WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Karl Ochsner v. Postech

Case No. D2001-1126

 

1. The Parties

1.1 The Complainant is Dipl. Ing. Karl Ochsner of Krackowizerstrasse 4, 4020 Linz, Austria.

1.2 The Respondent is POSTECH of Hyundai 103/1003 Chimsan Bukgu, Daegu, Daegu 702-706, Korea.

 

2. The Domain Name and Registrar

2.1 The domain name upon which this Complaint is based is <ochsner.com> (the "Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is Dotster.com.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on September 14, 2001, and in hard copy on September 20, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.3 On September 17, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to Dotster.com on September 17, 2001, by email. Dotster.com responded to the Centerís request by email on September 24, 2001, by email, stating:

(a) that Dotster had received a copy of the Complaint from the Complainant;

(b) that Dotster was the registrar for the domain name in dispute;

(c) that the Respondent was the current registrant of the domain name in dispute;

(d) that the Disputed Domain <ochsner.com> was active;

(e) the Respondentsí contact details; and

(f) that Dotsterís version 5.0 Service Agreement was in effect.

3.5 On September 24, 2001, the Complainantís representative sent an addition to Complaint to the Center.

3.6 On September 26, 2001, the Complainantís representative sent a second addition to Complaint to the Center.

3.7 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on September 25, 2001, to the Respondent by post/courier (with enclosures) and by email (without attachments), and to the Complainantís representative by email (without attachments).

3.8 On October 8, 2001, the Center received from the Respondent a request by email to file a Response in the Korean language. On the same day, the Center informed the Respondent by email that the language of the Administrative Proceeding in this case would be English.

3.9 On October 11, 2001, the Center received from the Respondent a request by email for an extension of time to file a Response because he is "poor at writing in English". On the same day, the Center informed the Respondent by email that the Center granted an extension of 5 days to the Respondent and that the last day for submitting a Response to the Complainant and to the Center was October 20, 2001.

3.10 The Center received a Response from the Respondent by email on October 17, 2001, and in hard copy on October 25, 2001.

3.11 The Center sent a Transmission of Case File to Administrative Panel by email on October 26, 2001. The documentation was received in hard copy by the Panel on November 1, 2001, in Sydney, Australia.

3.12 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following is asserted as fact in the Complaint.

The Complainant states that he is the CEO of the Austrian firm Ochsner Wärmepumpen GmbH ("Ochsner Firm"). The Complainant has not provided an English translation of the document annexed to the Complaint to evidence this, and the Panel relies on the evidence in the Complaint to interpret the document. The Complainant states that Ochsner Firm is a manufacturer of heat pumps and related apparatusí in Austria. It has offices in Austria, Germany, Switzerland and Poland and exports its products to many other countries. The firm was established in 1976, and has become one of the leading manufacturers of heat pumps and related apparatusí in Austria. Karl Ochsner has used his own name in the name of the firm and the associated trademark and domain names that have been registered by him.

4.2 The Complainantís trade marks

The Complainant asserts that he is the owner of registrations for the trademark "OCHSNER" in Austria, France, Germany, Italy, Spain, the Benelux - countries, Czech and Slovak Republic, Hungary and Switzerland. The applications for these trademark registrations were lodged on September 6, 1990, and renewed in February 18, 2001. The trademark registration in Austria covers compressors, pumps for liquids and gas, heat pumps, heating apparatus, hot water production equipment, heat regulators, heating operators, heating boilers, heating systems and their accessories. The trademark registrations for France, Germany, Italy, Spain, the Benelux - countries, Czech and Slovak Republic, Hungary and Switzerland cover compressors (machines), pumps for liquids and for gas, thermostats, heat pumps, heating apparatus, water heaters, heat regulators, heating boilers, heating installations and accessories. The Complainant has not provided English translations of the documents exhibited with the Complaint to evidence these trademark registrations, and the Panel relies on the evidence in the Complaint to interpret the documents. The Panel notes that, under paragraph 11 of the Rules, the language of this administrative proceeding is to be the language of the registration agreement, which in this case is English. The Complainant has not sought any alternative determination from the Panel and there is no evidence that the parties have otherwise agreed.

4.3 Activities of the Respondent

The Complainant asserts that the Respondent is a Korean University - the Pohang University of Science and Technology, known as POSTECH with a website at "http://www.postech.ac.kr/e/". This is consistent with the registrant details that were provided by Dotster.com on September 24, 2001, however, in the Response, Gun Sik Hong (who is listed by Dotster as both the Administrative Contact and the Technical Contact for the Disputed Domain) has identified himself as the Respondent along with Hong Hee Dong. Hong Hee Dong was listed as the Administrative Contact for the Disputed Domain prior to September 17, 2001.

All communications with the Complainant regarding the Disputed Domain have been conducted by either Gun Sik Hong or Hong Hee Dong. When the Complainant queried the connection between Hong Hee Dong and the Disputed Domain on September 11, 2001, Hong Hee Dong wrote:

"Dear sir, I am Hong Hee Dong, the CEO in DomainBox.com. Donít worry about whois information. myrib@korea.com and myrib@dreamwiz.com are both my personal e-mail. In the future, I will communicate you with myrib@dreamwiz.com. . ."

