WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hyosung Corporation v. HH
Case No. D2000-0236
1. THE PARTIES
The Complainant is Hyosung Corporation, a Korean corporation having its principal place of business at: 450, Kongduk-Dong, Mapo-Gu, Seoul 121-020, Republic of Korea.
The Respondent is HH, whose identity is not known. According to the Network Solutions' WHOIS Database, the Registrant's name HH is accompanied by the following information: Administrative Contact, Technical Contact, Zone Contact: Hyungsuk Park, Address: Tentmaker, Hoegi, Tongdaemun, Seoul, KR.
2. THE DOMAIN NAME AND REGISTRAR
The domain name at issue is hyosung.com. This domain name is registered with Network Solutions, Inc. ("NSI"), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. PROCEDURAL HISTORY
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2000, by e-mail, and on April 3, 2000, in hardcopy.
The acknowledgment of receipt of the Complaint was sent by the Center to the Complainant on April 3, 2000. On the same day, the Center sent a Request for Registrar Verification to NSI.
The Center, having confirmed that the formal requirements are complied, sent a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent on April 10, 2000.
The Respondent has made no Response to the Complaint before the due date, and the Center sent a notification of the Respondent's default to the parties on May 9, 2000.
The Center sent a notification of the appointment of administrative panel and projected decision date on May 9, 2000.
4. FACTUAL BACKGROUND
The facts stated in the complaint are as follows:
A. Trademark HYOSUNG
The Complainant is the owner of a trademark HYOSUNG registered for goods or services in various classes in Korea, Germany, the United Kingdom and Hong Kong, and the Complainant's applications for registration of this trademark are pending in the United States.
(1) In Korea:
The Complainant filed applications for registration of HYOSUNG trademark on various dates since 1978, for goods and services in classes 1 to 22, 25 to 53, 101, 104 to 106 and 108 to 112, and obtained registrations. The Registration Numbers are: 58780; 59273; 60937; 58719; 58720; 58721; 58722; 59463; 58190; 185543; 58192; 58723; 58724; 58725; 184616; 58727; 185541; 58729; 58193; 58194; 59362; 58735; 58731; 58732; 58733; 58734; 58736; 59363; 59364; 58737; 59365; 59464; 59813; 59274; 59275; 58738; 180512; 58740; 58741; 58742; 57507; 177568; 57509; 57536; 57537; 57584; 58195; 58196; 59366; 11511; 1740; 1741; 1742; 1744; 1745; 1746; 1747; and 1748. (The Registration List of HYOSUNG Trademark in Korea is found in Appendix H to the Complaint.)
(2) In Germany:
The Complainant obtained registration of HYOSUNG trademark for "production and distribution of electrical and electronic apparatus; video cassettes, audio cassettes, diskettes, computer and data tapes, and audio and video cassette recorders" on November 10, 1989 (Registration Number: 1,149,490). (A copy of the certificate of registration is found in Appendix H to the Complaint).
(3) In the United Kingdom:
The Complainant obtained registration of HYOSUNG trademark for "apparatus and instruments, all for the recordal, transmission and reproduction of sound and video; discs, tapes and films all bearing or for the recordal of sound and/or video recordings; cassettes, spools ;and cartridges, all adopted for use with the aforesaid discs, tapes and films; audio and visual recorders and players; tapes and discs, all bearing or for the recordal of coputer programmes" on December 15, 1988 (Registration Number: 1,367,100). (A copy of the Registration Certificate is found in Annex H to the Complaint.)
(4) In Hong Kong:
The Complainant obtained registration of HYOSUNG trademark for "video tape cassette apparatus, audio tape cassette apparatus, floppy disks, computer tapes, audio and video cassette recorders" on October 10, 1991 (Registration Number: 3343 of 1991). (A copy of the Certificate of Trade Mark Registration is found in Annex H to the Complaint.)
(5) In the United States:
The Complainant filed an application for registration of HYOSUNG trademark for rayon fibre yarn, etc. in Class 23 and labels (cloths), leather cloth, etc. in Class 24 on January 21, 2000, and another application for registration of the same trademark for film (plastic cling) extensive, etc. in Class 16 on February 9, 2000, and both applications have been pending. (Copies of these applications are found in Annex H to the Complaint).
B. The Complainant owns and has been using the domain name hyosung.co.kr since 1997.
5. PARTIES CONTENTIONS
The Complainant asserts, as the grounds for its Complaint, as follows:
1. Aside from the generic top-level domain (gTLD) ".com," the domain name hyosung.com is identical to the Complainant's trademark HYOSUNG. As Annex C to the Complaint (a printout from the current web page at hyosung.com) demonstrates, the domain name hyosung.com is not associated with an active website.
