WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Countess Mara, Inc. v. Choi Kwangho

Case No. D2001-0089

 

1. The Parties

Complainant is Countess Mara, Inc., 80 West 40th Street, New York, NY 10018,

United States of America.

Respondent is Choi Kwangho, 572-14 Dobongldong, Dobonggu Seoul 132-011, Republic of Korea

 

2. The Domain Name and Registrar

The domain name at issue is "countessmara.com" [hereinafter referred to as the Domain Name].

The registrar of the domain name is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170 (U.S.A.) [hereinafter referred to as the Registrar].

 

3. Procedural History

On January 17th, 2001, Complainant filed a complaint with the WIPO Arbitration and Mediation Center [hereinafter referred to as the Center]. The Complaint was received by email on January 18th, 2001, and in hardcopy on January 22nd, 2001.

On January 23th, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant.

On January 24th, 2001, the Center informed the Registrar that a Complaint had been submitted to the Center regarding the Domain Name, and requested for Registrar Verification.

On January 25th, 2001, the Registrar provided the Arbitration Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:

- a copy of the Complaint was sent to it by the Complainant;

- it is the current registrar of the Domain Name registration;

- the Respondent is the current registrant of the Domain Name registration;

- the Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Policy] applies to the Domain Name.

The Center proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on January 25th, 2001.

The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

On January 25th, 2001, the Center informed the Respondent of the commencement of the proceedings as of January 25th, 2001, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on February 13th, 2001.

In a letter dated February 14th, 2001, the Center informed the Respondent that he was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.

On February 21st, 2001, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.

The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to March 7th, 2001, in the English language.

 

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint.

Complainant has rights to the mark "Countess Mara" at least since 1948 and those rights subsist in the United States and many other countries, including Korea, as shown by Exhibits C and E of the Complaint.

Complainant has granted to Clifford Co., Ltd an exclusive right to use of certain Complainant's trademarks, including "Countess Mara", within the Republic of Korea, at least since January 1st, 1999, as shown by Exhibit F of the Complaint.

As of December 28th 2000, there was no operating website corresponding to the domain name, as shown by Exhibit G of the Complaint.

 

5. Partiesí Contentions

A. Complainant

Complainant alleges that the domain name is identical or confusingly similar to numerous American and foreign trademarks and a service mark in which Complainant has long-standing rights.

To further elaborate on this contention, Complainant alleges that it has rights to the mark "Countess Mara" at least since 1948, and that those rights subsist in the United States and many other countries, including the Republic of Korea, the country in which Respondent resides.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name.

To support this contention, Complainant alleges that Respondent has no business interests related to the domain name and that there is no operating website corresponding to this domain name.

Complainant also alleges that it has licensed the rights to the mark COUNTESS MARA since at least as early as 1994, that Respondentís registration of the domain name interferes with Complainantís rights to fully exploit its mark and control the manner in which it is used and that consequently Complainant is harmed by Respondentís registration of the domain name.

Complainant alleges that the domain name has been registered and is being used in bad faith.

Complainant alleges that it received no response to a letter that was sent to Respondent via Federal Express, informing the Respondent of Complainantís rights in the trademark "Countess Mara".

Complainant alleges that the Respondentís registration of the domain name is part of a pattern of registering numerous other domain names based on trademark and service mark rights identical or confusingly similar to them, and that such conduct constitutes bad faith as determined in analogous cases. Complainant alleges that the Respondent registered at least 38 domain names. Among those domain names registered by Respondent in the current dispute, Complainant cites "ameritradekorea.com" and "windows2006.com". Complainant adds that these are but two of many examples of domain names registered by Respondent that are identical or confusingly similar to trademarks and service marks owned by others.

Complainant alleges that as of the date of this Complaint, there is no operating website corresponding to any of the 38 domain names Respondent has registered, and that such fact constitutes evidence that Respondent has no legitimate interest in these names other than to acquire them for potential sale to their rightful owners.

Complainant alleges that Respondent has registered the name at issue in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that such behavior constitutes a use of the domain name in bad faith, according to s.4(b)(2) of the ICANN Policy.

Complainant argues that previous Panel decisions under the ICANN Policy have found that ownership of numerous domain names which are the names or marks of well-known business entities suggests an intent to profit from the activities of others, citing the following decisions:

● J.P. Morgan v. Resource Marketing, ICANN Case No. D2000-0035;

● Mondich and American Vintage Wine Biscuits, Inc., ICANN Case No. D2000-0004.

