WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A/S Dampskibsselskabet Torm v. Lee joohee
Case No. D2003-1001
1. The Parties
The Complainant is A/S Dampskibsselskabet Torm, of Copenhagen Ø, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Lee Jooh-hHee, of Banpodong Seochogu, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <torm.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2003. On December 19, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. As no standard verification response was received from eNom, the Center, on December 29, 2003, made a printout of the eNom WHOIS, 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 December 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 23, 2004.
The Center appointed P-E H Petter Rindforth as the Sole Panelist in this matter on February 5, 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.
The Projected Decision Date was February 19, 2004. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is a Danish limited company established in 1889 by Captain Ditlev Torm, and is thus one of the oldest companies in Denmark. The Complainant is active within the bulk and shipping industry and is present in all major harbours in the world.
The full company name is Aktieselskabet "Dampskibsselskabet Torm"; meaning "limited liability steam ship company Torm" in English. The family name of the founder has been used as the Complainantís main trademark ion all activities world wide since the establishment. The Complainant has applications/registrations of the trademark TORM "word" in a number of countries/regions, such as Bahamas, China, Cyprus, Denmark, European European Union, Hong Kong, India, Switzerland, China, Japan, Korea, Liberia, Norway, Panama, Philippines, Singapore, Switzerland andPhilippines, Hong Kong, India, Liberia, Panama, United States of AmericaSA, Bahamas, Cyprus and Korea. Copies of the Complainantís Danish national registration No. VR 2003 02740, as well as Madrid Protocol registration No. 811 153, for TORM word mark are submitted as Annex 6 of the Complaint.
The Respondent registered the Domain Name on September 2, 2002 (Annex 1 of the Complaint), however no specific information is provided about the Respondentís business activities (apart from what is mentioned below under 5A).
5. Partiesí Contentions
The Complainant states that it has, through the intense and long yearits long and continuous use of the trademark TORM, acquired significant goodwill in the name and there can be no doubt that the Complainant has a common law trademark right through this intense use. Complainant refers to the Danish Trademark Act, section 3 (Annex 5 of the Complaint), indicating two ways of acquiring a trademark right, by registration or by use.
The Domain Name is identical to the trademark of the Complainant and causes a great deal of confusion among the customers. The disputed Domain Name would be the most natural place to look on the Internet if one were to find a site of the Complainant.
The Respondent registered the Domain Name on September 2, 2002 and has, to the knowledge of the Complainant, not used the Domain Name since the registration.
Complainant contacted the Respondent by e-mail in the summer of 2003 (copy of e-mail correspondence between the parties provided as Annex 7 of the Complaint). The Respondent has informed Complainant that she plans to use the Domain Name for a "fancy site," which the Complainant understands as a website containing pornographic material. The Respondent indicated that US$1,000 is "not worth a farthing" to her.
The Complainant contends that there are no indications that the Respondent has actually done any business of any kind using the trademark, service mark or company name TORM. The Complainant therefore concludes that the Respondent has no rights or legitimate interest in respect of the Domain Name.
There is no evidence known to the Complainant of the Respondents use or 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 that the Respondent has been commonly known by the Domain Name.
The Complainant further contends that the e-mail correspondence between the Complainant and the Respondent clearly shows that the Respondent is with full intent trying to tarnish the trademark/service mark of the Complainant by threatening to establish a pornographic website, hoping that this threat will lead the Complainant to pay the Respondent a valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the Domain Name.
After the initial contact with the Respondent the Complainant tried to contact the Respondent once again. Having failed in doing so, the Complainant initiated an investigative action in order to find further information on the Respondent. Annex 8 of the Complaint is a copy of a report from the Korean Investigating Company Markroad Co., Ltd, showing that the Respondent is part of a company called Venture.com, Inc. The primary purpose of this company is to buy and sell domain names. Among others this company has registered and sold the domain name <mytravel.com> (Mytravel being the trademark of a very well-known Scandinavian travel agency), as well as <imt2000.com> (after the Swedish company Ericsson failed to renew the domain name).
