WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorenje gospodinjski aparati, d.d. v. Ling Lee Sze
Case No. D2003-1009
1. The Parties
The Complainant is Gorenje gospodinjski aparati, d.d., of Slovenia, represented by Jure Marjanovič, Slovenia.
The Respondent is Ling Lee Szeof Yunnan , China.
2. The Domain Name and Registrar
The disputed domain name <gorenje.com> is registered with Intercosmos Media Group, Inc d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2003. On December 22, 2003, the Center transmitted by email to Intercosmos Media Group Inc d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 22, 2003, Intercosmos Media Group Inc d/b/a directNIC.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, on January 6, 2004, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 8, 2004. 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") on January 14, 2003.
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 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 5, 2004.
The Center appointed Dimitris Oekonomidis as the Sole Panelist in this matter on February 11, 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 Center received a late Response on February 11, 2004. The Panel, following paragraph 14(a) of the Rules has decided not to accept the Response, as it was filed outside the 20-day time period for filing a Response. The Panel notes that it has perused the documents and comments that the evidence therein would not have influenced any aspect of the Panelís decision in the case. The Panel also received supplemental filings from both parties on February 16, 2004. The Panel has chosen not to accept either of those filings.
4. Factual Background
The Complainant has registered its trademark GORENJE with the international registration by WIPO in Geneva, reg. no. 617 729, from May 16, 1994, in 30 countries, including China, in classes 7, 8, 9, 11, 12, 20 and 21 (Annex 3: copies of the certificate of international registration of the trademark GORENJE). The Complainantís basic activity is production of household appliances. (Annex 4: prospectus of the products (two issues) and website: "www.gorenjegroup.com").
The Complainant owns or deals with the following domains around the world: <gorenje.com>, <gorenje.at>, <gorenje.be>, <gorenje.ba>, <gorenje.cz>, <gorenje.dk>, <gorenje.fi>, <gorenje.fr>, <gorenje.gr>, <gorenje.hr>, <gorenje.it>, <gorenje.lv>, <gorenje.lt>, <gorenje.hu>, <gorenje.de>, <gorenje.no>, <gorenje.pl>, <gorenje.ro>, <gorenje.com.ro>, <gorenje.ru>, <gorenje.sk>, <gorenje.si>, <gorenje.se>, <gorenje.ua>, <gorenje.co.uk>, <gorenje.co.yu> and <gorenje.biz>.
The domain name at issue was registered on November 5, 1997, and last updated on August 4, 2002, in the name of the Respondent (Annex 1: copies of the printout of the database search conducted on December 17, 2003).
5. Partiesí Contentions
The Complainant contends that the domain name <gorenje.com> is identical with its trademark GORENJE that is registered and known world-wide. The words of the domain and trademark are spelled and pronounced the same, while the word gorenje has no meaning either in English or in Chinese, but only in Slovene.
The Complainant asserts that the Respondent has never actually used the name or mark GORENJE in connection with bona fide offering of any goods or services from the time the domain was registered until the date of this complaint. Further, the Respondent is not commonly known by the domain name and is not making a non-commercial or fair use of the domain name. The Complainant neither has permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.
