WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Repsol YPF, S.A. v. COMn.com

Case No. D2001-0741

 

1. The Parties

The Complainant is Repsol YPF, S.A., a Spanish corporation with its principal place of business at Madrid, Spain. The Complainant is represented by Ms. Elena Fernandez Gonzalez of Clarke, Modet & Co, Madrid, Spain.

The Respondent is identified as COMn.com, with an address in Taegu, South Korea. The Respondent is represented by Mr. Stephen H Sturgeon of Sturgeon Associates, Attorneys, of Vienna, Virginia, U.S.A. The owner of COMn.com is stated in the Response to be Mr. Hanjin Ko.

 

2. The Domain Name and Registrar

The domain name at issue is <repsolypf.com>. The domain name is registered with Online NIC of Fremont, California, U.S.A. ("the Registrar").

 

3. Procedural History

The Complaint submitted by Repsol YPF, S.A. was received on June 4, 2001, (electronic version) and June 6, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").

On June 11, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with it.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

Indicate the current status of the domain name.

By email dated June 28, 2001, the Registrar advised WIPO Center as follows:

It had received a copy of the Complaint from the Complainant.

It is the Registrar of the domain name registration <repsolypf.com>.

The Respondent is shown as the "current registrant" of the domain name.

The Respondent is also the administrative, technical and billing contact.

The UDRP Policy is in effect.

The domain name registration <repsolypf.com> is currently on "hold" status.

The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

The advice from the Registrar that the domain name in question is on "hold" status indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on June 12, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Complainant elected to have its Complaint resolved by a sole Panelist; it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on July 18, 2001. Some of the annexures to the Response were in the Korean language and no translations were offered.

WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Panelist in the case.

The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On July 27, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by August 10, 2001. Because of the developments subsequent to the transmission of the record to the Panel, the decision date is now August 24, 2001.

On July 27, 2001, the Complainant requested translations of the Korean documents and the right to make reply submissions. The Respondentís attorney filed a memorandum opposing this request. The Respondent should not have submitted documents without translations and expect them to be considered by the Panel. The Panel accordingly instructed WIPO Center to advise Respondent to provide certified translations of Exhibits C and D to the Response if he wished to rely on these documents. The Panel gave the Complainant three working days to reply to any matters raised by these documents but did not give leave to file a general reply.

On July 31, 2001, the Complainant, without seeking leave from the Panel, filed further submissions by way of Reply. The Respondent objected to these submissions being received. The Panel decided to admit them but gave the Respondent three working days within which to file submissions in rebuttal. The main factors which influenced the Panel in admitting the Complainantís reply were:

(a) The desire of the Panel not to have to decide the case in a factual vacuum. The Complainant provided for the first time registration details of the trademark in Korea and evidence of a presence in that country. This information should have been provided in the Complaint.

(b) Complainant was entitled to comment on Respondentís allegation that part of the mark represented the translation into English of the Korean word for "pine needle".

The Respondent has not replied to the Panelís requests for submissions in rebuttal and for translations except for:

(a) an email from counsel mentioning his communication difficulties with a client in Korea;

(b) an email from Respondent saying that the interpreter of the earlier documents was licensed and that WIPO could call her to confirm this. He challenged the Complainantís Korean translations.

The Panel has given the Respondent ample time within which to comply with the Panelís request. In the Panelís view, Respondent has not done so appropriately. Accordingly, the Panel ignores the documents in the Korean language annexed to the Response for which no properly certified translation was provided.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is a large oil, chemical and gas company which conducts exploration for and refining, distribution and marketing of oil, gas, electricity and petroleum products in Spain and in Latin America. It is an amalgam of the Spanish national Oil Company Repsol, S.A. (which began operations in November 1986) and YPF, S.A., a leading Argentinean oil company, which formerly had a monopoly for the sale of oil and gas in Argentina. The merger process began in January 1999 and, by December 31, 2001, Repsol, S.A. owned 99% of YPF.