The Respondent has no right or legitimate interest in respect of the Domain Name because, on information and belief, it had actual notice of the Complaint's right in the Domain Name before it registered the Domain Name. The Complainant is very well known in Korea and the Respondent contacted the Complainant offering to sell the Domain Name immediately after registering the Domain Name. Moreover, on information and belief, the Respondent has not been commonly known by the Domain Name, nor is the Respondent making a legitimate noncommercial fair use of the Domain Name.
The Domain Name should be considered as having been registered and being used in bad faith on information and belief because:
a. The Respondent has registered and is using the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owner of the aforementioned trademark, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name. This bad faith is evidenced by telephone conversations that have transpired between the Respondent and the Complainant. Immediately after registering the Domain Name, the Respondent contacted the Complainant offering to sell the Domain Name for twenty million Korean Won (approximately US$18,034.27 as of March 30). (See, Annex E, a certified translated telephone conversation between the Respondent and Ms. Oiyoung Lim, an employee of the Complainant, on March 14, 2000, page 6.) The Complainant refused. In November 1999, the Respondent again contacted the Complainant, offering to sell the Domain Name for one hundred million Korean Won (approximately US$90,717.33). The Complainant refused. On March 14, 2000, the Respondent again offered to sell the Domain Name to the Complainant for one hundred fifty million Korean Won (approximately US$135,256.99), giving the Complainant a deadline of March 31, 2000. (See, Annex E, page 7.) The Respondent added that if the Complainant refused, the price would be increased. Moreover, the Respondent specifically pointed out that the domain name "tax.co.kr" sold for two hundred million Korean Won. (Id. at 10.)
b. The Respondent has registered the Domain Name to prevent the Complainant from reflecting its marks in a corresponding domain name, a pattern of "cybersquatting" being established by the fact that the Respondent (through its corporation Tentmaker Corporation) has registered at least 50 domain names, 47 of which do not have active website and at least 17 of which appear to be confusingly similar to known trademarks (e.g., taeguclub.com; clubpusan.com; hanbokmart.com; chogjuclub.com; inchonclub.com; clubcheju.com; clubchongju.com; kwangjuclub.com; 018mail.com; clubchunchon.com; pusanclub.com; 019mail.com; 015mail.com; chejuclub.com; clubtaegu.com; clubinchon.com; clubkwangju.com). In addition, the Respondent has registered kumho.com and dongbu.com, which are confusingly similar to known trademarks. Further, the Respondent has registered over 30 fictitious NIC Handles with fictitious names including, for example, "Christ, Jesus" and "dfsa, fdjsk", as shown in Annex D (NIC Handles having the e-mail "email@example.com" and most have Mr. Park's telephone number 017-539-9193).
c. The Respondent purposefully used false information in registering the Domain Name to conceal the Respondent's identity and make it difficult to locate the Respondent for purposes of lawfully pursuing the Domain Name. This is evidenced by the Respondent's initial registration of the Domain Name, which was under false information as well. The original WHOIS for hyosung.com is attached as Annex F. Initially, the administrative contact was Domain, Nara, Domain Center, 432-342 Samsung, Kangnam, Seoul, Korea. Neither this name nor this address exists.
d. When the Complainant asked the Respondent why he registered the Domain Name, the Respondent had no answer. (See, Annex E, page 16.)
The Respondent failed to file a Response to the Complaint.
6. DISCUSSION AND FINDINGS
Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements are present:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Since the Respondent has failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:
(1) The dominant part of the Domain Name hyosung.com is identical to the Complainant's company name and trademark which is registered for goods and services in various classes in Korea, Germany, the United Kingdom and Hong Kong. In addition, two applications for registration of the Complainant's trademark are pending in the United States. The Complainant has been using its company name and trademark in the marketing of its products in Korea and various other countries;
(2) The Respondent adopted the Domain Name hyosung.com for no legitimate reason but for the purpose of selling it to another person for unjustifiable profit;
(3) If the Respondent is allowed to use the Domain Name, the consuming public and traders in Korea and various other countries will be misled as to believe that the Respondent has some business relationship or connection with the Complainant, and, moreover, the distinctive power of the Complainant's well-known trademark "HYOSUNG" will be diluted.
Based on the above findings, the Panel hereby decides that the registration of the Domain Name hyosung.com shall be transferred to the Complainant, Hyosung Corporation.
Date: June 2, 2000