WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paradise Co. Ltd. v. Youngmi Park
Case No. DBIZ2002-00159
1. The Parties
The Complainant is Paradise Co. Ltd. of 186-210 JangChung-dong 2ga, Jung-gu, Seoul, Republic of Korea.
The Respondent is Youngmi Park of WangJing XinCheng Xi-yuan 3-qu 319-lou, 1501-hao, Beijing, China.
2. The Domain Name and Registrar
The dispute concerns the domain name <paradise.biz> (the "said Domain Name") registered with Wooho T & C Ltd. (the "Registrar") of 5F ChungJin Bld., 475-22 BangBae2-dong, SeoCho-gu, Seoul, Republic of Korea.
3. Procedural History
On April 27, 2002, MiYoung Lee, a staff of the Complainant, submitted a complaint by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") for a decision in accordance with the Start-up Trade Mark Opposition Policy for .Biz (the "STOP"), the Rules for Start-up Trade Mark Opposition Policy for .BIZ (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trade Mark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules"). On May 3, 2002, the Center received the hardcopy of the same from MiYoung Lee.
On May 6, 2002, the Center sent the Acknowledgment of Receipt of Complaint by e-mail to MiYoung Lee, the Complainant's authorized representative and the Respondent.
On May 7, 2002, the Center sent a Request for Registrar Verification to the Registrar.
On May 14, 2002, the Registrar replied by e-mail to the Center that the language of the Registration Agreement as used by the registrant of the said Domain Name was the Korean. On the same day, the Center noted that MiYoung Lee had failed to describe the grounds of the complaint, to include a submission to the jurisdiction of the courts of Mutual Jurisdiction, to file the complaint in the language of the Registration Agreement and to indicate whether there are other legal proceedings relating to the said Domain Name.
On May 16, 2002, the Center sent by e-mail the STOP Complaint Deficiency Notification to MiYoung Lee and the Complainant's authorized representative. On the same day, the Center sent by e-mail the document on Language of Proceeding to MiYoung Lee and the Complainant's authorized representative and copied it by e-mail to the Respondent. The said document required the MiYoung Lee to provide evidence of an agreement between the Complainant and the Respondent that the administrative proceeding should be in English and that if there is no such agreement, the Complaint is to be translated into Korean.
On May 20, 2002, MiYoung Lee submitted the amended complaint by e-mail to the Center. On May 23, 2002, the Center acknowledged receipt of the amended complaint. On May 24, 2002, the Center received the hardcopy of the same from MiYoung Lee.
On May 29, 2002, MiYoung Lee notified by e-mail to the Center that the language of the administrative proceeding would be English by agreement of the parties and copied the same by e-mail to the Respondent and the Registrar.
On May 31, 2002, the Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures) and by e-mail (with the Complaint and attachments) to the Respondent. The Center transmitted by e-mail the Notification (with the Complaint and attachments) to MiYoung Lee and the Complainant's authorized representative and also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification set the formal date of the commencement of this administrative proceeding as May 31, 2002, and required the Respondent to submit a response to the Complainant and the Center within 20 calendar days from the date of receipt of the Notification, i.e. by June 20, 2002, failing which the Respondent would be considered to be in default.
On June 5, 2002, the Registrar of the said Domain Name informed the Center by e-mail that the registrant of the said Domain Name was the Respondent. On June 7, 2002, the Center copied the e-mail to MiYoung Lee and the Respondent.
On June 14, 2002, the Respondent transmitted her response by e-mail to the Center and MiYoung Lee.
On June 17, 2002, the Center received the hardcopy of the same from the Respondent. On the same day, the Center sent by e-mail the Acknowledgement of Receipt of Response to the Respondent and copied the same to MiYoung Lee.
On June 26, 2002, the Center appointed Mr. Hariram Jayaram (the "Panel") to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to MiYoung Lee, the Complainant's authorized representative and the Respondent and copied it to the Panel by e-mail. On the same day, the Center sent the Transmission of Case File to the Panel.