The Complainant Ė referring to the investigative report Ė concludes that it is clear that the Respondent;
(i) is part of the company Venture.com, Inc, whose primary business is to buy and sell domain names;
(ii) is familiar with Scandinavian businesses in general;
(iii) has in several prior instances bought and sold domain names to trademark owners for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name;
(iv) also registered the disputed Domain Name with the purpose of selling the same to the owner of a corresponding trademark;
(v) registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name;
(vi) has engaged in a pattern of such conduct.
The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The relevant part of the Disputed Domain name is <torm.com>, which is identical to the Complainantís trademark No. VR 2003 02740 TORM, registered in Denmark on August 11, 2003 (application filed July 8, 2003).
The Domain Name was registered on September 2, 2002. However, as stated in Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed Domain Name predates Complainantís trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
The Panel therefore concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is obviously not an authorized agent or licensee of the Complainantís products or services and has no other permission to apply for any domain name incorporating the trademark TORM. The Respondent does not seem to be commonly known by the Domain Name.
By not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
In addition, the fact that the Domain Name does not resolve to any active webpage indicates that, before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent's general informationcomment to the Complainant that she plans to use the Domain Name for a "fancy site," cannot counts as a proof of good faith preparations of use, especially as Respondent has not provided any further information or business plan for the alleged future use.
The Panel therefore concludes that the Respondent has no legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith.
As stated above, the disputed Domain Name predates Complainantís Danish and International trademark registrations and all pending applications seems to have been filed after the date of registration for the Domain Name. Further, the Respondent is not a competitor of the Complainant.
The Complainant asserts that it has been doing business under the trademark TORM since 1889, and that it is doing business worldwide. This Panel notes that Complainant has not provided any specific information regarding its use of TORM in the Republic of Korea, the country of the Respondent. However, Korea is presumably included in the term "worldwide."
The Complainant further states that it has, through the intense and long use, common law trademark rights in the TORM mark. This Panel has, in the absence of any contradicting facts or arguments from the Respondent, no reason to question this statement.
The Respondent informed the Complainant on June 20, 2003 (Annex 7 of the Complaint), that she planned to use the Domain Name "in next year for Korean fancy site," which the Complainant interpreted as a website containing pornographic material. The Panel notes that there are a number of different "fancy sites" on the Internet, regarding such various subjects as needlework, cat fashion, casinos, foods, designs as well as pornographic material. The Respondent has however not contested the allegations of the Complainant and therefore this Panel accepts the Complainants meaning of the term "fancy site" in this particular case.
Further, the Respondent refused to transfer the Domain Name to the Complainant for the sum of US$1,000, stating that this offer was not "worth a farthing." The investigation conducted by the Complainant shows that the Respondent is a representative of the company Venture.com, Inc, which seems to be in the business of buying and selling domain names.
Considering the above and that Respondentís company Venture.com, Inc., has previously been involved in the acquisition and sale of domain names including well-known Scandinavian trademarks, the Panel finds it likely that the Respondent registered the disputed Domain Name with the Complainants trademark in mind and primarily for the purpose of selling it to the Complainant for valuable consideration in excess of her documented out-of-pocket costs directly related to the Domain Name.
The requirement of the Policy of a domain name "being used in bad faith" is not limited to positive actions. In this particular case, the following actions are considered as use in bad faith:
- Respondent has failed to provide evidence of any legitimate commercial, non commercial or fair use of the Domain Name,
- Respondent has refused to transfer the Domain Name to the Complainant, indicating that the offer of US$1,000 was not enough,
- Respondent has not contested the allegations that she has threatened to set up a pornographic site under the Domain Name,
- Respondent is involved in the business of acquisition and sale of domain names,
- Respondent has documented knowledge of Scandinavian trademarks as domain names, and thus the value of those.
Given the above circumstances, the Panel concludes that the Domain Name is both registered and used in bad faith.
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, <torm.com> be transferred to the Complainant A/S Dampskibsselskabet Torm.
P-E H Petter Rindforth
Dated: February 19, 2004