Even after the Dotster registration details were changed on September 17, 2001, to remove Hong Hee Dong as the Administrative Contact, Hong Hee Dong seems to have had a continued involvement with the Disputed Domain. This is acknowledged in the Response.

The Response was sent to the Center by Gun Sik Hong. The Response does not refer to POSTECH at all and the address that is listed with Dotster.com for POSTECH does not correspond to the address of the Pohang University of Science and Technology.

It seems from the information provided to the Panel that although POSTECH is registered with Dotster.com as the owner of the Disputed Domain, it has no real involvement with the Disputed Domain and the actual Respondents in this matter are Gun Sik Hong and Hong Hee Dong.

Neither the Complaint nor the Response provide any information regarding the activities of Gun Sik Hong.

The Complaint asserts that Hong Hee Dong is the CEO of <domainbox.com> which is a platform for registration and sales of domain names.

 

5. The Complainantís contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Disputed Domain, which the Respondent has registered, is confusingly similar to the Complainantís "OCHSNER" trademark as the spelling of the two is identical.

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent should be considered as having no legitimate interest in respect of the Disputed Domain because as at the date of the Complaint:

(a) the Respondent was not using the Disputed Domain in a bona fide offering of goods or services;

(b) the Respondent is a Korean university and does not use the Disputed Domain as a name, a trademark or a service mark;

(c) the Respondent was not using the Disputed Domain as a website address;

(d) the Disputed Domain linked to <domainbox.com> which is a platform for the registration and sale of domain names. Domainbox.com displayed a notice that <domainbox.com> has registered the Disputed Domain and encouraged users to contact them. On the same page, it also included the message "How to get your domain name before itís gone";

(e) the word "ochsner" does not have any meaning in the Korean or English language and cannot be used as a generic domain; and

(f) "ochsner" represents the name and the trademark of the Complainant only.

5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the Disputed Domain in bad faith because the Respondent has acquired the Disputed Domain for the sole purpose of selling it to the owner of an identical or similar trademark or personal or company name for valuable consideration in excess of the out-of-pocket costs directly related to the Disputed Domain.

In support of these assertions, the Complaint states the following:

On September 6, 2001, Hong Hee Dong offered to sell the Disputed Domain to the Complainant for $7,000 USD which is in excess of the out-of-pocket costs directly related to the Disputed Domain. At this time, Hong Hee Dong was listed with Dotster as the Administrative Contact for the Disputed Domain.

Hong Hee Dong is also the CEO of Domainbox.com which is a platform for the sale of domain names and is at least a semi-professional domain-grabber who deals deliberately and to a considerable extent with domains that are confusingly similar to protected trademarks and company names. He has registered several other famous trademarks as domain names either for himself or for <domainbox.com>. Examples of these are:

- <imtel.com> (which obviously refers to INTEL, the world wide leading manufacturer of computer processors),

- <bbcwebtv.com> (British Broadcasting Company) and

- <bbcwebtv.net>.

Hong Hee Dong made it clear to the Complainant that it did not intend to use the Disputed Domain by offering to sell it to the Complainant and then later by threatening to transfer the Disputed Domain to an unrelated third party, free of charge.

On September 17, 2001, the Respondent modified the Whois registry and replaced Hong Hee Dong with Gun Sik Hong as the technical contact for the Disputed Domain. It also replaced the email address contact details myrib@korea.com and myrib@dreamwiz.com with ochsnerdotcom@yahoo.com in an intentional bid to confuse and mislead the Panel.

On September 24, 2001, Hong Hee Dong contacted <ochsner.org> and offered to transfer the Disputed Domain to them for the cost of registration which he identified as $250 USD.

 

6. The Respondentís Contentions in Response

6.1 In relation to paragraph 4(a)(i) of the Policy, the Respondent does not contest that the domain name is identical to the Complainantís registered trademark. However, the Response does appear to contend that the Complainantís trademark registrations are limited to Europe and so are not relevant to activities outside of Europe, including those of the Respondent. To support this, the Respondent has cited Ochsner International Inc., a US entity who is the registered owner of the USA Federal trademark "OCHSNER". A copy of the trademark search that evidences this registration is attached to the Response.

6.2 In relation to paragraph 4(a)(ii) of the Policy, Respondent does not argue that it used or had made demonstrable preparations to use the domain name before notice of this dispute.

6.3 The Respondent does not argue that it has been commonly known by the domain name in dispute.

6.4 The Respondent does appear to submit that it is now making a fair use of the Disputed Domain without intent to misleadingly divert consumers or to tarnish the trademark at issue on the grounds that the Respondent has used the Disputed Domain to run an online shopping mall and this activity does not Ďhurtí the Complainant.