On July 8, 2002, the Panel made a Procedural Order for MiYoung Lee to supply English translations of the documents which it had submitted as exhibits earlier. The Panel also requested the Respondent to clarify what she had in mind as "Paragraph 6a, Paragraph 6b and Paragraph 6c of the Complaint" since the Panel was not able to find the corresponding paragraphs in the Complaint. The date for the Panel's decision was extended to July 23, 2002.
On July 11, 2002, the Center received a response from the Respondent by e-mail where she stated that her reference to "Paragraph 6.a, 6.b and 6.c of the Complaint" occurred because the Complainant had submitted its documents several times giving rise to confusion. She requested that Paragraphs 6.a, 6.b and 6.c of her response be amended to Paragraph 13. On the same day, the Center received the hardcopy of the amended response from the Respondent and a reply from MiYoung Lee by e-mail with the exhibits translated into English. On July 15, 2002, the Center received the hardcopy of the reply.
On July 22, 2002, the Panel found that there was a fundamental mistake in the complaint submitted by the Complainant since the person named as the Complainant was wrong. The Panel exercised its discretion and gave the Complainant an opportunity to amend its complaint. The Respondent was also given the opportunity to amend her response if the Complainant amended the complaint.
On July 26, 2002, the Center received the amended complaint from the Complainant by e-mail. On July 28, 2002, the Center received a reply to the amended complaint from the Respondent by e-mail. On July 30, 2002, the Center received the hardcopy of the amended complaint from the Complainant. On August 2, 2002, the Center received the hardcopy of the reply from the Respondent.
The Panel finds that the Center has discharged its obligations and responsibilities under the STOP, the STOP Rules and the WIPO Supplemental STOP Rules, and will issue its decision based on the statements and documents submitted and in accordance with the principles of law, which the Panel deems to be applicable.
4. Factual Background
In its complaint, the Complainant requests for the said Domain Name to further its business. Paradise Group ("the Group") was established in 1972 with the founding of Paradise Investment & Development Co. Ltd., which subsequently merged with other companies. It later changed its name from Paradise Investment & Development Co. Ltd. to Paradise Co., Ltd. The Group has evolved from a casino operator to a major business group for a host of business activities which include gaming, hotels, leisure, tourism, manufacturing, construction and finance. As a pioneer and leader of Korea’s flourishing gaming, hotel, leisure and tourism industries, the Group is a major force in the development of tourism resources and the improvement of Korea’s tourism trade balance. It is a leader in the creation of a sound leisure culture. The Group is also contributing to the national economy through sound corporate management in manufacturing and construction. The Complainant owns and operates Paradise Walker Hill Casino (Walker Hill Casino), the largest casino operation in Korea. The Group is known as the pioneer of Korea’s gaming industry and is a respected consultant in the development and management of casinos throughout the world. Paradise Walker Hill Casino is the main site of the Group. Paradise Busan Co., Ltd. manages Paradise Casino Busan, the only gaming corporation in Busan, the largest city next to Seoul in Korea. It offers a means of leisure to foreign visitors for the purposes of business and sightseeing. Paradise Jeju Co Ltd. runs Paradise Grand Casino and Paradise Hotel Jeju. Paradise Grand Casino is the leading business company among eight other casinos in Jeju. It makes the biggest profits in the casino industry in Jeju and contributes to the economy. Paradise Hotel Jeju is located in Seogwipo Jeju, which is the most famous sightseeing city in Korea. Opened in 1963, Paradise Hotel Jeju has been loved and praised by visitors from far and near. Known affectionately as the "Honeymoon House", Paradise Hotel Jeju has been a home to many VIPs including the former Korean President, Rhee Seung-Man, who made the hotel his country retreat. Paradise Hotel Jeju offers a majestic view of the ocean and surrounding cliffs and a selection of six different room decors. It is the greatest hotel in Jeju. In 2001, it was accepted to join Relais & Chateaux, an international association of hotels under a globally recognized and reputed label. To be part of the Relais & Chateaux, there are complicated procedures to ascertain the 5Cs–Courtesy, Charm, Character, Calm and Cuisine. Paradise Hotel Jeju showed its quality and fame when it joined the Relais & Chateaux. Paradise Hotel Busan was the place that drew the 2002 World Cup teams. It is the greatest hotel in Busan and is used by national guests. It stands at par with worldwide hotels and provides not only hotel but also luxury shopping services. Paradise Hotel Dogo is located in Asan city, which has one of