WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LG Chemical Ltd. v. ChangHwan, OH
Case No. D2000 Ė 0889
1. The Parties
The Complainant is LG Chemical Ltd. located at 20 Yoido-dong, Yongdungpo-ku, Seoul 150-721, Republic of Korea.
The Respondent is ChangHwan, OH, residing at Hwasin B/D 910, Chongryong-dong, Kumjung-gu, Pusan 609-350, Republic of Korea.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <lgchemical.com>, which domain name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, U. S. A.
3. Procedural History
The Complaint submitted by the Complainant, LG Chemical Ltd., was received by e-mail on July 28, 2000 and in hardcopy on July 31, 2000 by the WIPO Arbitration and Mediation Center (the Center). An acknowledgment of receipt was sent by the Center to the Complainant on July 31, 2000.
Having found that annex 7 of the Complaint (the CD Rom) was submitted only in one copy, on August 1, 2000 the Center requested the Complainant to submit three additional copies of annex 7 of the Complaint, which were all received on August 7, 2000.
On August 2, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy (the Supplemental Rules), Paragraph 4(b); (2) confirm that the domain name at issue is registered with Network Solutions, Inc.; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy (the Policy) applies to the domain name; (6) indicate the current status of the domain name.
On August 11, 2000, NSI confirmed by reply e-mail that the domain name <lgchemical.com> is registered with NSI and that the Respondent, ChangHwan, OH, was the current registrant of the name. The registrar also forwarded the requested Whois details and, also, confirmed the applicability of the Policy to the domain name at issue.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and Paragraph 5 of the Supplemental Rules, the Center has verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on August 14, 2000. The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.
No formal deficiencies having been recorded, on August 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of September 2, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail, facsimile, and post/courier in accordance with the contact details indicated in the Complaint and specified in NSIís Whois confirmation.
A timely response was submitted to and received by WIPO on September 2, 2000.
On September 4, 2000, the Center invited Sang Jo JONG to serve as a sole panelist in Case No. D2000-0889, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Sang Jo JONGís Statement of Acceptance and Declaration of Impartiality and Independence, on September 11, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Sang Jo JONG was formally appointed as the Sole Panelist. The Projected Decision Date was September 24, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
The trademarks upon which the Complaint is based are "LG CHEMICAL" and "LG CHEMICAL & Device" registered and being in actual use in the Complainantís name on a worldwide basis. Annex 4 to the Complaint comprises details of the Complainantís trademarks registrations around the world. Suffice to say the trademarks "LG CHEMICAL" and "LG CHEMICAL & Device" are registered in most commercially and industrially significant jurisdictions, and in most cases, the trademarks are established over a considerable period of time.
The contested domain name <lgchemical.com> was registered on December 7, 1998. It is clear from the Centerís printout of the disputed webpage that the Respondent is not operating an active website under the domain name at issue. Although the Respondent confirms non-existence of an active website under the domain name at issue, he argues that the website is under construction.
It is also uncontested between the parties that the disputed domain name lgchemical.com was offered for transfer. The Complainant suggested that it would pay maximum 2 million won as consideration for such transfer. On May 29, however, Respondent refused to accept the Complainantís offer of consideration and asked for substantially greater amount of consideration, citing the example that LG Electronics Co., Ltd. paid US$ 100,000.00 for assignment of the domain name <lge.com> from a U.S. company.
5. Partiesí Contentions
Identicalness or confusing similarity as between the domain name and trade marks
The Complainant contends that the domain name <lgchemical.com> is exactly identical with the Complainant, LG Chemical Ltd.ís trademark and service mark "LG CHEMICAL" and the word portion of the "LG Chemical & Device" mark, both of which are registered and used extensively in Korea as well as worldwide. And, also, the domain name at issue is exactly identical with the company name of the Complainant in English, which has been widely used and recognized worldwide.
Respondentís rights or legitimate interests in the domain name ?
Respondent is not operating an active website under the domain name <lgchemical.com>. In addition, the Complainant points to the fact that neither Respondent nor EC Web Co., Ltd. of which Respondent is a representative is engaged in any business related with chemical industry. The contents of www.ecweb.co.kr, the active URL of EC Web Co., Ltd rather illustrates that the company is a tour agency conducting business through the Internet, which is not even remotely related with chemical industry. Thus, the Complainant contends that Respondent has no rights or legitimate interests in the contested domain name <lgchemical.com> which would simply create a likelihood of confusion with the Complainantís mark as to source, sponsorship, affiliation, or endorsement and prevent consumers who search the Internet for the Complainantís website from locating the Complainant.
Bad faith on the part of the Respondent
According to the Complainant's Complaint, its trade name and trademarks "LG CHEMICAL" is so famous worldwide and particularly in Korea that Respondent was undoubtedly aware of the Complainantís fame at the time it registered the domain name and registered the domain name primarily to pass off on the goodwill associated with the Complainant name and the marks. The Complainant contends that the Respondent did not only register the domain name in bad faith but also used it in bad faith. The Complainant points especially to the Respondent's suggestion that Respondent was willing to transfer the domain name at issue for 20 million won which roughly amounts to 18,000 US dollars.