● Stella DíOro Biscuit Co., Inc v. The Patron Group, Inc., ICANN Case No. D2000-0012, paragraph. 5(b)(1) at 6;

● Nabisco Brands Co. v. The Patron Group, Inc., ICANN Case No. D2000-0032, paragraph. 5(b)(1) at 6;

● Parfums Christian Dior v. 1 Network, Inc., ICANN Case No. D2000-0022, paragraph 6(c) at 5-6.

Complainant concludes that Respondentís behavior constitutes bad faith and calls for the transfer of the Domain Name to Complainant.

B. Respondent

As previously stated, Respondent has not filed a response to the current proceedings, and is in default to do so. Pursuant to s.5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based upon the complaint.

 

6. Discussion and Findings

Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the domain name(s) transferred. It is incumbent on the Complainant to show:

i) that the domain name is identical or confusingly similar to a trademark in which it holds rights;

ii) that the Respondent has no legitimate rights or interests in the domain name;

iii) that the domain name was registered and used in bad faith.

These three elements are considered below.

A. Identity or Confusing Similarity between the Domain Name and Complainant's trademark

The Panel has already found that Complainant showed that it had rights in the trademark "Countess Mara", as evidenced by Exhibits C and E of the Complaint.

Given that the domain name entirely includes Complainant's trademark, and that the only difference between the domain name and Complainant's trademark is the absence of a space character between the words COUNTESS and MARA, the Panel concludes that the domain name is confusingly similar to Complainant's trademark.

Therefore, the Panel finds that Complainant has shown that the domain name is confusingly similar to a trademark in which it holds rights.

B. Right or Legitimate Interest in the Domain Name by Respondent

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that Respondent has commonly been known by the domain names; and (iii) legitimate non-commercial or fair use of the domain names.

In that regard, the Panel is of the opinion that the Respondent has no legitimate right or interest under paragraph 4(c)(i), i.e. that Respondent has not shown, before any notice to him of the dispute, the use, or preparations to use, the domain name in connection with a bona fide offering of goods or services. This is evidenced by the fact that the domain name does not lead to an operational website, as shown by Exhibit G of the Complaint.

Given Respondent's failure to respond to the Complaint, no evidence was provided by him to dispute the Complainantís contention that Respondent possesses no rights to the domain name. As a result, there is no evidence to support a finding that Respondent is commonly known by the domain name nor is there any evidence that Respondent has a legitimate non-commercial or fair use of the domain name.

Additionally, the Panel finds that Respondent is not a licensee of Complainant, nor has he received any permission or consent to use Complainant's trademark. This finding is supported by the existence an exclusive license agreement between Complainant and a third party and that has been submitted by Complainant as Exhibit F.

Furthermore, the Panel finds it appropriate to draw an adverse inference from the Respondentís failure to reply to the Complaint, as an indication of a lack of right or legitimate interest in the domain name, specially considering that Respondent was forewarned of Complainant's intent to file a Complaint at least since August 1999, as shown by the letter submitted by Complainant along with proof of delivery as Exhibit G.

For these reasons, the Panel concludes that Respondent has no rights or legitimate interests in respect of the domain name.

C. Bad faith in Registration and Use of the Domain Name by the Respondent

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain names in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(ii) of the ICANN Policy holds that evidence of bad faith is provided when it can be demonstrated that Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.

The Complainant has provided unchallenged evidence that it has registered its trademark in many countries, including Korea, and that those registrations are still valid. Taking into account the highly distinctive nature of Complainant's trademark, as well as the its numerous registrations in several countries, the Panel is of the opinion that it is reasonable to infer that, at the time the domain name was registered, Respondent was aware of the existence of Complainant's trademark.

In addition, Complainant provided evidence showing that Respondent registered at least 37 unrelated domain names, some of which comprising famous trademarks of third parties, as shown by annex I, J, and K. Complainant also alleged that none of those domain names were leading to active websites.

Even if Complainant has not provided evidence to establish that Respondent has been involved in prior disputes with respect to other domain names he might have registered in the past, the Panel finds Complainant's allegations and supporting evidence, in particular Exhibits I, J and K sufficient to conclude that Respondent has engaged in a pattern of registering domain names in order to prevent the owners of the trademark from reflecting the mark in a corresponding domain name.

Consequently, the Panel believes that Complainant successfully showed that Respondent registered and is using the domain name in bad faith.

 

7. Decision

For the foregoing reasons, the Panel concludes that:

- the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the domain name;

- the domain name has been registered and is being used by the Respondent in bad faith.

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name "countessmara.com" be transferred to the Complainant.

 


 

Hugues G. Richard
Sole Panelist

Dated: March 7th, 2001