WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kyobo Life Insurance Co., Ltd. v. Max

Case No. D2003-0008

 

1. The Parties

The Complainant is Kyobo Life Insurance Co., Ltd., 1, Jongro 1-ga, Jongro-gu, Seoul, 110-714, of Republic of Korea, represented by Shinsegi Law & Patent Office of Republic of Korea.

The Respondent is Max, c/o Lentz, Ted, 7409 S. Western Ave., Oklahoma, OK 73139, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <kyobo.com> is registered with Tucows, Toronto, Canada.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2003. On January 7, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 9, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2003. The Response was filed with the Center on January 30, 2003.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on February 14, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On February 3, 2003, the Respondent emailed the Center, requesting that the administrative proceeding be deferred or adjourned, because there was currently a proceeding concerning the domain name in the District Court of Seoul. The Center referred this request to the Panel at the time of forwarding it the Complaint and other papers. On February 18, 2003, the Panel advised the Center to inform the Respondent that it would continue to determine the proceeding, as the Respondent was registered as the owner of the domain name and any dispute between the Respondent and a third party was a matter for them, not the Panel. Due to exceptional circumstances, on March 14, 2003, the Panel extended the decision date to March 21, 2003.

 

4. Factual Background

The Complainant is a corporation formed in the Republic of Korea on August 8, 1958. According to the Complaint (par (2)), it was the first insurance company that handled educational expenses, and the original trade name of the Complainant (in English) was "Korean Education Insurance Co Ltd" (in Korean, "Dae-Han Kyo-Yook Bo-Hum Ju-Sik-Hoe-Sa"). It is noted in the Complaint that the word "Dae-Han" means "Korea", "Kyo-Yook" means "Education", and Bo-Hum" means "insurance". As this name was rather long for everyday usage, the Complainantís trade name was abbreviated to "Kyobo" by consumers, and has been used in this way for more than 35 years (Complaint, par (2)). In 1995, however, as it handled other forms of insurance besides education insurance, the Complainant changed its corporate name to "Kyobo Life Insurance Co Ltd" (in English) (Complaint, par (3)).

The Complainant is now one of the biggest life insurance companies in Korea, with assets of about $US2.2 billion, 5,618 employees and 79 domestic branch offices and 2 branch offices in Tokyo and New York (Complaint, par (4)). It also has a number of subsidiary companies that use "Kyobo" in their names (Complaint, par (5)). In addition, it has several Korean trademark registrations for the word "Kyobo" in respect of various goods (books, newspapers, etc) and services (insurance, financial, etc).

On July 19, 2001, the disputed domain name was registered in the name of "BigMart.com" of 820-8, Shinsung Bldg 4F, Yeoksam-dong, Kangnam-ku, Seoul, (South) Korea, but by November 14, 2002, had been transferred to "iContentsí of 2FL, Soam bldg, 699-20, Yoksam-dong, Gangnam-gu, Seoul (135-080), (South) Korea (Complaint, Annexes 7 and 8). There is no evidence as to when this transfer occurred. It then appears that the name was transferred to the Respondent ("Max") on December 24, 2002.

In July 2001, the Complainant alleges that a Mr. Kong visited the Marketing Department of the Complainant, as a representative of BigMart, offering to sell the disputed domain name for an unspecified price. It then appears that, in a later telephone call, a price of 10,000,000 Korean Won (US$8,000) was suggested by Mr. Kong, but the Complainant refused (Complaint, par (2)). Following the failure of these negotiations, Big Mart opened a website using the domain name offering "information of sexual matters of spouses during the honeymoon period" (Complaint, Annex 10). On this webpage, it is alleged that the domain name <kyobo.com> was "introduced" as "K-Yobo.com", "Yobo" being a common Korean name for one spouse to call another (Complaint, p 10). After the transfer to the present Respondent, it appears that the domain name was linked to a website for a Japanese movie with the title of "Sono otoko, kyob ni tsuki" meaning "The Man, to Ferocity" in English ((Complaint, Annex 13). It appears that "kyobo" in Japanese means "Fericity", "Brutality" or "Barbarity".

 

5. Partiesí Contentions

A. Complainant

The Complainant seeks transfer to it of the disputed domain name <kyobo.com>. In support of such a contention, it is necessary for a Complainant under the UDRP to address each of the elements described in paragraph 4(a) of the Policy. In substance, the Complainantís submissions on these points are as follows.

