WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho
Case No. D2000-1513
1. The Parties
The Complainants are Mucos Emulsions, GmbH ("Mucos"), a German corporation with its principal place of business in Germany, and Marlyn Nutraceuticals, Inc. ("Marlyn"), an Arizona corporation with its principal place of business in Scottsdale, Arizona, U.S.A. The Complainants’ contact details are 14851 North Scottsdale Road, Scottsdale, Arizona, USA 95254.
The Respondents are Esex.org and Kim Taeho. The Whois database lists the contact details for the Respondents as 101-1213doklimjeilpark, 284wolsan3dong, namku, "www.esex.org", kwangju, chonnam 503-233, Republic of Korea.
2. The Domain Name and Registrar
The contested domain name is "wobenzym.com".
The registrar is Tucows, Inc.
3. Procedural History
The electronic version of the Complaint was filed on November 3, 2000. The hardcopy of the Complaint was received on November 6, 2000. Payment in the required amount was received on November 6, 2000.
The Complainants were notified of a deficiency in the Complaint on December 19, 2000. The original Complaint was deficient in that it named "enamecorp.com" (the domain name registrant at that time) and Kim Taeho (the Administrative Contact for the domain name registration at that time) as Respondents. The contested domain name was transferred from "Enamecorp.com" to business Co., Ltd before the Registrar placed the domain name registration ‘on hold’ pending the outcome of this proceeding, but after Kim Taeho was emailed a copy of the original Complaint by the Complainants. Prior to the filing of an amended Complaint by the Complainants, the domain name was transferred from business Co., Ltd to esex.org, and Kim Taeho was re-nominated as the Administrative Contact for the domain name registration. The electronic version of the amended Complaint was then filed by the Complainants on February 7, 2001. The hardcopy of the amended Complaint was received on February 14, 2001.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.
On February 16, 2001, the Center formally notified the Respondents by post/courier, fax and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainants, the Registrar and ICANN.
The Respondents failed to file a response. On March 12, 2001, the Center sent a Notification of Respondent Default by email to the Respondents and the Complainants.
On March 17, 2001, the Center contacted John Swinson and requested that he act as panelist in this case.
Mr. Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On March 23, 2001, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on April 6, 2001.
The language of the proceeding is English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondents; the administrative panel was properly constituted.
4. Factual Background
Mucos is the owner of the following registered trademarks:
· German Registration No. 950733 for the trademark WOBENZYM;
· European Community Registration No. 506147 for the trademark WOBENZYM; and
· U.S. Registration No. 1714967 for the trademark WOBENZYM.
As the Respondents failed to file a Response, the following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.
"Since at least as early as 1966, Mucos has been using the WOBENZYM trademark in connection with certain enzymatic products distributed world-wide. In connection with the manufacture and sale of the WOBENZYM product and other related pharmaceutical, nutritional and dietary products, Mucos has invested a substantial amount of resources in the research, development, manufacture, promotion and distribution of its products, which are sold on a worldwide basis. As a result of such investment, Mucos has attained substantial public recognition and good will associated with its products.
Mucos has established its rights to the trademark WOBENZYM through extensive use in commerce and trademark registrations in various countries. The use of the trademark WOBENZYM has been valid and continuous since said date of first use and has not been abandoned.
Mucos has registered the trademark WOBENZYM in Argentina, Mexico, Paraguay and Uruguay.
Since 1988, Mucos has appointed Marlyn as its exclusive United States distributor and licensee for the WOBENZYM products.
As Mucos’ exclusive United States distributor and licensee, Marlyn has undertaken, with substantial investment, extensive promotion, marketing and distribution and sale of WOBENZYM products in the United States through various channels of trade including, tradeshows, sporting events, wholesale and retail outlets, Internet, mail order and through health care professionals. As a result of such investment, WOBENZYM products have attained substantial public recognition and good will and the purchasing public has associated WOBENZYM products with Mucos and its exclusive distributor Marlyn. Mucos’ sale of the WOBENZYM products in 1999 amounted to over thirty-eight million U.S. dollars ($38,000,000). Also in 1999, Marlyn’s distribution and sales of the WOBENZYM products exceeded three million U.S. dollars ($3,000,000).
Accordingly, Mucos and Marlyn have established extensive goodwill and customer recognition of the name WOBENZYM through substantial amounts of time and effort in advertising and promotion.
