WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advokatfirmaet Haavind Vislie DA v. Sung-Nam Kim
Case No. D2002-0004
1. The Parties
The Complainant in this administrative proceeding is Advokatfirmaet Haavind Vislie DA, based at P.O.B 359 Sentrum, N-0101 Oslo, Norway.
The Respondent is Sung-Nam Kim, based at Gigok-dong, Pohangsi Namgu, Gyeongbuk 790-390, Republic of Korea.
2. The Domain Name and Registrar
The domain names at issue are <haavind.com> and <haavindvislie.com> ("the Domain Names").
The Domain Names are registered with Hangang Systems, Inc., d/b/a Doregi.com.
3. Procedural History
Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on January 8, 2002, and by hard copy on January 3, 2002.
On January 4, 2002, the Center acknowledged receipt of the Complaint.
On January 7, 2002, the Center transmitted to the Registrar a request for registrar verification in connection with this case so as to:
- confirm that the Domain Names at issue are registered with Registrar;
- confirm that the person identified as the Respondent is the current registrant of the Domain Names;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Whois database for the registrant of the disputed Domain Names, the technical contact, the administrative contact, and the billing contact for the Domain Names.
On January 8, 2002, the Registrar responded providing the details requested by the Center, and confirmed that it was the concerned Registrar.
On January 9, 2002, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). On that day the Center notified that the Complaint showed a deficiency with respect to the language, as a consequence of which the Complainant provided on January 17, 2002, a translation of the Complaint in Korean language by email and on January 22, 2002 by hardcopy.
The Panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on February 7, 2002. The same day, the Complaint was notified to Respondent.
On February 26, 2002, Respondent filed a Response by email.
Upon receipt of the necessary declaration of independence and impartiality of the present Panel, the Center appointed on March 13, 2002, Prof. Charles Gielen as sole panelist and English was determined to be the language of decision in accordance with the Policy, Paragraph 11.
4. Factual Background
Complainant, one of the constituents of which was founded in 1893, is a law firm in Norway owning Advocatfirmaet Haavind Vislie DA as a trademark in Norway through registration on August 31, 2000, and a tradename through registration on January 3, 2000. It furthermore owns a number of domain name registrations such as <haavind.no>, <haavindvislie.no>, <haavi.no>, <haavind.net>, <haavindvislie.net>, <haavind.org> and <haavindvislie.org>. The law firm under the name Haavind Vislie is the result of a merger in 2000 between, amongst others, the firm called Haavind (established in 1893) and Vislie (established in 1935). The Domain Names <haavind.com> and <haavindvislie.com> were originally registered in the name of Complainant but became available through non-payment of renewal fees by the former webhost.
Respondent is a Korean national who registered the Domain Names on May 23, 2001, for his online business about travel, in particular in Europe. There are no actual sites under the Domain Names, but one is directly linked to <mytravels.net>.
Complainant contacted Respondent by email on November 5, 2001, with a request to transfer the Domain Name against payment of out of pocket expenses to an amount of US $ 250. Respondent answered by email on November 14, 2001, with a text in Korean language the translation of which can not be understood. After a further request for clarification Complainant was informed in English by Respondent that he was prepared to transfer the Domain Names against payment of US$2000. Complainant replied that it offered reasonable and documented costs and that it was not prepared to pay US$2000. No further correspondence took place and the Complaint was filed.
5. Parties' Contentions
Complainant alleges that the Domain Names are identical to the trademark registered and used by Complainant. It points out that Respondent does not have any legitimate interests in the Domain Names. Complainant alleges that originally the web pages contained a message that the Domain Names were for sale. Furthermore the Domain Name is registered and used in bad faith. In this context Complainant states that Respondent has no legitimate interests and offered the Domain Names for sale.
Respondent does not dispute that the trademarks of Complainant are identical to the Domain Names, but he poses a number of questions with respect to the rights of Complainant to "haavind" and "haavindvislie". He states that since the Domain Names were dropped by Complainant, any one could register them as Domain Names and that is what Respondent did. Furthermore, he states that asking money for the Domain Names is not illegal. He denies to have offered the Domain Names for sale, but states that he only asked people who would be "interested", meaning interested in travelling in Norway and Italy. Finally, he alleges that he was first with the Domain Names and that the claim is false and illegal.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of Paragraph 4(a) of the Policy are satisfied, namely that:
1. The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. The Respondent has no rights or legitimate interests in the Domain Names; and
3. The Domain Names have been registered and used in bad faith.
These three elements will be considered below.
6.1. Identity or confusing similarity
Respondent questions whether Complainant has any rights to the alleged trademarks. The Panel concludes that Complainant by filing a copy of the Norwegian trademark registration as well as the registration of the tradename gave sufficient proof of its rights to the trademark Adcocatfirmaet Haavind Vislie DA. Furthermore, Respondent did not contest that before the merger there existed two law firms in Norway, one acting under the name Haavind and the other under the name Vislie. Respondent does not dispute that the Domain Names are identical with Complainant’s trademark. The Panel finds that the Domain Names and the trademark and tradenames of Complainant are, at least partly, identical.
6.2. Rights or legitimate interests
The Panel is of the opinion that Respondent did not give any proof of rights or legitimate interests in the Domain Names. There has been no use by Respondent prior to the use of Complainant's trademark and tradenames. Respondent did nothing more than occupying a position that fell free as a consequence of the fact that renewal fees for registration of the Domain Names in the name of Complainant were not made by mistake. Respondent did also not show any actual use of the Domain Names for any particular business. Although there is no proof of what exactly the blank sites mentioned originally, it is clear that upon a request by Complainant to assign the Domain Names a counteroffer was made. None of the circumstances in Paragraph 4(c) of the Policy occur and therefore no legitimate interests or rights on the side of the Respondent existed. The Panel therefore concludes that the second condition is fulfilled.
6.3. Bad Faith
According to Paragraph 4(a)(iii) of the Policy, it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Names in bad faith. The Panel is of the opinion that such proof is given. The circumstances of this case indicate that the registration of the Domain Names took place primarily for the purpose of transferring them to Complainant. Although it is not proven that the intention to sell in general appeared on the original website of the Respondent, it is clear that after having been offered by the Complainant out-of-pocket expenses for transfer of the Domain Names, the Respondent did ask for an amount that is in excess of out-of-pocket expenses. Furthermore, Respondent did not give any other reason for having registered the Domain Names (in particular no own business reasons) other than saying that since Complainant dropped them they can be registered by anybody. The Panel does not agree in a case where registration took place for the sole reason to transfer the Domain Names for valuable consideration exceeding out of pocket expenses to Complainant. The registration and use (consisting amongst others in offering them for sale) is therefore done in bad faith.
For the foregoing reasons, the Panel concludes and decides that the Domain Names <haavind.com> and <haavindvislie.com> are identical to the trademarks and tradenames of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith.
Accordingly, and pursuant to Paragraph 4(i) of the Policy and in accordance with the request by Complainant the Panel requires that the Domain Names be transferred to Complainant.
Prof. Charles Gielen
Dated: March 21, 2002