WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BP p.l.c. v. Kang-Sungkun Portraits Production

Case No. D2001-1097

 

1. The Parties

The Complainant is BP p.l.c., Britannic House, 1 Finsbury Circus, London, EC2M 7BA, United Kingdom.

The Respondent is Kang-Sungkun Portraits Production, Sungsan A 103-1114, 595 Bunji, Sungsan2dong, Mapogu, Seoul, 121-252, Korea.

 

2. The Domain Name and Registrar

The Domain Name is <bpjapan.com>.

The Registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.

 

3. Procedural History

The Complainant submitted a hardcopy of its complaint about the disputed domain name to the WIPO Arbitration and Mediation Center (the Center) on September 4, 2001. On the same day the Center acknowledged the Complainant's hard copy submission. An electronic copy of the complaint was received on September 12, 2001. The complaint was filed in accordance with the approved Rules and Supplementary Rules for Uniform Dispute Resolution Policy, October 24, 1999.

The Center sought verification of the disputed domain name from Tucows, Inc. on September 10, 2001. Tucows, Inc.'s response was received on September 12, 2001, identifying Kang-Sungkun Portraits Production as the registrant of the disputed domain name. However, Tucows Inc.'s response was incomplete and a second request to the Registrar was sent on September 13, 2001. A complete reply was received the same day confirming the Respondent was the current holder of the domain name and that the Uniform Domain Name Dispute Resolution Policy applies. According to the Registrar the status of the domain name is "on-hold to ensure that no changes occur to the ownership or Registrar for the duration of the dispute".

The Center communicated the complaint to the Respondent on September 18, 2001, by hard copy and e-mail and sent copies to the Complainant, ICANN and Tucows, Inc. The Centerís communication informed the Respondent of a "Notification of Complaint and Commencement of Administrative Proceeding" and that the last day for a response was October 8, 2001.

The Respondent defaulted by not sending a response by the due date and the Center provided a "Notification of Respondent Default" to the Respondent and the Complainant.

Following an invitation from the Center to serve as a panelist, the Panel member submitted his "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center on October 26, 2001, and was formally appointed on November 1, 2001.

The Panel has not received any additional submissions. The Panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements including proper notification to the Respondent and the payment of the appropriate fee for a decision by a single panelist. The proceedings were conducted in English and the Panel's decision is scheduled to issue on November 15, 2001.

 

4. Factual Background

The Complainant is the holding company of one of the world's largest petroleum and petrochemicals groups whose origins date from 1909. Its main activities are exploration and production of crude oil and natural gas; refining, marketing, supply and transportation; and manufacturing and marketing of petrochemicals. It has a growing activity in gas and power and also in solar power generation. BP has well-established operations in Europe, North and South America, Australia, Asia and Africa.

BP p.l.c. has a market capitalization of $US 203 billion and revenues of $US 148 billion. It has 107 000 employees, 23 refineries, 58 chemical sites and undertakes oil exploration in 29 countries and production in 23 countries.

The Complainant is the owner of the well-known trademark made up of the letters "BP". Trademark registrations have been secured in 110 countries predominantly in the trademark Class 4 for industrial oil and greases, lubricants and liquid and gas fuels. With respect to Japan it registered the trademark BP on March 28, 1983 and later its logo representing the letters BP within a shield. The Complainant's trademark is well-known and is relied upon to identify the Complainant as a major supplier of petroleum products and services and as distinguishing the Complainant and its products from competitors and the goods and services of others. The BP trademark symbolises substantial goodwill and is an extremely valuable commercial asset to the Complainant.

The Complainant is the parent company of two companies registered in Japan namely BP JAPAN K.K. and BP TRADING LTD.

The Respondent, located in Korea, registered the disputed domain name <bpjapan.com> on August 28, 2000. The domain name is parked at a web site simply stating "comin (sic) soon" and "please wait".

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

- The Respondent has no right or license to use the BP name.

- The Respondent appears not to have been commonly known by the domain name or that the Respondent is making a legitimate or fair use of the domain name.