On or about June 17, 2000, John Wolf, who is an employee for Naturally Vitamins, Inc., a subsidiary of Marlyn, sent an email to Respondent Kim inquiring about acquiring the domain name "wobenzym.com".
On or about June 17, 2000, Mr. Kim replied that he was not sure if he was going to use the domain name at that time, but that other people were interested in it. Thereon, Mr. Kim invited Mr. Wolf to "name the price [that Mr. Wolf] wanna buy first."
On or about June 23, 2000, Mr. Wolf offered $500 for the domain name. Mr. Wolf reiterated that offer on or about July 6, 2000.
On or about July 12, 2000, Respondent Kim replied by demanding $3,000.
On or about July 12, 2000, Mr. Wolf responded that he could only afford $2,000, as such sum had been authorized by Complainant Marlyn, to which Mr. Kim replied that the price of $3,000 was nonnegotiable.
On or about July 13, 2000, after having been authorized by Marlyn to accept Mr. Kim’s offer in order to avoid the expense of litigation, Mr. Wolf accepted Mr. Kim’s demand of $3,000 and stated that he could wire transfer the money as soon as he was assured the domain name was transferred.
On or about July 20, 2000, subsequent to Mr. Wolf’s acceptance of Mr. Kim’s demand of $3,000, Mr. Kim replied by claiming that another party from Los Angeles, California had offered $5,000 and invited Mr. Wolf to make a counter offer. The purported buyer from Los Angeles was fabricated by Mr. Kim as a ploy to further drive up the asking price. As Mr. Kim later admitted, no such buyer actually existed.
On or about July 24, 2000, Kam W. Li, an attorney for Complainants, sent an e-mail to Mr. Kim informing him of, among other things, Complainants’ trademark rights, their use of the trademark WOBENZYM in commerce and of Complainants’ opinion that Respondents were violating several trademark laws, including the Anti-Cyber Squatting Consumer Protection Act in the United States.
Respondent Kim then responded with a purported claim that he was not offering the domain for sale and that Respondents were going to use the "wobenzym.com" domain name non-commercially.
On or about August 9, 2000, to minimize the expenses associated with litigation, Complainants offered to acquire the name from Respondents for $2,000.
On or about August 9, 2000, Mr. Kim expressed that he thought the "wobenzym.com" name was worth over $2,000.
In reply, Mr. Li then requested a price at which Respondents would sell the domain name "wobenzym.com".
On or about August 9, 2000, Mr. Kim responded that he would now sell the domain name at a price of $10,000. Tellingly, Mr. Kim expressly based his increased demand upon the fact of Complainant’s ownership of the WOBENZYM trademark.
On August 15, 2000, Mr. Kim sent an e-mail to Mr. Li stating that he was still waiting for an answer from Complainants about his $10,000 price."
5. Parties’ Contentions
Mucos engages in the research, development, manufacture, promotion and distribution of various pharmaceutical, nutritional and dietary products worldwide. Since at least as early as 1966, Mucos has been using the WOBENZYM trademark in connection with a certain enzymatic products distributed on a worldwide basis. Mucos owns trademark registrations in various countries.
In the United States, Mucos sells the WOBENZYM products through its exclusive distributor and licensee, Marlyn. Pursuant to its licensing arrangement with Mucos, Marlyn has authority to represent Mucos to take legal actions and other proceedings in connection with the rights associated with the WOBENZYM trademark.
From 1997 to May 2000, Marlyn owned the contested domain name, which was registered through Network Solutions, Inc ("NSI"). The registration was part of the services from which Marlyn engaged its Internet Service Provider, Abacus Internet Services ("Abacus"), to provide. Abacus was also engaged to develop an Internet website to be accessible via the contested domain name. In connection with such services, Abacus designated itself as the administrative and technical contact with access to the NSI record which pertains to Marlyn’s registration of the domain name.
Sometime in April 2000, Abacus, without authorization from Mucos or Marlyn, changed the address of Marlyn in the record of NSI to a post office box unknown to Marlyn. As a result, Marlyn did not receive the expiration notice or any other communication from NSI on the status of the registration of the contested domain name prior to its expiration. Thus, registration of the contested domain name to Marlyn expired and was released to the public.
