WIPO Arbitration and Mediation Center



Ulrich Menten /Euroland Projektierungen GmbH v. Rgnames

Case No. DBIZ2002-00223


1. The Parties

The Complainant is Mr. Ulrich Menten of Euroland Projektierungen GmbH, Dienerreihe 2, 20457 Hamburg, Germany.

The Respondent is Rgnames, Youwon@3-903, 22 Hongeun-2-dong, Seodaemungu, Seoul 120-744, Republic of Korea.


2. The Domain Name and Registrar

The domain name at issue is <euroland.biz> and the Registrar is Wooho T&C Co., doing business as Rgnames.com.


3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on April 29, 2002 (electronic version), and on May 3, 2002 (hard copy). The Center verified that the Complaint satisfies the formal requirements of the Start-Up Trademark Opposition Policy for .BIZ (the "Policy") and the Rules for Start-Up Trademark Opposition for .BIZ (the "Rules"), and the Supplemental Rules for Start-Up Trademark Opposition Policy for .BIZ (the "Supplemental Rules"). The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is June 4, 2002.

On May 13, 2002, the Center transmitted via email to RGnames a request for registrar verification in connection with this case and on May 14, 2002, RGnames transmitted by email to the Center a verification response confirming that the true registrant is Mr. In Su Kim.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on June 4, 2002, a Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent at the email addresses given in the Complaint.

The Center advised that the Response was due by June 24, 2002. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to the Respondent at its above address.

On June 5, 2002, the Respondent sent the following communication to the Center

"STOP for euroland.biz

The domain was not bought by Registrar RGNames.com for speculation, but was purchased by the true registrant, whois In Su Kim address details as shown in the WHOIS data for the domain, and shown by Neulevel Registry. Information shown in the WHOIS record in respect of the registrant at this time is in error and should be corrected.

We have requested to change Registrant Info to Neulevel, but They couldn't do it without permmission from WIPO or NAF.

It will be a best way to resolve status of hold for this domain names.

So, Real Registrarnt could claim his/her right against Claimant.

Attached is a List of Domain Registrant with the name of RGNames.com by mistake."

As stated, attached to that email was a list of .biz domain names. In the light of that communication, on June 7, 2002, the Center passed this information to both parties, allowing the Respondent to identify the matter in the Response. On June 14, 2002, the Complainant responded to that communication attaching an extract from the Respondent's WHOIS database dated June 12, 2002, which lists the Respondent as the registrant with Mr. In Su Kim listed as the Administrative, the Billing and the Technical contact. That WHOIS database extract gives the same address for both the Respondent and Mr. In Su Kim. This would seem to indicate that Mr. In Su Kim is either the alter ego of the Respondent or has some other relationship with the Respondent.

No Response was received from the Respondent by the due date. On June 27, 2002, the Center sent Notification of Respondent Default to the Respondent copied to the Complainant at the same addresses to which Notification of Complaint and Commencement of the Administrative Proceeding was sent.

Having received on July 17, 2002, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Complainant's Supplemental filing of June 13, 2002, the Policy, the Rules, the Supplemental Rules and without the benefit of any Response from the Respondent.


4. Factual background

4.1 The Complainant and the Complainant Company

The Complainant is Mr. Ulrich Menten, Managing Director of Euroland Projektierungen GmbH, a German limited liability partnership with its principal place of business in Hamburg, Germany. The Complainant Company carries on real estate administration and management and real estate project development.

4.2 The Complainant's EUROLAND trademark

The Complainant is the registered proprietor or applicant, as the case may be, of the following trademark registrations and applications.


Application : Registration No.



Application / Registration Date


398 46 310



August 14, 1998

International Registration*




July 22, 1999

EU Community Trade Mark

App. No. 969,980




* IR 718,422 covers Switzerland, China, Latvia, Russia, Estonia and Lithuania.

4.3 The Complainant Company's Website

The Complainant Company's business activities are detailed at its "www.europrojekt.de" website, from which it is apparent that the company makes prominent use of the EUROLAND trademark.

4.4 The Respondent

In the absence of a Response, the only information before the Panel is that contained in the Complaint. The Respondent is also the Registrar of the domain name in issue. It is a Korean company. From its website <rgnames.com>, the Respondent would appear to offer various internet-related services. These include domain name registration.


5. The Parties' Contentions

5.1 The Complainant and the Complainant Company

5.1.1 Identical or Confusingly Similar

The domain name in issue is identical to the Complainant's trademark but for the ‘.biz’ suffix.

5.1.2 No Right or Legitimate Interests

- First, the Complainant states that trademark searches and Internet surveys carried out on the Respondent did not produce any evidence of ownership of a EUROLAND trademark.

