complainant claims that it is a well known manufacturer and distributor of retail apparel, accessories and personal care products, and that the trademark OILILY has been in use for its products since at least as early as 1981, which products are now on sale in over 2000 retail stores in over 40 countries, including retail stores which trade under the trade name OILILY, including a store trading under that name in Seoul, to have generated over $100,000,000 in sales of its products under the trademark, and to have expended over $10,000,000 in marketing and advertising. Additionally, the complainant claims to have a "fan club" of over 80,000 members, operated through its web sites at <oililyusa.com> and <oilily.nl>.

The complainant alleges, "on information and belief", that the respondent obtained the domain name registration <oilily.com> with full knowledge of the complainantís long prior use and ownership of its OILILY trademark throughout the world, and in Korea, and to obtain financial gain from the extraordinarily valuable goodwill of its OILILY mark.

The complainant requests that the domain name <oilily.com> be transferred to them.

B. Respondent

The respondent claims that its main business is in the field of web-page designing businesses as well as providing general consulting services to clients in various business areas with respect to strategic planning and development of internet related operations. It claims that it is a corporation organized and registered to do business in Korea since 3 September 1998. Having stabilised its business, which was finally accomplished in the latter half of 1999, it claims to be in the process of diversifying into two new business areas, one of which relates to selling a variety of fresh produce and flowers through the internet. The respondent claims that, "with the unexpected difficulties in locating and establishing a business relationship with a suitable produce wholesaler, the fully fledged launching of the domain name Öhas been postponed up until today."

In connection with this proposed business, the respondent claims to have devised the domain name OILILY, "as a name which sounds unique and, at the same time coherent in relation to the business of selling fresh produce and flowers". The respondent claims that it derived the domain name from two words, namely "OI" and "LILY", the word "oi" dictated in English in the way it is pronounced in Korean meaning "cucumber", and the word "lily" pronounced in the same manner meaning the flower "lily".

The respondent claims that the complainantís trademark OILILY, "[g]iven the fact that the complainant does not advertise its products nor its trademark through the use of mass media such as television, radio nor daily newspapers in Korea", "is not a well-recognized trademark to the general public in Korea", and that the respondent, "as a member of the general public, did not know that the name "oilily" was a well known trademark prior to registering the domain name."

 

6. Discussion and Findings

For the complainant to succeed, the Panel must, under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

The language employed, namely the word "and" at the end of paragraphs (i) and (ii), makes it clear that the tests in all three paragraphs (i), (ii) and (iii) must be met for the complainant to succeed. Previous Administrative Panel Decisions have, uniformly, followed this interpretration. Further, the word "and" in paragraph (iii) requires that both the domain name registration has been registered in bad faith, and that it has been used in bad faith, and the Administrative Panel, in Case No. D99-0001 so decided.

In connection with Paragraph 4a(i), it is clear that this test has been met, as the complainant has extensive trademark rights in the identical word OILILY.

In connection with Paragraph 4a(ii), Paragraph 4c of the Uniform Domain Name Policy provides an aid to interpretation. Paragraph 4c(i) advises respondents that their rights or legitimate interests to a domain name for the purposes of Paragraph 4a(ii) would be demonstrated by "before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name Ö in connection with bona fide offering of goods and services." Paragraph 4c(iii) alternatively advises respondents that their rights or legitimate interests to a domain name for the purposes of Paragrah 4a(ii) would be demonstrated by "making a legitimate Ö fair use of the domain name, without intent for commercial gain to misleadingly divert consumers"

In the Panelís opinion, the use of the expression "bona fide" in Paragraph 4c(i) is sufficient to prevent a respondent who knowingly adopted anotherís well known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use the domain name in connection with the offering of goods or services prior to notice of a dispute.

The respondentís claim to have independently devised the word "oilily" as "coherent in relation to selling fresh produce and flowers" in connection with its intended use of the domain name in connection with its intended business in internet selling of fresh produce and flowers, is, in the Panelís opinion, plausible.