Immediately following the expiration of Marlyn’s registration of the contested domain name, Respondent Mr. Kim caused it to be registered to "enamecorp.com" ("enamecorp.com" was one of the Respondents in the original Complaint in this matter). Prior to being notified of the instant dispute, the Respondents did not use, or prepare to use, the contested domain name or a name corresponding to that domain name in connection with any bona fide offering of goods or services. Rather, the circumstances indicate that the Respondents obtained the contested domain name for the primary purpose of selling or transferring the domain name registration for the valuable consideration in excess of the Respondents’ out-of-pocket costs.
The Complainants allege that a further example of Respondent Mr. Kim’s bad faith is that Respondent Mr. Kim caused the contested domain name to be transferred to another party immediately after receiving a copy of the Complaint. The transfer occurred prior to the start of Tucows’ business day in order to avoid Tucows’ practice of placing disputed domain names ‘on hold’ to prevent their transfer. The Complainants did not learn of the transfer until notified by WIPO. (The Complainants thereafter amended their Complaint and substituted esex.org as a Respondent, replacing "enamecorp.com")
The Respondents failed to file a Response within the time limit set by the WIPO Center.
In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint alone.
6. Discussion and Findings
In order to qualify for a remedy, the Complainants must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainants.
The panel notes that there are two Complainants in this proceeding. In Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638, the panel concluded that a complaint may be submitted by multiple related parties where there are common interests in a single domain name. In that case, the joint complainants failed to present their claim adequately as they obscured the trademark ownership interests among each of the parties, requested an ambiguous remedy by not stating to which of the Complainants the contested domain name should be transferred to, and avoided the identification of each party's stake in the remedy. That is not the situation here. The panel notes that a number of cases under the ICANN Policy have been decided in favour of the Complainant despite the fact that more than one Complainant instituted the proceeding. (See Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-0891; NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128.)
Here, the Complainants have requested that the contested domain name be transferred to Complainant Marlyn. Accordingly, the panel will treat Marlyn as the Complainant in this dispute.
6.1 Identical or confusingly similar to a trademark or service mark
The panel finds that Mucos is the owner of the trademark WOBENZYM.
The panel finds that Marlyn is Mucos’ exclusive distributor and licensee of the WOBENZYM products in the United States. As such, Marlyn has an interest in protecting the WOBENZYM trademark.
The panel finds that the contested domain name is identical to the trademark owned by Mucos. The only difference between the domain name and the trademark is the addition of the suffix ".com". See Microsoft Corporation v. Amit Mehrotra, WIPO D2000-0053.
Thus, the domain name is identical to a trademark in which Complainant Marlyn has rights.
This element is satisfied.
The Complainants contend that the Respondents have no legitimate interest in the use of the contested domain name as:
(a) the Respondents have never used the names WOBENZYM or "wobenzym.com" in connection with offering genuine goods or services in commerce;
(b) the Complainants are informed and believe that Respondents have no intention of using WOBENZYM for any legitimate use; and
(c) the Respondents have never been commonly known by the WOBENZYM trademark or the "wobenzym.com" domain name, given the short amount of time that they have possessed it and the large number of other domain names that they are apparently offering for sale.
The panel agrees with the Complainants’ assertions above.
The Respondents had the opportunity to respond and present evidence, for example, that it is a legitimate business that registered the domain name without knowledge of the Complainants’ rights. The Respondents chose not to do so. The Complainants are not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).
Paragraph 14 of the ICANN Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If 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 therefrom as it considers appropriate."
The word WOBENZYM does not form any part of the Respondents’ names and the Respondents have not provided the panel with any evidence that it is using or making preparations to use the contested domain name in connection with a bona fide offering of goods or services.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondents’ legitimate rights in the contested domain name. The Respondents do not meet any of the three elements set out in paragraph 4(c).
Accordingly, the panel finds that the Respondents have no rights or legitimate interests in respect of the contested domain name.
6.3 Bad Faith
The Complainants contend that the Respondents registered and are using the domain name in bad faith as the Respondents:
(a) are attempting to take advantage of Complainant Marlyn’s inadvertent loss of the registration of the contested domain name;
(b) have attempted to sell the contested domain name to the Complainants for an exorbitant amount of money, which is well above the nominal fee they paid to acquire the domain name. Under the guise of fabricated third party interest in the domain name, the Respondents have repeatedly raised their money demands as the sole consideration for the transfer of the contested domain name to the Complainants; and
(c) caused the contested domain name to be transferred to another party immediately after receiving a copy of the Complaint. The transfer occurred prior to the start of Tucows’ business day in order to avoid Tucows’ practice of placing disputed domain names ‘on hold’ to prevent their transfer.
