WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cho Yong Pil v. Kee Dooseok
Case No. D2000-0754
1. The Parties
The Complainant is Cho Yong Pil of YPC International, 1155 15th Street, N.W., Suite 911, Washington, DC 20005, USA.
The Respondent is Kee Dooseok of 50-1, Samgakdong, Jungku, Seoul 90210-1234, Republic of Korea.
2. The Domain Names and Registrar
The domain names at issue are <CHOYONGPILL.COM>, <YPCPRODUCTIONS.COM> and <PILRECORDS.COM>. The domain names are registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 8, 2000. The signed original Complaint was received by WIPO Center on July 10, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on July 14, 2000. An amendment to the Complaint was submitted electronically to WIPO Center on July 14, 2000.
On July 14, 2000, WIPO Center transmitted via e-mail a Request for Registrar Verification to NSI.
By email dated July 18, 2000, NSI advised WIPO Center as follows:
(i) NSI had not received a copy of the Complaint from the Complainant.
(ii) NSI is the Registrar of the domain name registrations <CHOYONGPILL.COM>, <YPCPRODUCTIONS.COM> and <PILRECORDS.COM>.
(iii) The Respondent, Dooseok, Kee, is the current registrant of said domain names. The contact details including the administrative contact, the technical contact, the zone contact and the billing contact are as follows:
Name: Dooseok, Kee
Postal Address: 50-1 Samgakdong, Jungku
Republic of Korea
Phone: (822) 725-8848
Fax: (822) 725-8849
(iv) NSIís 5.0 Service Agreement is in effect.
(v) The domain name registrations <CHOYONGPILL.COM>, <YPCPRODUCTIONS.COM> and <PILRECORDS.COM> are "Active."
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on July 20, 2000, sent by courier, facsimile and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by August 8, 2000).
The Respondent sent to WIPO Center a response dated July 26, 2000, and an amended response dated August 5, 2000.
The Complainant elected to have its Complaint resolved by a single-member Panel, and it has duly paid the amount required of it to WIPO Center.
On August 14, 2000, WIPO Center notified the appointment of the Panel, to the Complainant and the Respondent.
4. Factual Background
The Complainant, "Cho Yong Pil," is a Korean pop music artist who performs, records and sells records, CDs, cassettes and related music products. PIL RECORDS is the name of the Complainant's record label and YPC PRODUCTIONS, INC. is the name of his international marketing and distribution company. There are no trademark or service mark registrations for "CHO YONG PIL," "PIL RECORDS' or "YPC PRODUCTIONS, INC."
The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the names "Cho Yong Pil," "Pil Records" and "YPC Productions."
The Complainant has failed to locate any active website under the domain name <CHOYONGPILL.COM>, <YPCPRODUCTIONS.COM> or <PILRECORDS.COM>.
On March 28, 2000, Complainantís legal counsel sent a letter to Respondent requesting the voluntary transfer of the domain names prior to the filing of this Complaint. There was no reply from the Respondent.
5. Parties Contentions
The Complainant asserted that the name Cho Yong Pil (or Cho Yong-Pil) has attained the status of a common law mark of the Complainant because the Complainant is a famous pop music artist both internationally and within Korea, and the name has been used for a long time in association with his music products and performances. Further, the Complainant asserted that the names "PIL RECORDS" and "YPC PRODUCTIONS" also function as common law trademarks of the Complainant because the Complainant's music is released under his private record label, PIL RECORDS, and his international marketing and distribution company, YPC PRODUCTIONS, INC.
The Complainant asserted that the Respondent is not operating any active website under the domain names.
The Complainant asserted that the domain names at issue were registered by the Respondent in bad faith in view of the Complainantís fame.
The Respondent asserted that the Complainant has no rights to exclusively possess the name "Cho Yong Pill" because "Cho Yong Pill" is quite a common name in Korea, and that the Complainant has used "Cho Yong Pil" rather than "Cho Yong Pill."
The Respondent asserted that the names "YPC PRODUCTIONS, INC" and "PIL RECORDS" are not famous in Korea or in other Asian countries.
6. Discussion and Findings
The Complainant, under Paragraph 4(a) of the ICANN Policy, is required to show:
(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;
(ii) That the Respondent has no legitimate interests with respect to the domain name; and
(iii) That the domain name has been registered and used in bad faith.
In view of the materials attached to the Complaint, the Panel determines that the name "CHO YONG PIL" has attained the status of a common law trademark of the Complainant. The Respondent did not dispute this point.
The domain name <CHOYONGPILL.COM> is slightly different from "CHO YONG PIL." The Respondent argued that although "Pil" and "Pill" are similarly pronounced, the two names should not be considered as being the same name because different English spellings of a personís name would each carry their own meaning. However, the Korean transliteration of "Cho Yong Pill" is exactly the same as that of "Cho Yong Pil," and many Koreans use either or both of these English transliterations. Thus, the Panel determines that the domain name <CHOYONGPILL.COM> is confusingly similar to the Complainant's mark, Cho Yong Pil.
With respect to the names "YPC PRODUCTIONS, INC" and "PIL RECORDS," the Complainant should establish the status of common law trademark or service mark of the Complainant with respect to the two names, separately from the name "Cho Yong Pil." The Complainant only submitted a few materials showing the use of the two names. However, the materials do not show how long or how much the names have been used. Thus, the Panel cannot conclude from the materials submitted by the Complainant that the two names have attained the status of common law marks.
The Panel determines that the Respondent has no right or legitimate interest with respect to the domain names for the following reasons:
(a) The Respondent has failed to submit any evidence that it has any right or legitimate interest with respect to the domain names at issue; and
(b) According to the Complainantís search, the Respondent is not operating any active website under said domain names.
The Panel determines that the Respondent has registered the domain name <CHOYONGPILL.COM> in bad faith because the Complaintís name, Cho Yong Pil, is famous, especially in Korea where the Respondent is located, and that the Respondent had registered the domain name at issue together with name of other famous people.
The domain name must not only be registered in bad faith, but must also be used in bad faith. It appears that the domain name is not being used in relation to an active website. The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 and SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, Case No. D2000-0131. With regard to the requirements of Paragraph 4(a)(iii), the Panel is entitled to and does draw an influence adverse to the Respondent from its failure to respond to the Complaint. Therefore, the Panel determines that the domain name is used in bad faith.
The Panel hereby determines that the registration of the domain name <CHOYONGPILL.COM> be transferred to the Complainant, and that the Complainant's request to transfer the domain names <YPCPRODUCTIONS.COM> and <PILRECORDS.COM> be denied.
Date: August 28, 2000