The Complainantís revenue for 1999, was 26,814 million Euros. The merged company ranks eighth in the world in terms of holding proved oil reserves and in hydrocarbon production. It has 4,535 million barrels of oil equivalent in reserves. It produces 1 million barrels a day and has 7,200 outlets in various countries. Its annual gas sales exceed 21,000 million cubic metres. It conducts activities in Europe, South America, North Africa, Middle East, Indonesia, Malaysia and Vietnam.

Repsol owned Spanish trademark registrations dating back to 1956, for the mark "Repsol". YPF, S.A. owned Argentine-registered marks going back to 1984, for the letters "YPF".

The Complainant has registration or has applied for registration for the mark "Repsol ypf" in many countries including South Korea. Application was made in that country on October 21, 1999. Registration was granted on November 14, 2000. The disputed name appears to have been registered on February 22, 2001.

 

5. Partiesí Contentions

Complainant

The disputed domain name is identical to the Complainantís mark "Repsol ypf". It is confusingly similar to its marks "Repsol" and "ypf".

Respondent has no rights in the name.

The likelihood of confusion is great, given that the Complainant sponsors many sporting events, particularly motor racing and the Spanish Olympic team. It also engages in cultural promotion and funding in Spain and Latin America.

The Respondent has not developed a website.

It is inconceivable that the Respondent was unaware of Complainantís reputation as a global energy company.

At Respondentís website is a reference to "Copyright 2000", an indication that Respondent is aware of intellectual property rights. After entering Respondentís website, after clicking several windows, there is an invitation to ask questions about names registered by Respondent.

Respondent

This is not a clear case of cyber-squatting, which the Policy was designed to cover.

Before notice of the dispute, Respondent had made demonstrable preparations to use the name in connection with a bone fide offering of services. Accordingly, Complainant has failed to prove that the Respondent lacks legitimate rights or interests in the name.

Respondent (and its owner, Mr. Ko) is Korean. Respondent conducts business activities in the country of Korea. In the Korean language, the word "solypf" means "pine needle". In Korea it is common to use an extract of solypf to be added to drinking water to provide a refreshing beverage. In the Korean language, the word "rep" is commonly used as an abbreviation for the word "representative". Therefore, the combination of the word "rep" and the word "solypf" means "representative of pine needle" or "about pine needle". Confirmation of the translation of the word "solypf" is provided in Exhibit A to the Response, which displays a statement from a professional interpretation and translation company named Tradecall. The statement certifies that the word "solypf" is pronounced the same as the Korean word for pine needle. The statement of the translator includes the website and telephone number of the translator for verification purposes. Additional proof that the pronunciation of the word "solypf" means "pine needle" in Korean is provided in Exhibit B to the Response. This Exhibit contains the signed statements of ten Koreans who attest that the pronounced word "solypf" means "pine needle" in Korean. In addition to their signatures, their telephone numbers are provided for verification purposes.

Respondent made demonstrable preparations to prepare a website for the purpose of describing the benefits of the use of pine needle extract in drinking water. The logical name for a website of this nature was "Repsolypf" (about pine needle).

As confirmation and proof that Respondent was developing the website, Respondent attached affidavits signed by the Respondent and five Korean businessmen. These affidavits, all in the same form allege that Mr. Ko, the owner of Respondent, engaged in the following demonstrable preparations:

March of 2001, first week Ė He made an outline of the siteís plan.

March of 2001, fourth week Ė He discussed with his chief of development the siteís detailed plan.

April of 2001, third week Ė He employed a new web designer for the site and made several primary design modifications, and discussed the design with several of his staff members.

May of 2001, third week Ė He decided on the siteís design and discussed the details of the contents and designed a sub-page.

June of 2001, third week Ė He discussed the development of the program and made a plan about public information.

July of 2001, first week Ė He planned to make a public relations effort directed toward several companies and research teams.

July of 2001, second week Ė He planned to initiate an exhibition service after establishing his company.

August of 2001, first week Ė He planned to initiate a formal marketing service to be sold to participating companies through a membership system.

In the case of Marbil Co. Incorporated "DBA" Insol v. Sangjun Choi (WIPO No. D2000-1275), the Respondent was Korean and registered the domain name <insol.com>. The word "insol" in Korean has the meaning of "to lead" or "to guide". The Complainant in the case claimed a trademark in the word "Insol" and requested the Panel decide that the domain name <insol.com> be transferred to Complainant. The Panel decided that the domain name should not be transferred to the Complainant.