There are a number of previous decisions indicating that a Complainant’s loss of its domain name registration due to unforeseen circumstances does not preclude the Complainant from re-claiming the domain name from a third party who registered the domain name shortly after the Complainant’s domain name registration expired. (See Hongdou Group v. Gong Yen Yuan, eResolution Case No. AF-0300; InTest Corporation v. Servicepoint, NAF File No. FA0007000095291; Great Southern Wood Preserving, Inc. v. TFA Associates, NAF File No. FA0007000095169; The Gillette Company v. S.A. Inc, NAF File No. FA0010000095892; Flor-Jon Films, Inc. v. Ron Larson, NAF File No. FA0006000094974.) The panelist in InTest Corporation v. Servicepoint, NAF File No. FA0007000095291, found that "where the domain name has been previously used by the complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary".
Respondent Kim Taeho’s violation of Paragraph 8 of the ICANN Policy by transferring the contested domain name after receiving notice of the commencement of this proceeding is additional evidence of the Respondents’ bad faith registration and use of the contested domain name. (See Hongdou Group v. Gong Yen Yuan, eResolution Case No. AF-0300.)
The Complaint includes detailed evidence and correspondence between the Complainant’s representatives and Respondent Kim Taeho regarding the sale of the contested domain name. Although this evidence is not conclusive on its own to establish that the Respondent registered and is using the contested domain name in bad faith, the panel finds that this evidence coupled with the evidence that Respondent Kim Taeho caused the domain name to be registered shortly after Complainant Marlyn’s registration expired and the transfer of the domain name in violation of Paragraph 8 of the ICANN Policy is adequate evidence of registration and use of the domain name in bad faith.
The panel finds that the Complainants have established this element.
The panel notes that, when preparing this decision, that ownership of the contested domain name appeared to have changed on about April 4, 2001. The new owner is listed as follows:
38 DYNHAM RD.
LONDON, LONDON NW62NT
Domain Name: "wobenzym.com"
steeve, k "firstname.lastname@example.org"
38 DYNHAM RD.
LONDON, LONDON NW62NT
(0) 20 7961 3901
steeve, k email@example.com
38 DYNHAM RD.
LONDON, LONDON NW62NT
(0) 20 7961 3901
steeve, k firstname.lastname@example.org
38 DYNHAM RD.
LONDON, LONDON NW62NT
(0) 20 7961 3901
Record last updated on 04-Apr-2001.
Record expires on 16-May-2001.
Record Created on 16-May-2000."
The email address of the "new" owner’s administrative contact is the same as the penultimate prior owner. The contested domain name resolved to a website selling vitamins. As at April 12, 2001, the contested domain name did not resolve to a website.
There appears to have been a breach of Rule 8(a) of the Uniform Domain Name Dispute Resolution Policy.
Due to these expectional circumstances, this decision was delayed.
In Miles D., Ltd dba Jazz Alley v. Tokaido Shosha, eResolution Case No. AF-0318, this panelist stated:
"One cannot pass good title to a domain name where one does not have good title. Similarly, in certain circumstances, illegitimacy and bad faith of a prior domain name owner may "attach to" the domain name, and pass with the transfer to a subsequent domain name owner. This would be the case, for example, where the transfer was a sham or to a related entity."
The panelist also notes the decision in Hongdou Group v. Gong Yen Yuan, eResolution Case No. AF-0300.) Accordingly, the panelist finds that regardless of who currently owns the domain name (unless that person is one of the Complainants), and in view of the fact that this dispute was of public record at least after April 1, 2001, that any subsequent owner of the domain name is tainted with Respondent Kim Taeho’s illegitimacy and bad faith.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to Marlyn Nutraceuticals, Inc., regardless of who is listed as the current owner of the domain name.
If the Registrar does not implement this decision strictly in accordance with the timeframe set out in the ICANN Policy, the panelist requests the Center to bring this decision to the attention of ICANN.
Dated: April 12, 2001