The complainant has not produced elucidation of the "information" which (together with "belief") leads to its allegation that the respondent obtained the domain name <oilily.com> "with full knowledge of Complainantís long prior use and ownership of its OILILY trademark throughout the world, and in Korea." Such elucidation might have swayed the Panel to an opposite conclusion as to the respondentís independent devising of the domain name, given the inherent improbability of the coincidence of name.

The respondent has provided some evidence of preparatory activity to launch its claimed proposed commercial activity, in the form of a "Memorandum of Understanding on Electronic Commerce", dated 26 December 1999, between itself and a Korean entity, known as Flora, which the respondent refers to as a "flower wholesaler", in addition to operating the web site <oilily.com> described below.

In the Panelís opinion, therefore, the respondent is entitled to take benefit of the advice given at Paragraph 4c(i) in connection with Paragraph 4a(ii).

The Panel notes that the selling of fresh produce and flowers is a different field of commerce to that of the complainant, and that a trademark clearance search in Korea, and elsewhere, in connection with the respondentís proposed business might very well have produced no reference to the complainantís registered trademarks.

In connection with the advice given in Paragraph 4c(iii), the fact that there is no commerce in common between the complainantís business and the respondentís proposed business, leads the Panel to the conclusion that "misleading diversion of consumers" is inherently unlikely. The fact that the respondent forwarded e-mails intended for the complainant addressed to the respondentís web site to the complainant reinforces this conclusion.

In connection with paragraph 4a(ii), consequently, the Panel decides that the test of absence of rights or legitimate interests in respect of the domain name has not been met, and that, accordingly, the complainant cannot succeed.

The Panel, nevertheless, feels that it should proceed to consider Paragraph 4a(iii), as it is in this paragraph that the protection of well known marks is specifically catered for. In this connection the Panel notes that, in "The Management of Internet Names and Addresses: Intellectual Property Issues" (Report of the WIPO Internet Domain Name Process), of 30 April 1999, at paragraph 262, the following statement appears:

We consider that the administrative procedure in respect of bad faith, abusive registrations of domain names, Ö should provide an efficient means for suppressing many of the predatory and parasitical practices to which famous and well-known marks are subject.

In Case No. D2000-0102, the Panel considered the question of a well known mark in connection with the mark NOKIA, and concluded: "The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent could have been unaware of the trademark rights vested therein when registering the trade name." The Panel considers that, in spite of the alleged well known nature of the mark OILILY, it is not so well known that it cannot be reasonably argued that the respondent could not have been unaware of it when registering the domain name <oilily.com>. Accordingly, the Panel holds that the domain name was not registered in bad faith, for the reasons set out in its finding in connection with Paragraph 4a(ii).

The respondent has set up a web site, which is a single page, with illustrations of fresh produce and flowers, which in the Panelís opinion, is suggestive of the Respondentís claimed proposed commerce, together with a short Korean language text.

The page also has a "contact us" message, which, when accessed, merely provides an e-mail linkage to the respondent.

In the Panelís opinion, the content of this web site appears somewhat insubstantial, and the Panel notes that the Respondent did not take the opportunity to supply an English translation. The Panel is, accordingly, unconvinced that the use of the domain name to date could justify the very high value of US$520,000 as "assessed" by the respondent for the purposes of sale of the domain name to the complainant. Offers for sale of a domain name to a complainant has been considered on a number of occasions by the Panel. The Panel in this case accepts the reasoning of the Panel in Case No. D99-0001 to the effect that: "Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out of pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy. The Panel notes, in particular, that the absence of proof of any active trading under the domain name in connection with products or services in a different field of activity to that of the complainant, deprives the respondent of justification of the assessed value as arising from independently accumulated goodwill, and, in the Panelís opinion, the value assessed is, therefore, predatory, and, consequently, demonstrates use in bad faith.

This finding that the respondent has used the domain name in bad faith does not disturb the finding that the original registration of the domain name was not in bad faith. Consequently, the dual test of Paragraph 4a(iii) has not been met.

 

7. Decision

The complainant has not satisfied the Panel that the respondent had no rights or legitimate interest in the domain name, nor that the domain name was registered in bad faith. Consequently, the respondent shall not be required to transfer the domain name <oilily.com> to the complainant.

 


 

George R. F. Souter
Sole Panelist

Dated: May 3, 2000