WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
imt robot AG . v. Hyung Kim / Microrobot Co. LTD. /Domain Co. LTD.
Case No. D2002-0566
1. The Parties
The Complainant is imt robot AG, Sebastian Piecha of Blumenstrasse 47, 70736 Fellbach, Germany, (the "Complainant"). Complainant is represented by Dr. Axel Funk and Matthias Wenn of CíMíSí Hasche Sigle in Stuttgart, Germany.
The Respondents are Hyung Kim/Microrobot Co Ltd / Domain Co. Ltd. of 40-26 Cheong Dam Dong, Kang Nam Ku, Seoul, Republic of Korea, (the "Respondents").
2. The Domain Name and Registrar
The Domain Name at issue is: <imt-robot.com> (the "Domain Name").
The Registrar is: Register.com, 575 8th Avenue, 11th floor, New York, NY 10018, United States of America (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the initial complaint in electronic and hard copy on June 18, 2002 and June 26, 2002, respectively. The Center requested an amended Complaint to take into account the changed and expanded identity of the Respondent and this was filed in electronic and hard copy on June 27, 2002 and July 3, 2002, respectively ("Complaint"). Between the date of the original and amended Complaint the Center had requested registrar verification as to the identity of the current registrant of the Domain Name, and undertaken certain related correspondence with the Complainant concerning the same. On July 4, 2002 the Center determined that the Complaint met all the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), and the URDP Rules and WIPO Supplemental Rules. On July 5, 2002 the Center notified the Respondent of the Complaint of the commencement of administrative proceeding. On July 10, 2002 Respondents confirmed receipt of the Complaint, and there was prior and subsequent correspondence with Respondents as to the issue of the identity of the current registrant and owner of the Domain Name. On July 28, 2002 the Center duly and properly notified Respondentsí default under the Rules. On August 2, 2002 the Center transmitted a notification of the appointment of the undersigned as the sole panelist in this matter, and shortly thereafter transmitted the file to the Panel.
4. Factual Background
The Complainant is a German corporation engaged in the manufacture of robots. Complainant was founded in 1985 by Peter Nagler and was previously known under the name imt Peter Nagler GmbH, but has recently changed its name and corporate form to that set forth in the caption of this case. On December 31, 1994, Complainant applied for a German trademark for the mark "imt", and this mark was registered on August 17, 1995, for trademark classes 7, 9, 35, 36, 37, 41 and 42. Complainant has also, since 1999, registered the Domain Name <imt-robot.de>. Complainant has been thus identified with the business name "imt-robot" and uses this designation in its business relationships.
Respondent Hyung Kim is the President and CEO of Respondent Domain Co. Limited. Both of these Respondents are involved in the business of registering, and perhaps offering for sale, domain names. Among their clients is Microrobot Co. Limited, the third Respondent here. Respondent Hyung Kim, in a June 22, 2002, e-mail to Complainantís legal counsel, identified Domain Co. Limited as an "agent of Microrobot Co. Limited." Respondent Microrobot Co. Limited is a company involved, inter alia, in the manufacture or distribution of robot kits or other robot-related materials and electronic components. Microrobot Co. Limited operates several web sites in connection with its business which include the word "Microrobot".
Complainantís lawyers first sent a demand letter to Respondent Domain Co. Limited on or about October 25, 2001, asking for the release of the Domain Name complained of here. This release was refused and a certain amount of communication ensued, some of which is referred to further below.
5. Partiesí Contentions
Complainant essentially contends that the Domain Name registered by or on behalf of Respondents is identical and/or confusingly similar to its marks and business name, and intentionally so; that this misleading impression is created due to the fact that Complainant and Respondent Microrobot Co. Limited operate in the same fields of business, i.e. robots; that Respondents have no legitimate rights to a domain name incorporating "imt" in connection with the word "robot"; and that the registration of the same was and is in bad faith. Complainant further points out that the confusing pattern of registration, links to a Microrobot Co. Limited site, withdrawal of the links, and apparent putting up of the Domain Name for sale during the February to May 2002 period, are further indicia of the Respondentsí bad faith and improper behavior. Complainant accordingly asked that the Domain Name be "released", i.e. transferred, to it. Respondents have defaulted in this proceeding. However, prior to, and shortly after, the filing of the Complaint, Respondents submitted a number of arguments or assertions in various e-mails, and these are considered herein to the extent pertinent and necessary.
6. Discussion and Findings
The Policy, in its paragraph 4 (a), provides that the Complainant must prove each of the following:
i. That the Respondentsí Domain Name is identical or confusingly similar to a mark in which the Complainant has rights, and
ii. That Respondents have no rights or legitimate interests in respect of the Domain Name; and
iii. That the Domain Name has been registered and has been used in bad faith
Furthermore, paragraphs 4 (b) and (c) of the Policy set out non-exclusive, but illustrative, circumstances which may demonstrate evidence of registration and use in bad faith or, contrarily, rights and legitimate interests in the Domain Name.
i. Identical or Confusingly Similar
Complainant has registered the trademark "imt" since 1995 and has regularly used it in connection with its robot business since at least that time. This is sufficient to establish a right to such designation within the meaning of the Policy.