the best sulphur springs in Asia. The hotel combines the best of spa and leisure facilities for family fun in a sophisticated style. Paradise Hotel Incheon Co Ltd., which manages Paradise Olympos Hotel & Casino, was opened in 1965. Paradise Olympos Hotel is the best business hotel with 175 rooms and various subsidiary facilities in proximity to the Incheon International Airport. Paradise Incheon Olympos Casino, known as the earliest casino site in Korea, contributes to the economic development of Korea by earning foreign currency. As a result of efforts to establish a reputation for excellence, Paradise Golf Club, located at Korea’s island of Jeju, became the first club in Korea to win approval from LPGA. The course won worldwide attention in 1995 as the site for the LPGA World Championship, whose winner was Annika Sorenstam. Paradise Golf Club plans to include an international convention center, a state-of-the-art health club, a bowling alley, an indoor swimming pool and an expansive grass playing field suitable for croquet and soccer games. Paradise Leisure Co. Ltd. hosted the third Paradise Lady’s Open in 2001. Paradise Duty Free Shops are located in Busan, Kyunju and Daegu city. Busan shop is conveniently located near Paradise Hotel & Casino Busan to serve as a tourist one-stop service center. Offering professionalism and specialization in all matters related to the construction of hotels requiring high aesthetic standards, Paradise Construction Industrial Co. Ltd. is rapidly developing a reputation for its superior construction of apartments and residences. As the first domestic firm to develop and produce sprinkler systems, Paradise Industry Co., Ltd. has evolved into Korea’s specialty manufacturer of fire prevention, detection and control systems. It is registered with Korea's over-the-counter stock market exchange, KOSDAQ. Paradise Mutual Savings & Finance Co., Ltd. is a leading financial company in the Busan area. It contributes to the stimulation of the regional economy by providing a variety of special products to the public especially to those of the lower socio-economic level. Paradise International Co. Ltd. is a local corporation in Japan for the publicity of the Group. Paradise Safari Park Hotel, also known as the "Mini Village" or "Safari Park City", is located between Nairobi, the capital of Kenya, and Thika, a hub of the Kenyan industry. It runs a casino and serves as a business and resort hotel. It is among one of the world’s finest hotels and it stands as a symbol of Africa’s entire hotel industry. The affiliates of the Complainant run their businesses using the trademark "Paradise".
In her response, the Respondent states that she has established a firm known as "Paradise" for "Internet real property information offer" on March 5, 2002. Her business is divided into several parts i.e. Internet real property (offering sales and information), Internet travel information, e-consulting and others.
5. Parties' Contention
In its complaint, the Complainant contends that although it has been running its business under the name "PARADISE" for a long time, the registration of its trademark "Paradise" was completed for the first time in 1988. It has kept possession of its rights to the trademark. Pursuant to the registration of its trademark "Paradise", it has exclusive and legitimate rights in "Paradise". This should be noted by the Respondent who has applied to register and use the said Domain Name. The Complainant has several registrations relating to its trademark "Paradise" in Korea. The said trademark is also registered in many other countries to facilitate its international business activities. The Group has registered many domain names with Korea Network Information Center, the organization which runs .kr, Korea’s country code Top Level Domain. The registered domain names of each affiliate of the Group are <paradise.co.kr>, <paradisegroup.co.kr>, <paradise-casino.co.kr>, <paradisekeyna.co.kr>, <paradisehotelkeyna.co.kr>, <paradise-dfs.co.kr>, <paradise-ind.co.kr>, <paradisehotel.co.kr>, <paradise-gc.co.kr>, <paradisehoteljeju.co.kr>, <paradisejeju.co.kr>, <paradise-con.co.kr>, and <paradisehoteldogo.co.kr>. "Paradise" in Korean letters was also registered with Internet Keywords by Realnames. The other keyword registered for the Group was "Paradise Hotel" in Korean letters. Registration of "Paradise" in the Korean letters as an Internet keyword is deemed to reflect the unique brand and identity of the Complainant in using the Korean language. A result of the search on the Respondent, Youngmi Park, at "http://www.whobiz.biz" revealed that the Respondent was the registrant of 27 domain names. These domain names include names of famous cities and specific words, such as San Diego, Davos, Georgia, KOSDAQ (Korea's over-the-counter stock market), assurance, cook and banque (a commercial bank in the French language). It is difficult to find any common relationship among these domain names. The Respondent does not seem to have the right to register these domain names for her own business. The domain names should be