WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM.
Case No. D2002-0707
1. The Parties
Complainant is Koninklijke Nederlandse Springsstoffen Fabriek N.V, represented by Mr. H.A.J. de Jong, AKD Prinsen Van Wijmen (Law Firm), P.O. Box 6019, 5600 HA Eindhoven, hereinafter the "Complainant."
Respondent is Kim Hyungho, GMM, Hyundai 204-106, Ilgok-Dong, Gwangju, NO, 500160 KR, hereinafter the "Respondent."
2. Domain Name and Registrar
The domain name in dispute is <knsf.com> (the "Domain Name").
The registrar for the disputed domain name is Namescout Corp., Whitepark House, White Park Road, Bridgetown, Barbados.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2002, and in hard copy on July 30, 2002. On July 26, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On July 26, 2002, the Center also transmitted a Request for Registrar Verification to the registrar, with the Registrarís Response received by the Center the same day, confirming that the domain name at issue was registered through Namescout Corp., Whitepark House, White Park Road, Bridgetown, Barbados.
(c) On August 5, 2002, the Center satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for the Policy (the "Supplemental Rules").
(d) On August 5, 2002, the Center also transmitted a Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent.
(e) No Response has been submitted by the Respondent within the deadline for the submission of Response. Accordingly, the Center issued a Notification of Respondent Default on August 30, 2002.
(f) In view of the Complainantís designation of a single Panelist, the Center invited Mr. Peter Nitter to serve as a Panelist. Having received Mr. Nitterís Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed Mr. Nitter as Sole Panelist on September 18, 2002. On the same day, the Center transmitted the case file to the Administrative Panel and notified the parties of the appointed Panel.
(g) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
After the Complainantís assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by Respondent because of its default, the Panel finds the following:
Complainant started as an Amsterdam-based gunpowder manufacturer more than 330 years ago.
From 1922 till recently, Complainant has been listed at the Amsterdam Stock Exchange.
Today the Complainant provides two categories of goods and services:
- investments in mainly technology-oriented firms in the broadest sense, e.g. founding, managing and acquisition;
- real estate activities like for example property development and management.
According to Complainantís home page the original gunpowder operation was closed down in 1990.
According to the same home page the Complainant has shifted its focus from industrial activities to a holding Company from 1991 to 1996. The investment activities started in 1996.
On July 5, 2002, Complainant filed an application for trademark registration of the trademark KNSF in the Benelux territory. On the same day Complainant also filed an application for registration of a logo showing a crown and the letters NSF. Complainant has registered the domain name <knsf.nl>.
The Respondent has registered the domain name <knsf.com>.
5. Partiesí Contentions
The Complainant asserts that:
The Domain Name is similar or at least confusingly similar to the Complainantís registered trademark and/or trade-name KNSF.
By using the Domain Name or refusing to transfer it to Complainant, Respondent violates the rights of Complainant to use its name in business.
The fact that Respondent has not used or made demonstrably preparations to use the Domain Name for bona fide offering of goods/services for seven months between registration and the proceedings, suffices to show lack of legitimate interest. The Domain Name automatically redirects visitors to websites under other domain names.
The Domain Name is registered and used in bad faith.
Respondent has never been a licensee of KNSF.
The web page indicates that the Respondent is only interested in contacting visitors instead of offering legitimate goods and services.
The Domain Name, upon request by Complainant, was offered Complainant for sale at the price of US$3,800.
Respondent has also registered other domain names that do not refer to active web sites. The only conclusion is that Respondent has intention of transferring the domain names against excessive compensation.
Accordingly, the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to KNSF or to a competitor against a considerable compensation in excess of the registrantís out-of-pocket costs directly related to the Domain Name.
From fall 1998 till spring 2001, KNSF used the Domain Name to promote its activities. Due to some administrative problems Complainant was not able to continue this registration. Respondent used the opportunity to register the Domain Name.
The Complainant requests the Administrative Panel issue a decision that the Domain Name must be transferred to the Complainant.
The Respondent has not submitted a Response, and is thus in default. Respondent has neither made any submissions whatsoever after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three conditions that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark 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 Domain Name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark in which the Complainant has rights
It follows from this requirement of the Policy that the Complainant must prove that he has rights in KNSF as a trademark or a service mark.
The Complainant has not produced evidence of a trademark registration of KNSF. The only evidence produced is two trademark applications, one for the letters KNSF and one for the logo showing a crown and the letters NSF.
A trademark application does not establish a trademark right.
KNSF is not a part of Complainantís official company name.
The question is whether KNSF is established by use as a trademark or trade name for the Complainant.
Complainant has referred to the fact that it is a very old business.
However, this business changed substantially in 1990, from being a business of manufacturing of gunpowder to a business of owning real estates and developing these for building projects.
The listing on the Stock Exchange terminated in 1996.
From 1996, the business has been related to investments and financial activities, and activities related thereto.
Complainant has produced three newspaper articles, two from 1991 and one from 1992. These articles start by using the full name of Complainant, who thereafter is referred to as KNSF.
These articles only show that Complainantís business has been publicly mentioned under the letters KNSF as an abbreviation for the full company name. They do not show that Complainant is generally known under this abbreviation.
As long as there is no registration of the letters KNSF as a company name or a trademark, and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has been generally known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.
6.2 Legitimate interest /registration and use in bad faith
Since the Panel has reached the conclusion that the Complainant has not proved to have rights in the name KNSF, it is not necessary to discuss the requirements of legitimate interest/registration and use in bad faith according to Paragraph 4(a)(ii-iii).
The Complainant has not proved that it has rights in the name KNFS as a trademark or service mark.
Accordingly, pursuant to Paragraph 4(a)(ii-iii) of the Policy the Administrative Panel denies the Complaint.
Peter G. Nitter
Dated: October 1, 2002