- With respect to the elements described in paragraph 4(a)(i), the Complainant has provided evidence of the four Korean registrations of the mark "Kyobo" and has asserted that the mark ĎKyobo" otherwise has a secondary meaning as the name of its business.

- With respect to the element described in paragraph 4(a)(ii), the Complainant argues that the Respondent has no rights or legitimate interests with respect to the domain name <kyobo.com>, saying that it is unaware of any person other than itself that has any rights in relation to the word "Kyobo". It also notes that the present Respondent has a business place in Oklahoma, USA, and that the Respondent may therefore be a US person. Given that "Kyobo" is not an English word, it therefore believes that the Respondent cannot have a legitimate right or interest in the word.

- With respect to the element of registration and use in bad faith as referred to in paragraph 4(a)(iii), the Complainant refers to the following circumstances:

The offer for sale of the domain name by Mr. Kong (see above).

The assertion that the present Respondent is a "professional domain name broker" (Complaint, Annex 12)

The linking of the domain name to the Japanese movie website (see above) and the likely damage that this will do the goodwill or celebrity of the Complainant in circumstances when the Korean consumers visit the website believing that this is the website of the Complainant.

The transfer from "iContents" to "MAX" may not be a real assignment, but was just done for the purpose of selling it to others, referring here to the fact that the Administrative Contact Information and Technical Contact are still a Korean Company (Complaint, Annex 14).

B. Respondent

On January 30, 2003, the Respondent filed a formal Response, which requested the Panel to suspend/terminate the current proceeding under par 18(a) of the Rules because the "domain name is in dispute in the District Court of Seoul". This was the only formal submission made by the Respondent. As noted above, on February 18, 2003, the Panel notified the Center that it would exercise its discretion under para. 18(a) to continue the proceeding.

 

6. Discussion and Findings

Although the Respondent has filed a formal Response (see above), this does not address any of the substantive arguments put in the Complaint. Accordingly, the Panel can only decide the dispute based on the Complaint: see paragraph 5(e) of the Rules. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".

In order for the Complainant to succeed, it must establish that each of the requirements outlined in par 4(a) are satisfied. Each of these is considered in turn below.

A. That the Complainant has rights in a trade or service mark with which the Respondentís domain name is identical or confusingly similar (paragraph 4(a)(i))

On the face of the Complaint as filed, the Complainant has satisfied the various requirements of this paragraph. It has provided evidence of its Korean trade and service mark registrations for "KYOBO", as well as some evidence of the longstanding use of "Kyobo" as part of its corporate name and as part of the corporate names of its subsidiaries. This is sufficient to show that it has "rights" in a trade or service mark, namely the registered marks referred to, as well as in the same marks as unregistered marks. Moreover, there is some evidence to suggest that the Complainantís trademark is, indeed, a well known mark, at least within Korea.

It is also clear that the second part of paragraph 4(a)(i) is satisfied, namely the disputed domain name is identical to or confusingly similar to the above trademarks. For the purposes of this comparison, it is appropriate to ignore the ".com" suffix in the disputed domain name: see further World Wrestling Federation Entertainment Inc v Michael Bosman, WIPO Case No D1999-0001 (January 14, 2000), (<worldwrestlingfederation.com> and WORLD WRESTLING FEDERATION) and InfoSpace.com, Inc v. Registrar Administrator Lew Blank, WIPO Case No D2000-0069 (April 3, 2000), (<infospaces.com> and INFOSPACE).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, the Respondent has provided no evidence that relates to any of the above matters. However, it is relevant to note that the Respondent has only been the registrant of the domain name for a comparatively short period of time, and the only "use" of the domain name that the Complainant has been able to identify is in relation the Japanese film web site. As "Kyobo" has a different meaning in Japanese, it might be possible to argue that this indicates a bona fide use of the name in connection with the offering of services, i.e. information about the Japanese film. As against this, the Respondent does not appear to be Japanese or Korean, has a US place of residence, and there is no explanation as to why he might choose such a Korean or Japanese domain name. It is also unclear whether this usage began before or after the transfer of the domain name to the Respondent.

In light of the above, it is difficult for the Panel to reach any clear conclusions on the second requirement of par 4(a). However, in view of the fact that the Respondent has provided no arguments or evidence in relation to these matters, it is prepared to infer from this that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i) (iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name can amount to use in bad faith when there it appears that there is no way in which such name could ever be used legitimately in relation to a business or offering of goods or services and the identity of the Respondent remains unknown: Telstra Corporation Ltd .v. Nuclear Marshmallows WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs 4(b)(i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early Panel decisions: see, for example, Estee Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No D2000-0869 and E & J Gallo Winery v. Hanna Law Firm, WIPO Case No D2000-0615.