considered as having been registered in bad faith by her for selling. She has not used the domain names including the said Domain Name for her own business. The registration of the said Domain Name by the Respondent makes it impossible for the Complainant to register its trademark "Paradise" in the .biz domain, which stands as a business identifier for the Complainant. This could disrupt its business. When searching for the Complainant on the Internet, most visitors would first try to type a domain name corresponding to that registered by the Respondent. Should the Respondent activate a website under the said Domain Name, visitors would be misled into believing that the Respondent was connected to the Group. The Respondent cannot reasonably use the said Domain Name for business purposes without infringing the Complainant’s rights in its trademark. The Complainant has made active use of its trademark in its business activities in Korea and other countries. It has sufficient rights and legitimate interests in the said Domain Name to further its on-line business.
In her response, the Respondent contends that based on an article reported in the Nihon Keizai Shimbun in Japan, she does not know whether the word "Walkman" is a common noun. She knows however that "Paradise" is a common noun. Everyone knows that. "Paradise" cannot be protected as a trademark and the Respondent relies on an Austrian case decision which refused protection for the word "Walkman". There are 2,720,000 hits on the Yahoo search engine if the word "Paradise" is keyed in. The many domain names include <pparadise.com>, <bali-paradise.com> and <radioparadise.com>. Many people use the word "Paradise" as may be seen in the web pages. It is a general word. It is used by many people and must be allowed to be used by everybody without any restriction on the Internet. The Respondent loves the Internet and enjoys the InternetNews. The word "Paradise" is an English word used and understood all over the world. It is more general than words like "InternetNews". The Complainant has no rights or legitimate interests in respect of the said Domain Name. The Respondent has obtained the said Domain Name by the fairest method. On March 5, 2002, she established a firm known as "Paradise" for Internet real property information offer. She has just rights and legitimate interests in respect of the said Domain Name. She did not register the said Domain Name for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant. The distribution method for Group 2B names (the domain names for which there were multiple applications) was by the Round Robin Selection Process as in lotteries. As the Respondent was unsure of her application, she submitted multiple applications to the Registrar. To carry out an effective business through the Internet, it is important to use easy and attractive domain names. Seriously, the issue is not how many domain names are reserved but for what purposes they are used. The Respondent’s business is divided into several parts: Internet real property (sales and information offer), Internet travel information, e-consulting and others. The domain names which she has acquired shall be used in connection with her businesses. To summarize, the regional names <deluxe.biz>, <paradise.biz> and <hub.biz> shall be used for travel information, real estate sales and information offering; <nasdaq.biz>, <kosdaq.biz>, <chasdaq.biz>, <assurance.biz> and <banque.biz> shall be used for financial information; <premium.biz>, <blue.biz>, <intelligence.biz> and <micro.biz> shall be used for e-consulting and the rest of the domain names shall be used for other things. The Respondent has so far not encountered any problem in using these domain names. They are not company names. They are general words, many of which can be seen in an English dictionary. "KOSDAQ" means Korea Securities Dealers Automated Quotations. It is not a company name but a generalized word in Korea. It has no IP Claims. "Banque" is a French generic word meaning "bank". "NASDAQ" is an acronym for National Association of Securities Dealers Automated Quotations. Chasdaq and Kosdaq are the benchmarks of NASDAQ. The Complainant uses several addresses such as <paradisegroup.co.kr>, <paradise.co.kr> and <paradise-casino.co.kr>. All of them have the country code Top Level Domain .kr. As of May 5, 2002, the Complainant has no domain names with ‘.com’ or ‘.net’. Nobody confuses the said Domain Name with <paradise.co.kr>. The Respondent cannot be said to violate paragraph 4 (b)(iv) of the STOP. She is unable to post web pages at the said Domain Name in view of the current administrative proceeding. She denies that she registered or used the said Domain Name in bad faith and states that she will never use the said Domain Name in bad faith. She now operates her homepage at "www.0315.com" but says that "www.0315.com" is unsuitable since her firm's name is Paradise. She needs the said Domain Name to carry out her business in China successfully. She strongly requests that her website be allowed to operate using the said Domain Name.