Further the Complainant asserts that the Respondent Ling Lee Sze is probably a Chinese, so by owning the domain name at issue that has no meaning in Chinese or in any other language except Slovene, the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant mentions that on May 14, 2002, a representative from the law firm Baker & McKenzie sent in the name of Gorenje an e-mail to the Respondent with a demand to cease use of the domain name <gorenje.com> and transfer all rights in <gorenje.com> domain name to Gorenje (Annex 5: copies of the said letter). The Respondent has made no response. The Complainant mentions that by visiting the domain <gorenje.com> only a photo of an anonymous woman with heading "Gorenje.com from Asia with loveÖ"can be seen (Annex 6: the printout of the website "www.gorenje.com"). As the Complainant contends, this is added proof that the domain name at issue is registered in bad faith in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
Further, the Complainant mentions that it contacted Mr. V., who was an employee in Gorenje, d.d. from January 3, 1995, till October 1, 1995, and from May 6, 1996, till August 31, 1996, (now employee in Stonediver as an IT Senior engineer and Software Developer) (Annex 7: data of Mr. V.) as it was him who actually registered the domain name at issue. The respective registration was made on November 5, 1997, that is, clearly only two months after he left the job of the Complainant. The Complainant asserts that Mr. V. was not satisfied with his position and the results of his job, so he decided to leave Gorenje, d.d. According to the Complainant this fact is an additional proof that Mr. V. could not register the domain name <gorenje.com> in good faith but only in bad faith - with intent to force the Complainant to pay to get the domain name back. After a while Mr. V., probably because of the fear he would have to return the domain name to the Complainant, transferred the domain name (the exact date and persons to whom the domain name was transferred is not known to the Complainant). The Complainant contends that it tried to make an agreement with Mr. V. in 1998 to transfer the domain name to it, but Mr. V. declined, because the price the Complainant offered for the domain name (more than out-of-pocket costs) was not agreeable for him. As the Complainant asserts, one of its employees recently had an unofficial telephone conversation with Mr. V., where Mr. V. stated that he could establish contact with Ling Lee Sze or even intervene for the Complainant to get the domain name <gorenje.com> back. The Complainant argues that Ling Lee Sze could be a fictitious person whose name is being used by Mr. V.
Further the Complainant contends that the passive holding of the domain name at issue by the Respondent (inaction) amounts to the Respondent acting in bad faith, taking into consideration that the Complainantís trademark has a strong reputation and is widely known and the Respondent has taken active steps to conceal its true identity by operating under a name that is not a registered business name.
The Complainant maintains that every average consumer or user of the Internet, who wants to get some information about companies or products at first tries to get to it by typing www.+ company name+ .com. By opening the webpage "www.gorenje.com" many consumers will be confused and as a consequence, many of the consumers will stop their search for the Complainantís products on the web, which will cause the Complainant further damage.
The Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of its response. According to paragraph 14(a) of the Rules "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint." Therefore the Panel is not accepting the late response of the Respondent in deciding the case. The Panel considers that the Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the 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 and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances which indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct; or
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(i))
The domain name at issue, is identical or confusingly similar to the trademark GORENJE, in which the Complainant has rights. The words of the domain name at issue and the trademark are spelled and pronounced the same.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Since the adoption and extensive use by the Complainant of the trademark GORENJE predates the first entry of <gorenje.com> as domain name, the burden is on the Respondent to establish the Respondentís rights or legitimate interests the Respondent may have or have had in the domain name.
A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant.
In this case, the Respondent neither has been authorized by the Complainant nor has independent rights to use the GORENJE trademark or to register the domain name at issue. The Respondent does not own any registered or common law marks containing the term "gorenje." The Respondent has not conducted any prior business under the name GORENJE in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain name either as an individual or a business. The Respondent is not making any legitimate non-commercial or fair use of the contested domain name. The objective of the registration appears to have been to divert persons looking for the Complainantís website.
It is apparent that the Respondent registered the domain name <gorenje.com> for the purpose of capitalizing on the Complainantís trademark GORENJE and profiting from the international and domestic goodwill that the Complainant has built up in its trademark.
The Respondentís lack of a legitimate interest in the domain name at issue is also evident in the fact that the Respondent registered the domain name after the Complainant had registered the trademark GORENJE.
All the above support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
(Policy, paras. 4(a)(iii), 4(b), Rules, para. 3(b)(ix)(3))
To support bad faith, the Complainant relies on essentially the same facts upon which it relies to establish the other ingredients of its case.
A finding that a respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.
The context of the registration and use of the subject domain name by the Respondent including the relationship between the Respondent and a former employee of the complainant, taking into consideration the strong reputation of the Complainantís mark, the business activities the Complainant has carried on, are facts which constitute evidence from which an inference of bad faith may be made.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the contested domain name <gorenje.com> be transferred to it. The Administrative Panel so orders.
Dated: February 26, 2004