WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park
Case No. D2003-0989
1. The Parties
The Complainants are Groupe Industriel Marcel Dassault and Dassault Aviation, both located at Marcel Dassault, Paris, France, represented by Cabinet Ores of Paris, France.
The Respondent is Mr. Minwoo Park of Buchun-City, Kyungki-Do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <dassault.com> is registered with HANGANG Systems Inc. dba Doregi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2003, and December 15, 2003, (by e-mail and hard copy, respectively). On December 12, 2003, the Center transmitted by email to HANGANG Systems Inc. dba Doregi.com a request for registrar verification in connection with the domain name at issue. On December 17, 2003, HANGANG Systems Inc. dba Doregi.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 18, 2003. The Center verified that the Complaint together with the amendment to 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 December 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2003. The Response was filed with the Center on December 30, 2003. A late Response was also filed with the Center on January 30, 2004 and forwarded to the Panel.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 19, 2004. 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.
An extension of the due date of the decision from February 6, 2003, to February 13, 2003, was granted on February 5, 2003.
4. Factual Background
(a) The Complainants are part of a world-renowned industrial group focused primarily on the aeronautics business. The Complainantsí companies include, without limitation, Dassault Aviation, Dassault Falcon Jet, Dassault Multimedia, Dassault Investissements and Dassault Systemes. Dassault Aviation by itself has more than 12,000 employees and operates in over 70 countries.
(b) The Complainants own numerous trademark and service mark registrations in various countries throughout the world, including in the Republic of Korea (collectively the "Dassault Marks"). The Complainants also have a substantial presence on the Internet and maintain various business-supporting websites.
(c) The Complainants have spent substantial resources in advertising and promoting their products and services under the Dassault Marks and, accordingly, have built the reputation and goodwill of the Complainants.
5. Partiesí Contentions
The Complainants assert, inter alia, as follows:
(i) The domain name <dassault.com> (the "Domain Name") is identical or confusingly similar to the Dassault Marks as the Domain Name incorporates the entire well-known Dassault name.
(ii) The deletion of the generic and non-distinctive terms such as "aviation" or "groupe" is insignificant.
(iii) The Respondent is not affiliated with the Complainants in any way, and the Complainants have not authorized the Respondent to use and register the Dassault Marks or to seek the registration of any domain name incorporating the Dassault Marks.
(iv) The Respondent has no legitimate interest in or prior rights to the Dassault Marks.
(v) The Respondent is not known under the name "Dassault", and it is not the family name of the Respondent.
(vi) The Domain Name is not used but merely provides a link or redirection to another website owned by the Respondent.
(vii) The Respondent is not making legitimate non-commercial or fair use of the Domain Name as there is an active website offering electronic goods to Internet users.
(viii) The modification of the name of the Respondent's business demonstrates Respondent's intention to create arguments to oppose the Complainants.
(i) The Respondent has primarily focused on concerns about the appropriate language for the proceeding.
(ii) The Respondent also apparently believes that by naming his Korean business "디지탈엇설트 D-ASSAULT.COM" he has obtained certain legal rights to the Domain Name that would preclude transfer.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language. The Respondent asserts that all documents in this dispute resloution proceeding should be filed in the Korean language, which was the language of the registration agreement for the Domain Name, whereas the Complainant asserts that English should be the language of the proceeding.
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the partiesí level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, even if the registration agreement for the Domain Name was made in the Korean language, it is apparent from the written communications exchanged among the parties that the Respondent seems to have little difficulty in communicating in the English language. The English used by the Respondent in his letters demonstrates his ability to understand and communicate in English without difficulty.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were required to submit all documents in Korean, the arbitration proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panelís discretion, Korean language documents submitted, have been reviewed by the Panel.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".
In light of the above, the Panel may draw such inferences from the Respondentsí failure to comply with the Rules as considered appropriate (see Paragraph 14(b) of the Policy; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Complainantsí trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Domain Name is <dassault.com>. As mentioned above, the Complainants own numerous trademark and service mark registrations, the "Dassault Marks", in various formats.
The Domain Nameís differences from the Dassault Marks are minor, namely the mere suppression of the generic non-distinctive words such as "groupe" or "aviation".
These difference are legally inconsequential and do not prevent a finding of confusing similarity (see, e.g. Viacom International Inc. v. Erik Peterson, WIPO Case No. D2001-0346). It is well established that the mere addition of ".com" is not a distinguishing feature and does not change the likelihood of confusion (see Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Guinness UDV North American, Inc. v. UKJENT, WIPO Case No. D2001-0684).
D. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainants have asserted that the Respondent has no relationship with or authorization from the Complainant for using the Dassault Marks; that the Respondent had no prior rights or legitimate interests in the Domain Name; and that the Respondent has not been commonly known by the Domain Name. The Panelís view is that facts must be taken as proven provided that they have not been denied by the Respondent. Respondentís Korean "business license" is not persuasive. On the contrary, when reading the Korean language portion of the business name, if reads (when transliterated into English) "digital assault", not the Domain Name.
E. Registered and Used in Bad Faith
Under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the Registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainantís trademarks and service marks are very well known worldwide, it is very unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Dassault Marks. This is particularly evident in this case as the Respondent resides in Korea, and there were extensive reports in both the Korean and the international media regarding Koreanís "F-X Project" which was primarily a competition between Complainantsí Rafale and Boeingís F-15K fighter jets (a Russian company was a less serious competitor in the bidding process)(see Annex 17 of the Complaint).
Respondent is, in using the Domain Names, seeking to exploit user confusion by diverting Internet users away from the Complaintsí legitimate websites to Respondentís website for his own benefit and commercial gain. Diverting users in this misleading manner is further evidence of bad faith (see Viacom International Inc. v. Matrix Management and T. Parrott, WIPO Case No. D2001-1442).
Further, the Respondent is trading on the goodwill existing in the famous Dassault Marks to attract Internet users intentionally to Respondentís website for purposes of commercial gain. This constitutes evidence of bad faith use and registration under Paragraph 4(b)(iv) of the Policy (see Six Continents Hotels, Inc. v. Anti-Globalization Domains, WIPO Case No. D2003-0765; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
Moreover, it may be ascertained, along with the Panelistís findings in Kapiteeli Oy v. John Denver (WIPO Case No. D2003-0333) that "if the domain name should be kept in the Respondentsí name, there is a risk that the intellectual property rights of the Complainant could be infringed more seriously in the future, if the Respondent would cause the domain name to resolve to [Ö] the website of a competitor". The continued existence of the Domain Name in the name of the Respondent may erode the goodwill of the Dassault Marks and create confusion, as people accessing the Internet may associate the Domain Name with the Complainants and the Dassault Marks.
The Respondent has some history in registering domain names in order to sell them. He owns at least 20 domain names, including such well-known and registered trademarks as "Helan", "Verducci", "Pamex", "Cyberdex", "Ultramar" (see Annex 21 of the Complaint), and at least 11 other domain names which are proposed for sale to Internet users (see Annex 22 of the Complaint).
The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered the Domain Name in bad faith.
In light of the above, the Panel concludes that the Complainants have proven bad faith in registration and use on the part of the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <dassault.com> be transferred to the Complainants.
Thomas P. Pinansky
Date: February 12, 2004