6. Discussion and Findings
The STOP requires the Complainant to prove the following elements in order to succeed against the Respondent:
i) The said Domain Name is identical to a trademark or service mark in which it has rights;
ii) The Respondent has no rights or legitimate interests in the said Domain Name; and
iii) It has been registered or is being used in bad faith by the Respondent.
The Panel notes that the Complainant has registered the trademark "Paradise" in Korea, Hong Kong, Kenya, Japan, Philippines and Portugal. Together with its affiliates, which carry the word "Paradise" in their company names, it has made extensive use of the trademark "Paradise". The Complainant has rights in the trademark "Paradise".
On making a comparison between the said Domain Name and the trademark, the Panel concludes that the second level domain (SLD) "paradise" is identical to the Complainant's trademark "Paradise".
6.2 Legitimate rights or interests
The Complainant says that since it has registered the trademark "Paradise" in Korea and several other countries and is actively using it, it has rights and legitimate interests in the said Domain Name. While it is the owner of a mark identical to the said Domain Name, the Respondent is not.
The Respondent says that she has established a firm in South Korea by the name of "Paradise" to carry out "Internet real property information offer". She has registered the said Domain Name for "Internet real property (sales and information offer), Internet travel information, e-consulting and others". She submits that she needs the said Domain Name for her real estate business. She has business interests in China. However, she has not provided an explanation for her choice of the word "Paradise" for the said Domain Name or for her firm. She is a natural person by the name of Youngmi Park. She is not commonly known as "Paradise". The Complainant is a member of the Paradise group of companies. Not only do the members of this group carry the word "Paradise" as part of their company names, they also engage inter alia in the construction of apartments and residences, in tourism and in the management of casinos worldwide as consultants. The activities contemplated by the Respondent may not be exactly the same as those engaged by the Complainant or its affiliates but they are related. For example, real estate business is closely linked to construction of apartments and residences; Internet travel information is linked to tourism and the same can be said about e-consulting and management consultancy of casinos. The Respondent ought to have taken note of these before registering the said Domain Name or making preparations to use it for her business.
The Panel finds that the Respondent has no rights or legitimate interests in the said Domain Name.
6.3 Bad faith
To support its contention that the registration of the said Domain Name is in bad faith, the Complainant points out that the Respondent is the registrant of several other domain names including those with such SLDs as San Diego, Davos, Georgia and KOSDAQ. The Panel agrees with the Complainant that there is no common element when all these names are taken together. The Respondent has provided no evidence which goes to show that she has made demonstrable preparations to use any of these domain names. It is difficult for the Panel to see how such domain names would be appropriate or relevant for the business activities, for which her firm is registered in Korea. It is not unreasonable to conclude that the domain name registrations were effected by the Respondent merely to sell them to others.
As to the said Domain Name, it is to be noted that the Respondent has a place of business in Korea where the word "Paradise" is extensively used by the Complainant and its affiliates. Her choice of the same word as an essential part of the said Domain Name cannot be accepted as having been done in good faith. A person keying in the word "Paradise" to seek information concerning the Complainant may be led to her website instead. This will create confusion. Internet users may be led to believe that the Respondent is connected with the Complainant in some way or other. The business activities of the Respondent, if any, have the potential of being mistaken for those of the Complainant.
The Panel finds that the said Domain Name has been registered by the Respondent in bad faith.
The Panel orders that the said Domain Name be transferred to the Complainant.
Dated: August 10, 2002