First, in relation to the identicalness or confusing similarity as between the contested domain name and the Complainant's trademarks, Respondent contends his domain name <lgchemical.com> is distinguishable from the Complainant's trademarks in the sense that 'lg' in his domain name is the acronym of Ďlonely gateí for a search engine of Respondent's and 'lg' in the Complainant's trademarks derives from its previous trade name ĎLucky Goldstar.í
Secondly, as to the question of whether Respondent has any rights or legitimate interests in the domain name, he points to his intention to use the domain name for a search engine service named "lonely gate" in the field of chemical industries. While Respondent confirms that there is no website currently operating under the domain name, he contends that the website is under construction.
Finally, with regard to bad faith, Respondent reiterates his arguable rights or legitimate interests in the domain name. Especially, he contends registration of the domain name registration itself does not amount to trademark infringement or unfair competition as prescribed in the relevant Korean laws.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
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 to or legitimate interests in the domain name at issue; and,
3) the domain name at issue has been registered and used in bad faith.
Identicalness or confusing similarity as between the domain name and trademarks
Having ignored the generic top-level domain (gTLD) ".com" of the domain name <lgchemical.com>, the Panel finds that the domain name at issue is identical with the Complainant's trade name LG Chemical Ltd. and, also, with the Complainantís trademark and service mark "LG CHEMICAL" and the word portion of the "LG Chemical & Device" mark. As to the insignificance of the generic top-level domain, see VAT Holding AG v Vat.com, Case No. D2000-0607. Nor does it matter to the identicalness between the domain name and trademarks whether "lg" in "lgchemical" is an acronym of "lonely gate," the name of Respondentís proposed search engine, or derived from "Lucky Goldstar," the previous trade name of the Complainant. Respondentís intention to register the domain name at issue as an acronym for his proposed productís name may well be discussed again, however, in dealing with the issue of bad faith.
Respondentís rights or legitimate interests in the domain name ?
It is uncontested that Respondent is not operating an active website under the domain name <lgchemical.com>. Although Respondent contends that the website is under construction, he offers no explanation as to why he made no use of the domain name for the past 19 months since its registration in December 7, 1998. It is clear to the Panel that Respondent failed to elucidate any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services in accordance with Paragraph 4(c)(i) of the Policy. Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in respect of the domain name at issue.
While the Respondent attempts to defend himself by arguing that the registration of the domain name at issue does not amount to trademark infringement or unfair competition as prescribed in the relevant Korean laws, the same is not true when the Respondent ever tries and operates an active website under the domain name identical to the Complainant's trademarks in offering goods or services identical or similar to the Complainant's goods or services. Furthermore, his defense may not be effective under the counterpart laws of the U.S.A. where the Registrar of the domain name is situated, in the Panel's opinion, nor is it of any help to rebut lack of any right or legitimate interest in the domain name on the part of the Respondent. This administrative proceeding and its consequent decision are not allowed to make a substantive decision on the legal issue of trademark infringement or unfair competition but only designed to solve a dispute concerning domain name registration in accordance with the Policy which is incorporated by reference into the Registration Agreement between the Respondent and the Registrar of the domain name at issue. See Avnet, Inc. v. Aviation Network, Inc., Case No. D2000-0046.
Bad faith on the part of the Respondent
Copy of the letter sent by Respondent (Annex 16 to the Complaint) clearly shows that there was an offer by the Respondent to sell his domain name for an amount in excess of out-of-pocket expenses directly related to the domain name, being a circumstance of evidence of bad faith registration and use pursuant to paragraph 4(b)(i) of the Policy. See The British Broadcasting Corporation v. Jaime Renteria, Case No. D2000-0050 and CBS Broadcasting, Inc. v. Gaddoor Saidi, Case No. D2000-0243.
Respondent attempts to demonstrate his good faith by arguing that "lg" in the domain name "lgchemical.com" is an acronym for the name of his proposed search engine "lonely gate." The Panel rather draws an inference adverse to the Respondent, however, from the facts that his proposed business has never been realized nor has there been any demonstrable preparation to use the domain name for the past 19 months. In addition, registration of a trademark or notice of its registration puts others on constructive notice of the registered trademark both under Section 68 of the Korean Trademarks Act and Section 22 of Lanham Act (15 U.S.C. ß 1072). Constructive notice provision of those statutes is certainly interpreted to eliminate defenses of good faith on the part of the alleged infringers. Bad faith evidenced by Respondent's offer to sell his domain name may not be rebutted by his intention to register the domain name as an acronym for his proposed productís name unless it is clearly shown that he has rights to or legitimate interests in the domain name. See Avnet, Inc. v. Aviation Network, Inc., Case No. D2000-0046. Accordingly, the Panel finds that the domain name was registered and is being used by Respondent in bad faith.
In light of the foregoing, the Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy in relation to the domain name <lgchemical.com>.
Pursuant to paragraph 4 of the Policy and paragraph 15 of the Rules, the Panel requires that the domain name <lgchemical.com> be transferred to the Complainant, LG Chemical Ltd.
Sang Jo JONG
Dated: September 25, 2000