The Policy is silent as to the specific test for determining confusing similarity. The registered mark "imt" is, of course, a mere combination of letters, and one could well envisage the use of that combination in a domain name in a manner that does not create any confusion with Complainant or its rights. But there is no such unrelated or non-confusing use here. Complainant registered, and has used, the mark "imt" in connection with technology, and robot technology and applications in particular. (See German Trademark registration at Exhibit K1: "Teilen für den Roboterzugriff, Ö Robotertechnik, Ö Robot und Peripheriegeräte", etc.). Respondentsí registration of the Domain Name with the identical "imt" mark and a hyphen followed by the word "robot" constitutes precisely the business and sectoral use which Complainant also makes of its mark. This is, at a minimum, "confusingly similar" within the meaning of the Policy. (See generally, Caterpillar Inc. v. Miguel Miyar Jr., NAF Case No. FA0009000095623). This first leg of Complainantís burden under Paragraph 4 (a) of the Policy is satisfied.
ii. Respondentsí Rights or Legitimate Interest in the Domain Name
Respondents in their e-mails of November 22, 2001, state that Respondent Microrobot Co. Ltd., has been appointed as an authorized company for the developing of industrial robot remote control systems for "IMT2000", a Korean government project. From this Respondents imply, but do not actually state, that they have a legitimate right to use "imt" in the Domain Name. All evidence and inferences suggest that Respondentsí citation of the IMT2000 project was misleading and self-serving. First it occurred only after Respondents Kim and Domain Co. Ltd., had received two demand letters with deadlines from Complainantís counsel, together with follow up e-mails. The initial reaction of these Respondents was to identify their client for the Domain Name as Microrobot Corporation "a pioneer manufacturing company of robots in Korea". Further, the evidence submitted shows that the "IMT2000" project is for the purpose of developing a new generation of mobile telephones (IMT2000 = International Mobile Communications 2000). Respondents use the mark "imt" in the Domain Name solely in connection with "robot" and do not append "2000". Moreover, there is no indication on Respondentsí web site, or elsewhere, of their involvement in the "IMT2000" project or that the letters "imt" are being used in connection with mobile phones. Assuming that Respondent Microrobot is indeed involved in the "IMT2000" project, which has not been demonstrated, it might well have had a right or legitimate interest to use "IMT2000" or a similar formulation in connection with that business, but not to use "imt-robot" in connection with its robot business, as it has done here.
Complainant also points out that Respondent Microrobot Co. Limited ceased using the Domain Name from approximately February 18, 2002, through June 18, 2002, when the Domain Name was listed for sale. (When this panelist visited the Domain Name site on August 7, 2002, and August 9, 2002, he was automatically connected to Microrobot Co. Limitedís robot business related web site; so the sale venture has apparently ended). While the above is inconsistent with Respondentsí assertion that it was using the Domain Name in connection with the "IMT2000" project, or any other legitimate use, it also goes to the issue of bad faith, discussed below.
iii. Registration and Use in Bad Faith
Respondents registered the Domain Name in the year 2000, when Complainant had an established business in the field of robotics, a national trademark for "imt", and had registered the domain name <imt-robot.de>. Respondentsí registration of the three letters "imt" together with "robot" can hardly have been serendipitous, given that Microrobot is in the robot business. Respondent Hyung Kim/Domain Co. Limitedís initial November 1, 2001, e-mail stating that the Domain Name was registered for Microrobotís "business" as a robot manufacturer and that it has "owned lots of associated domain names besides Ďimt-robot.comí", is further strong inference of bad faith registration, as it evidences an intent to tie-up various "robot" associated domain names for a business motive.
The evidence of bad faith "use" of the Domain Name is even more compelling. Both previously and currently the Domain Name was used to direct Internet users to Respondent Microrobot Corporationsí own web site (<www.microrobot.com>). This panel is quite satisfied that Respondent Microrobot Corporation intended thereby to attract, for commercial gain, users to its own web site by using the combination of "imt" and "robot" to create a likelihood of confusion. This bad faith use falls fully within the example given in paragraph 4 (b) (iv) of the Policy, and therefore clearly meets Complainantís burden on this point.
It is accordingly not necessary to examine in detail whether the other complained of behavior of Respondents also satisfies the bad faith "use" requirement. This behavior includes evidence of the temporary placement of the Domain Name for sale, and misinformation and evasive tactics on the part of Respondents once they learned of Complainantís challenge to the Domain Name. Suffice it here to say that none of this additional evidence is consistent with any good faith or legitimate use or behavior on the part of any of the Respondents.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of Paragraph 4 (a) of the Policy. Therefore the Panel, pursuant to paragraph 4 (i) of the Policy, orders that the Domain Name <imt-robot.com> be transferred to Complainant, imt robot AG.
Dated: August 16, 2002