- By registering and using the domain name <bpjapan.com> the Respondent is intentionally attempting to create confusion with the Complainant's trademarks and registered company name, as to the source, sponsorship, affiliation or endorsement of the registrant's web-site.

B. Respondent

The Respondent failed to provide a response to the complainant's allegations.

 

6. Discussion and Findings

In accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that: (i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent's domain name has been registered and is being used in bad faith.

(i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant's demonstrated rights in the well-known trademark "BP" are well proven.

The disputed domain name <bpjapan.com> is made up of a simple combination of the Complainant's trademark and the geographical location of Japan.

Since the commencement of domain name dispute resolution tens of cases have considered the effect of linking of a trademark with a country name as either a prefix or suffix to create a domain name. The common conclusion is that the addition of a country name does not distinguish the domain name from the trademark. As expressed in Koninklijke Philips Electronics NV v. Gopan P.K. (WIPO Case No. D2001-0171), a country name "adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that country]".

Consistent with previous decisions, the Panel agrees that the addition of a country name does not alter the basic meaning of the domain name and, therefore, the Panel finds that the disputed domain name is confusingly similar to the complainant's trademark.

(ii) the Respondent has no rights or legitimate interests in respect of the domain name.

ICANN's Uniform Domain Name Dispute Resolution Policy Rule 4 (c) sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. The ways include, but are not limited to:

(i) "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or an organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights: or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".

The Respondent has not provided any information demonstrating its rights or legitimate interests in the disputed domain name.

Based on the information before the Panel it seems unlikely that any of the above ways of demonstrating rights to or legitimate interests in the disputed domain name could possibly be maintained by the Respondent. The Respondent has parked the domain name in a holding site and while it has been held for over one year no effort has been made to use or prepare to use the domain name in a bona fide manner. Also, there is no evidence before the Panel that indicates that the Respondent is commonly known by the domain name or that there has been legitimate non-commercial or fair use of the domain name.

The Panel's view is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) the Respondent's domain name has been registered and is being used in bad faith.

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4 (b) of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The circumstances of paragraph 4 (b) involve possible bad faith motives of: (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users to a website for commercial gain by creating confusion with the complainant's trademark.

In this case none of the above motives are immediately apparent. However, as mentioned earlier, the Panel is not limited to just the paragraph 4 (b) circumstances to determine whether the domain name was registered and used in bad faith.

In the Panel's view the factors supporting registration and use in bad faith by the Respondent are:

- Given the distinctiveness and reputation of the Complainant's trademark, the fact that it has no specific meaning and the lack of any information on which to assert that the Respondent came up with the domain name independently there is no obvious explanation other than the registration was made in bad faith with the intent to attract business to its site, disrupt the business of the Complainant and/or profit from the eventual sale of the domain name. Similar conclusions about opportunistic bad faith registrations are found in a number of decisions, such as, Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028), Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Charles Jourdan Holding AG v. AAIM (WIPO Case No. D2000-0403), Nintendo of America Inc v. Pokemon (WIPO Case No. D2000-1230), Neuberger Berman Inc v. Alfred Jacobson (WIPO Case No. D2000-0323) and Telstra Corporation Ltd. v. Brett Micallef (WIPO Case No. D2000-0919).

- The Respondent's passive holding of the domain name (it has been inactive for over one year) in combination with having no legitimate rights or interests in the domain name and the likelihood of being aware of the BP reputation and trademark, can be interpreted as bad faith use for the purposes of paragraph 4 (a) (iii). Previous decisions support this approach: see, for example, Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Telstra Corporation Limited v. Barry Cheng Kwok Chu (WIPO Case No. D2000-0423).

In view of the evidence provided and the precedent found in similar cases the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

 

7. Decision

In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is confusingly similar to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent's domain name has been registered and used in bad faith. Accordingly, the Panel requires the registrar to transfer the disputed domain name <bpjapan.com> to the Complainant.

 


 

Ross Wilson
Sole Panelist

Dated: November 14, 2001