Complainant has failed to prove registration of the name in bad faith by reason of the following:

(a) Complainant has no trademark registrations in Korea.

(b) Complainant does not conduct business in Korea.

(c) Sports sponsorships Ė particularly in European motor-racing Ė do not establish a reputation in Korea.

(d) Likewise, sponsorships of the Spanish Olympic team and cultural events in Spanish-speaking countries.

(e) Respondent and his associates declare that they have no intention misleadingly to divert Complainantís customers or to sell the domain name.

(f) Respondent has not registered the domain name to disrupt Complainantís business, nor is he in the business of selling domain names.

Complainant in Reply

Complainant submits evidence of its Korean trademark registration, which was completed before the domain name was registered. It has an international mark in other Asian countries.

Complainant since 1999, has a distributor in Korea who has a website where goods under "Repsol" and "Repsol ypf" marks can be purchased.

Complainant, supported by a Korean translator, claims that the word for "pine needle" in Korea transcribes as "solyp", not "solypf". The President of Complainantís South Korean distributor offers four transcriptions of the Korean word for pine needle, none of which is "solypf".

The declarations attached to the Response are not supported by any documents or invoices. The declarants seem mainly to attest to the good character of the Respondent.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- 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;

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

- The domain name has been registered and used in bad faith.

In the view of the Panel the disputed domain name is identical to the Complainantís ĎRepsolí and "YPF" marks. It does not matter that those particular registrations are not in the same jurisdiction as the Respondent. It is also confusingly similar to both the marks "Repsol" and "YPF". It is identical to the Complainantís mark Repsolypf, registered in Korea before the domain name registration.

In the Panelís view, the Respondent has not made out an arguable case that he has legitimate rights to or interest in the domain name.

A cynic might see it as just too fortuitous that the "solypf" word is the Korean word for "pine needle" and that the word "rep" is an abbreviation of the word "representative". Evidence from the Complainant indicates that the Korean word for "pine needle" does not translate as "solypf".

Accepting that the word "solypf" may mean "pine needle" in Korean, that does not explain the use of the letters "rep", even again assuming they are short for "representative". There is no evidence that "rep" is a commonly used word in Korean. Its very Englishness suggests otherwise.

The Panel notes that whilst there are persons certifying that "solypf" means "pine needle" in Korean, none go so far to say that "rep" means "representative". Even then if it did, it strains belief that "rep" would be added to the name. One has therefore to wonder why this was done. Respondentís submission would be more plausible if the letters "rep" had not been inserted before "solypf".

There have been other WIPO cases where the announcement of merger of two large multi-nationals has been promptly followed by an opportunistic domain name registration of the likely name of the new entity, eg. SMS Demag A.G. v. Seung Gon, Kim (D2000-1434), The London Metal Exchange Limited v. Syed Hussain (D2000-1388), Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc. (D2000-0446).

The Respondentís claim seems just too far-fetched, particularly in the context of the merger of two very large players in the global energy world and with the domain name just happening to be the same as that of the merged entity. The merger was well publicised in the international financial press. Respondent has not satisfied the onus to prove that he comes within one of the limbs of paragraph 4(c) of the Policy. There is no documentary evidence offered to back up the litany of similar assertions made by the Respondent and his associates.

The Panel considers also that there is an available inference that the Respondent knew of the Complainantís rights at the time of registration of the domain. The name of the merged entity of two large international oil companies cannot have escaped the attention of the financial press and markets worldwide, even although the two companies operated in Spain and Latin America. The combination of their unusual two names is just too coincidental. The  Respondentís explanation strains credulity. Moreover, at the time of the domain name registration, Complainant had a registered mark in Korea and some commercial presence in that country. These facts, plus the lack of any real development of the website allow for an inference of bad faith use.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) The domain name is identical to one and confusingly similar to others of the Complainantís marks.

(b) The Respondent has no legitimate rights or interest in the domain name.

(c) The domain name has been registered and is being used in bad faith.

Accordingly the Panel requires that the domain name <repsolypf.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker
Sole Panelist

Dated: August 23, 2001