6.5 In relation to paragraph 4(a)(iii) of the Policy, Respondent appears to argue that it did not acquire the Disputed Domain primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. In support of this submission, the Response states that:

a) At the time of registration of the Disputed Domain, the Respondent did not know of the trademark registrations of the Complainant.

b) At the time of registration of the Disputed Domain, the Respondent had no desire to sell the domain name as it was important to him.

c) The only reason that the Respondent entered into negotiations with the Complainant for the sale of the Disputed Domain was because the Complainant approached the Respondent to do so.

d) The Complainant first approached the Respondent by email on September 1, 2001, using the address @ochsner.de and the name Georg Ochsner. In this email, the Complainant asked the Respondent to sell it the Disputed Domain. On September 2, 2001, the Respondent refused this request as follows:

"Dear sir, This domain is not for sale. if you really want to have this domain, you should suggest high price to give up my future plan. Thanks. CEO Domainbox.com".

e) On September 3, 2001, the Complainant sent an email (again using the name Georg Ochsner and the ochsner.de address) to the Respondent offering to pay $800 USD for the Disputed Domain.

f) On September 11, 2001, the Complainant sent an email using the name Karina Pfaffeneder and the address @ochsneronline.de in which they offered to purchase the Disputed Domain for US$7,000.

g) The Respondent has been running the Disputed Domain as an online shopping mall since September 19, 2001.

h) The Respondent is not hurting the Complainant.

 

7. Discussion and Panel Findings

7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

7.2 Domain Name identical or confusingly similar to Complainantís trade mark

The Disputed Domain is <oschsner.com>. The Complainant owns registrations for the trademark "OCHSNER" in Austria, France, Germany, Italy, Spain, the Benelux - countries, Czech and Slovak Republic, Hungary and Switzerland. As the gTLD suffix serves no relevant distinguishing purpose, the Disputed Domain is identical to the trademarks owned by the Complainant.

Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

7.3 The Respondent has no rights or legitimate interests in the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain.

Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name.

On September 17, 2001, the Respondent received a copy of the Acknowledgement of Receipt of Complaint in relation to the Disputed Domain from the Center. It seems from this that the Respondent would also have received a copy of the Complaint by email from the Complainant when it was sent to the Center on September 14, 2001. Until this time, the Respondent had not used the Disputed Domain.

On September 19, 2001, after being alerted to the Complaint, operation of an online shopping mall from the domain was commenced. It is apparent from a brief consideration of the site that it has been built quickly using the <myshop.com> shell. The Panel observes that the email address for the site is ochsner@myshop.com and the webmaster email address is ochsnerdotcom@yahoo.com. It is apparent from www.archive.org that no shopping mall site existed prior to the notification of the Complaint to the Respondent. The Respondent has not put before the Panel any evidence of its preparation to use the Disputed Domain as an online shopping mall prior to September 19, 2001, or that the online shopping mall is a genuine business exercise. The Respondent has provided no evidence that it is commonly known by the Disputed Domain name.

The Domainbox.com website stated that it had registered the Disputed Domain and encouraged users to contact it. This created the presumption that there was an opportunity to purchase the Disputed Domain. This presumption was verified when, at various times, Hong Hee Dong offered to sell the Disputed Domain. He also offered to transfer it free of charge. These activities support an inference that the Respondent had no legitimate interest in the Disputed Domain in relation to the online shopping business or any other business besides the business of registering and re-selling domain names.

There does not appear to be any connection between any of the Respondent, Gun Sik Hong or Hong Hee Dong and the Disputed Domain.

The Respondent has not demonstrated that paragraph 4(c) applies and the Complainant has proved on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

7.4 Domain Name has been registered and is being used in bad faith

In order to show bad faith registration by the Respondent, the Complainant asserts that the Disputed Domain was registered for the sole purpose of selling it to the Complainant who is the owner of the registered trademark "OCHSNER" or a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.

It seems clear that the Disputed Domain was registered for the sole purpose of selling it to the Complainant who is the owner of the registered trademark "OCHSNER" or a competitor of the Complainant because:

a) OCHSNER has no meaning in English or Korean and none of the Respondent, Gun Sik Hong or Hong Hee Dong have shown any connection with the Disputed Domain;

b) the Disputed Domain was not used until after the Respondent was alerted to the Complaint;

c) registration of the Disputed Domain name was advertised on <domainbox.com>, a platform for the registration and sale of domain names; and

d) Hong Hee Dong, acting as the Administrative Contact for the Respondent, has been willing to sell the Disputed Domain or even to transfer it free of charge to prevent the Complainant from obtaining it which indicates that there was no other purpose for the registration.

Hong Hee Dong offered to sell the Disputed Domain to the Complainant for $7,000 USD and later for $1,500 USD. Both of these amounts are in excess of the $250 USD amount that Hong Hee Dong specified as the out-of-pocket costs directly related to the Disputed Domain.

In the Panelís opinion, the Disputed Domain name was registered for the reasons outlined in sub-paragraphs 4(b)(i) of the Policy.

 

8. Decision

The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <ochsner.com> be transferred by Dotster.com to the Complainant, Karl Ochsner.

 


 

Philip N. Argy
Sole Panelist

Dated: November 12, 2001