- Second, the Respondent's website gives no indication of any actual use or preparations to use the domain name in connection with a bona fide offering of goods or services.

- Third, there is no evidence from the Respondent's website that it has been commonly known by the domain name in issue. Indeed, the Respondent is a professional domain name registration service in Korea.

- Fourth, the Respondent did not file any IP claim for the domain name in issue, the inference being that the Respondent has no trademark rights in the EUROLAND mark.

- Fifth, the Complainant has not licensed or otherwise authorised the Respondent to use the EUROLAND trademark.

5.1.3 Registered or Used in Bad Faith

Given the start-up period provided for in relation to the new gTLD ".biz", it is to be expected that a registrant would first take steps to check for the existence of any prior third-party trademark registrations identical to the proposed .biz domain name to be registered. Such would be a reasonable good faith precaution to be taken by a would-be registrant. It would, the Complainant suggests, have been prudent for a South Korean Company to check, for example, for prior trademark rights in China. China is a country designated by the Complainant's IR for EUROLAND (see, paragraph 4.2 above).

Further, the Complainant filed an IP claim in respect of its EUROLAND mark before March 27, 2002, when the Respondent obtained registration of the domain name in issue. The Respondent was, therefore, "on notice" of the trademark rights claimed by the Complainant but nevertheless, in total disregard, proceeded to register the domain name in issue.

In its Submission dated June 13, 2002 (see, paragraph 3 above), the Complainant pointed to the fact that the list submitted by the Respondent of domain names registered by it included well-known third party trademarks. For example, TIFFANY, FUJI, TOTAL, NEWSWEEK and EBAY. This, the Complainant says, is indicative of the Respondent's bad faith.

Finally, the Respondent's lack of rights or legitimate interests in the domain name (for the reasons set out in paragraph 5.1 2 above) is an indication of registration in bad faith.

5.2 The Respondent

No Response has been filed by the Respondent nor did the Respondent reply to the Complainant's cease and desist letter dated April 18, 2002, sent prior to commencement of this administrative proceeding.


6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following

(i) that the Respondent's 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 or is being used in bad faith.

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

6.4 Identical or Confusingly Similar

The domain name in issue, save for the gTLD ".biz" designation, is identical to the Complainant's EUROLAND trademark. The Complaint therefore satisfies the first limb of paragraph 4(a) of the Policy.

6.5 No Rights or Legitimate Interests

The business of registering and selling domain names is not, per se, indicative of a lack of rights or interests. Each case is to be considered in the context of the particular facts and circumstances. Here, however, there is no Response. Certainly, there is nothing to suggest that the Respondent could demonstrate that any of the circumstances in paragraph 4(c) apply in this case. The Complainant's contentions are compelling and the Panel finds that the Complaint also satisfies the second limb of paragraph 4(a) of the Policy.

6.6 Registered or Used in Bad Faith

6.6.1 The Panel agrees that the Respondent's apparent failure to check for third party trademark rights in the EUROLAND mark is indicative of registration in bad faith. This is, the Panel also agrees, compounded by the Respondent proceeding to register the domain name in issue when on notice of the Complainant's IP claim.

6.6.2 The Respondent has failed both to reply to the Complainant's cease and desist letter (paragraph 5.1.2 above) and to respond substantively to this Complaint.

6.6.3 The Panel has also found the Respondent to lack any rights or legitimate interests in respect of the domain name in issue.

6.6.4 The Panel further finds that the circumstances point to the Respondent having registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant for consideration in excess of the costs directly related to the domain name. This would not be inconsistent with the Respondent's business of providing a domain name registration service and being the registrant of domain names incorporating well-known third party trademarks (see, the Complainant's Supplementary Submission dated June 13, 2002, referred to in paragraph 3 above).

6.6.5 All the evidence points to registration of the domain name in issue by the Respondent in bad faith. There is no evidence of any actual use of the domain name but the Panel considers that the principles communicated in the Telstra case (WIPO Case No. D2000-0003) apply equally to disputes involving ".biz " domain names and are applicable in the present case. The Policy in relation to the new gTLD ".biz" does not require registration and use in bad faith, either will suffice under paragraph 4(a). In fact, the Panel considers that both are present in the circumstances of this case.

6.6.6 The Panel finds that the Complaint satisfies the third limb of the requirements of paragraph 4(a) of the Policy.


7. Decision

For all the forgoing reasons, the Panel decides that the Complaint succeeds in establishing the requirement of paragraph 4a(i) - (iii) of the Policy. In the circumstances, the Panel directs that the domain name <euroland.biz> be transferred to the Complainant, Mr. Ulrich Menten.



David Perkins
Sole Panelist

Date: August 1, 2002