WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Polaroid Corporation and Petters Group Worldwide, LLC v. BK Jeong
Case No. D2006-0486
1. The Parties
The Complainants are Polaroid Corporation, Waltham, Massachusetts, United States of America and Petters Group Worldwide, LLC, Minnetonka, Minnesota, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is BK Jeong, Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <pettersgrouppolaroid.com> is registered with HANGANG Systems Inc. d/b/a Doregi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2006. On April 18, 2006, the Center transmitted by email to HANGANG Systems Inc. d/b/a Doregi.com a request for registrar verification in connection with the domain name at issue. On April 20, 2006, HANGANG Systems Inc. d/b/a 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 Complainants filed their request for English to be the language of the administrative proceedings on April 28, 2006. The Center notified the parties that the Complaint would initially be accepted in English, reserving the ultimate decision for the Panel, and allowing the parties to submit documents in either English or Korean. 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 May 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on June 2, 2006.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on June 15, 2006. 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.
4. Factual Background
The Complainants are Polaroid Corporation (hereinafter referred to as “Polaroid”) and Petters Group Worldwide, LLC (hereinafter referred to as “Petters Group”).
The Complainant Polaroid is a corporation that was founded in 1937 and manufactures photographic, consumer electronics and eyewear products. As an example of the scope of Polaroid’s business activities, from 1999 to 2005, Polaroid spent in excess of US$ 700,000,000 on worldwide advertising of its photographic products alone. During this same period, Polaroid achieved worldwide sales in excess of US$ 7,400,000,000. It is also the owner the mark POLAROID, which is protected by more than 1,000 registrations throughout the world, including in the Republic of Korea. It registered and uses various domain names that incorporate the mark POLAROID, including but not limited to <polaroid.com>, which it registered in 1988.
The Complainant Petters Group, founded in 1988, is a company that creates, develops, finances and invests in companies that manufacture, procure and market merchandising solutions for key growth markets. It owns a United States of America federal trademark registration for the mark PETTERSGROUP, and uses pettersgroup.com (registered in 2002) as its website. Prior to the commencement of these proceedings, Petters Group acquired the Complainant Polaroid, the plans for which were publicly announced on April 27, 2005.
The Respondent appears to be an individual residing in the Republic of Korea. The Respondent obtained registration of the disputed domain name on April 27, 2005, the very same day that the acquisition of Polaroid by Petters Group was announced.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical or confusingly similar to marks in which the Complainants have rights. More specifically, the subject domain name is a simple combination of the Complainants’ trademarks for POLAROID and PETTERSGROUP, which are not only protected by trademark registrations but are also famous.
The Complainants also contend that the Respondent has no rights or legitimate interests in the subject domain name. More specifically, the Complainants assert that the Respondent’s use of the disputed domain name thus far cannot be viewed as a bona fide offering of goods or services. Further, there is no indication that the Respondent is commonly known by or has any rights to the terms that comprise the disputed domain name.
Finally, the Complainants contend that the domain name was registered and is being used in bad faith. More specifically, the Complainants point out the fact that the disputed domain name was registered on the same day the acquisition was publicly announced. Further, in the course of discussions between the parties, the Respondent suggested sale of the disputed domain name to the Complainants for a minimum acceptable price of US$ 120,000.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Language of the Proceedings
The default language of the proceedings is Korean, but the Complainants submitted arguments as to why the proceedings should proceed in English, without the necessity of submitting a translated complaint in the Korean language. The Center proceeded, and advised the parties that the Center would accept the Response in either Korean or English. The parties were further advised that the ultimate decision regarding the language of the proceedings would be within the discretion of the Panel, and that the Panel may request translations from either Party. The notice provided by the Center to the parties was in both English and Korean to accommodate the situations of the parties. The Respondent subsequently chose to not submit a Response.
The Complainants have stated that they cannot communicate in the Korean language. On the other hand, it appears that the Respondent has sufficient ability to communicate in English. For example, the content displayed by the Respondent when the disputed domain name was discovered by the Complainants was entirely in English. Subsequently, the Respondent linked the disputed domain name with a domain name parking service in the United States of America (i.e. domainsponsor.com), which certainly would have required the use of English to establish the relationship, and which also displayed content entirely in English as well. Moreover, there is a history of communications between the parties entirely in English, the records of which clearly indicate that the Respondent is fully capable and competent in the English language. Finally, the Respondent has chosen to not participate in these proceedings, undermining any reasonable basis for rendering this decision in a language the Complainants cannot understand.
In view of the points noted above, the Panel finds that the principles of paragraph 11 of the Rules would be best served by accepting the filings in the preferred language of the parties, and rendering the decision in the English language. Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
A. Identical or Confusingly Similar
The Complainants have submitted evidence proving ownership of trademark registrations for the mark POLAROID as well as the mark PETTERSGROUP. The disputed domain name is merely a combination of these two registered trademarks in their entireties. As such, there is little if any basis to deny that the disputed domain name is identical or confusingly similar to the Complainants’ trademarks. Therefore, the first element (paragraph 4(a)(i) of the Policy) has been established.
B. Rights or Legitimate Interests
The Respondent has declined to offer any assertion or explanation as to his rights or legitimate interests in the disputed domain name. The Panel accepts that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this. Further, this Panel agrees with the Complainants in that there appears to be little possibility of the Respondent establishing such a right or interest in view of the circumstances of this case.
For the reasons given above, this Panel finds that the second element (paragraph 4(a)(ii) of the Policy) has been satisfied.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name (consisting of the name of the involved companies) on the same day the acquisition of Polaroid by Petters Group was publicly announced. There is little doubt in the view of this Panel that this case is a classic example of opportunistic cyber-squatting. Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973 (ordered transfer of <daniscogenencor.com> where respondent obtained the registration two days after the public announcement of the merger of the complainants); NBC Universal, Inc. v. Junak Kwon, WIPO Case No. D2004-0764 (ordered transfer for <nbcuniversal.com>). This conclusion is confirmed by the history of contacts between the parties before the Complaint was filed, where after several exchanges, the Respondent attempted to sell the disputed domain name to the Complainants for a price of US$ 120,000. Obviously, this amount can only be described as excessive and indicative of the Respondent’s bad-faith intentions.
Finally, this Panel notes that the Respondent is no stranger to administrative proceedings under the Policy or to this Panel. In fact, the Respondent here was the respondent in the Danisco Genencor case cited above, which this Panel decided.1 It appears that the Respondent is back to his old tricks and has not changed his ways.
For the reasons given above, this Panel finds that the third element (paragraph 4(a)(iii) of the Policy) has been satisfied.
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 <pettersgrouppolaroid.com>, be transferred to the Complainants.
Dated: July 10, 2006
1 This Panel, having the full record for both this case as well as for Danisco Genencor, was able to conclusively determine that the Respondent is indeed the same for both cases – notwithstanding the slight variations in the spelling of the Respondent’s name in the registration records.