In the present proceeding, the Complainant needs to point to particular circumstances that will demonstrate bad faith in registration and use of the domain name by this particular Respondent. There is evidence (uncontradicted) that an earlier registrant of the domain name (<bigmart.com>) engaged in conduct that would be relevant to para. 4(b)(i), but this occurred over 20 months ago and moreover there is no apparent link between BigMart.com and the present Respondent. Likewise, the linking of the disputed domain name to <K-yobo.com> was not done by the present Respondent, and therefore cannot be taken into account for the purposes of para. 4(b)(iv).

So far as the present Respondent is concerned, the relevant allegations of bad faith registration and use are as follows. First, that it is a "professional domain name broker". In this regard, reference is made to the list of domain names in for sale at anothermage@yahoo.com (the email address given for the Respondent Ė the list appears at Annex 12 of the Complaint). This list, on its own, however, cannot be sufficient evidence of registration and use in bad faith: see, for instance,<doctorswithoutborders.com>, WIPO Case No D2001-0515, a decision of the present panelist. However, it is worth noting that in the last mentioned case, it was observed that a stockpile of domain names for sale might still be suggestive of bad faith, when combined with other evidence. In the present case, the domain names registered by the Respondent are of a descriptive kind, and it may be thought that it is generally undesirable that the Respondent should have registered them simply for the purposes of resale to persons who might legitimately wish to use them in relation to their own businesses. None of these names is of quite the same kind as in the <doctorswithoutborders.com> case, but it is significant that the Respondent has not provided any explanation for its intentions and purposes in registering such names. While this would not, on its own, be sufficient for the purposes of a finding of bad faith, it suggests that the Respondentís activities in registering such a batch of names are not completely innocent, i.e. it cannot be said positively that these registrations were done in good faith, or that this is so in the specific proceeding before the Panel.

The second relevant allegation of bad faith is the linking of the domain name to the Japanese film web site and the damage that this is likely to do to the Complainantís business. Although the Panel has held that, on balance, this usage does not evidence any legitimate right or interest of the Respondent in the domain name (se above), it is more difficult to establish that this amounts to evidence of registration and use in bad faith falling within, for example, the kinds of circumstances outlined in para. (b)(iii) and (iv). The fact remains that the film is Japanese, has the word "Kyobo" as part of its title, and, as the Complainant acknowledges, this word has a particular meaning in Japanese, whereas in Korean it is a made-up word. It is possible that there will be confusion, as alleged by the Complainant, but there seems insufficient here to infer the kind of intention or purpose that is referred to in par 4(b)(iii) and (iv). On the other hand, the list of circumstances given in par 4(b) is not exhaustive, and it should be noted that the linking to the Japanese web page occurred at or after the time that the present proceeding was launched. At this stage, it can be inferred that the Respondent knew of the existence of the Complainantís trademark, and activated this link simply to provide a semblance of genuineness on his part. Again, the Respondent has provided no explanation of his link to the Japanese film web page, and the Panel is entitled to draw an adverse inference in the absence of any explanation.

A final matter relates to the alleged identity of the Respondent with the previous "iContent" registrant, so as to indicate that there was no real transfer of the domain name. In this regard, the Korean nationality of the Administrative Contact Information and Technical Contact Information that appear in the printout at Annex 14 of the Complaint are referred to, but it is unclear what the date of the printout is, and they appear inconsistent with the Oklahoma addresses given for the Administrative and Technical Contacts in the Registrar Verification received by the Center on January 9, 2003. Accordingly, the Panel cannot make any finding that the present Respondent is the same as the previous registrant, iContent. At the same time, it seems clear from the Response, and its reference to the court proceedings in Seoul, that the present Respondent has some connection to Korea, despite its US address. This, in turn, suggests that he must have had some knowledge of the Complainantís trademark, and that his domain name was exactly the same.

Taking each of the three matters referred to above together, and in the absence of any explanation from the Respondent, the Panel concludes that the registration and use of the domain name by the Respondent was done in bad faith, and that the requirement of par 4(a)(i) is satisfied.

 

7. Decision

The Complainant has satisfied the Panel on each of the three requirements of par 4(a), and the Complaint is therefore upheld. The Panel accordingly directs that the registration of the domain name <kyobo.com> should be transferred to the Complainant.

 


 

Staniforth Ricketson
Sole Panelist

Dated: March 21, 2003