WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Carphone Warehouse Limited and The Phone House B.V. v. Choi Young Suk
Case No. D2007-0921
1. The Parties
The Complainants are The Carphone Warehouse Limited, London, United Kingdom of Great Britain and Northern Ireland, and The Phone House B.V., Amersfoort, the Netherlands, both internally represented.
The Respondent is Choi Young Suk, Seoul, Republic of Korea.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <thephonehouse.com> is registered with Cydentity, Inc. dba Cypack.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2007 initially against the previous registrant CIT Solution. On June 25, 2007, the Center transmitted by email to Korean Information Certificate Authority Inc. d/b/a DomainCa.com, the concerned registrar of the domain name at issue at the time of filing of the Complaint a request for registrar verification in connection with the domain name at issue. On June 28, 2007, Korean Information Certificate Authority Inc. d/b/a DomainCa.com informed by email to the Center that the domain name at issue was no longer registered with it but with Cydentity, Inc. dba Cypack.com. On July 14, 2007, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification. On July 16, 2007, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Upon the Complainants’ request to suspend this administrative proceeding on July 19, 2007, the proceeding was suspended for two weeks and, thereafter, was reinstituted on August 2, 2007. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on August 3, 2007 indicating both the previous registrant and the current registrant as the Respondent. 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 August 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2007. The Respondent did not submit a formal Response. Accordingly, the Center notified the Respondent’s default on August 29, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 14, 2007. 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 own the following registered trademarks (“the Trademarks”):
a. United Kingdom trademark PHONE HOUSE with registration number 2147317, registered on October 3, 1997 for goods and services in classes 09, 36, 37 and 38 (owned by The Carphone Warehouse Limited);
b. Community trademark PHONE HOUSE number E1814052, registered on August 17, 2000 for goods services in classes 09, 36, 37 and 38 (owned by The Phone House B.V.); and
c. Community trademark PHONE HOUSE number E1974914, registered for goods and services in classes 19, 35, 36, 38 and 42 (owned by The Phone House B.V.)
The Complainants have been using the Trademarks for many years, either directly or via license agreements with companies that are part of The Carphone Warehouse Group PLC.
The website “www.phonehouse.com” shows the extent to which the Community trademark PHONE HOUSE is being used in European countries such as Portugal, Spain, France, Belgium, the Netherlands, Germany, Switzerland and Sweden.
In addition, the Complainants own various domain names which incorporate their registered trademarks such as:
The disputed domain name was registered on March 16, 2003. According to the publicly accessible WhoIs data on June 25, 2007, the registrant of the disputed domain name was CIT Solution and the Registrar was Korean Information Certificate Authority Inc. d/b/a DomainCa.com. According to the registrar verification response received from Korean Information Certificate Authority Inc. d/b/a DomainCa.com on June 28, 2007, the Registrar is identified as Cydentity, Inc. dba Cypack.com. According to the WhoIs information on July 16, 2007, the registrant of the disputed domain name is listed as Choi Young Suk and the Registrar as Cydentity, Inc. dba Cypack.com. According to the registrar verification response received from Cydentity, Inc. dba Cypack.com on July 16, 2007, the registrant of the disputed domain name is Choi Young Suk and the Registrar is Cydentity, Inc. dba Cypack.com
The Complaint was filed with the Center on June 22, 2007. It would therefore appear that, whatever the precise circumstances of the change in registrant identity may have been, it would seem that such change is likely to have occurred if not as a reaction to then at least with knowledge of the present proceedings.
5. Parties’ Contentions
The Complainants submit that the domain name is either identical or virtually identical to their registered trademarks and domain names PHONE HOUSE since the only difference between the domain name and the Complainants’ trademarks and domain names is the presence of the generic prefix “the” in the domain name.
The Complainants submit that the disputed domain name is identical to some of their domain names registered with the prefix “the”, such as for instance <thephonehouse.nl>.
Neither the Complainants, nor any of their subsidiary companies have authorized, licensed or otherwise consented to the Respondent’s use of their trademarks PHONE HOUSE by incorporation into the domain name or at all.
The Complainants have prior rights in trademarks that precede the Respondent’s registration of the domain name. In fact, by the time the previous registrant registered the domain name (in March 2003), the Complainants had owned rights in the name “Phone House” for more than six years.
To the Complainant’ knowledge, the Respondent is not acting under a company name “The Phone House” and is not commonly known by the domain name. In addition, the Respondent does not have a registered trademark THE PHONE HOUSE.
The previous registrant is not making a legitimate non-commercial or fair use of the domain name. In fact, the sole intent of the Respondent is to sell the domain name as is evident by the posted notice on the webpage where the domain name directs users, saying; “This domain is for Sale!”.
As the previous registrant has not set up a website but has simply offered the disputed domain name for sale, it has no rights or legitimate interests in respect of the domain name.
The domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants or to competitors of the Complainants, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The website “www.archive.org” (which allows Internet users to view webpages of domain names as they were in the past) shows that the disputed domain name was never used and has continuously contained a notice saying it was for sale.
The previous registrant offered to sell the disputed domain name for US$8,000.
In the amended Complaint, the Complainants also contend inter alia that the current registrant of the disputed domain name offered to sell it to the Complainant for US$8,000. The Complainant states that the agreement between the previous registrant and the current registrant was faxed to the Complainants by the current registrant and that the fax was labeled CIT Solution which was the initial owner of the disputed domain name. The Complainants contend that this demonstrates that the Respondent and the previous owner of the disputed domain name are either the same entity or closely associated.
The Respondent did not submit a formal Response. The previous registrant of the diputed domain name however sent several email communications to the Center before and after the commencement of this administrative proceeding. According to these email communications, the previous registrant of the disputed domain name asserts that it is not responsible for the disputed domain name as it has already been transferred to the Respondent and the previous registrant denies any relationship or association with the Respondent.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however the Complainants assert 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 parties’ 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, although the registration agreement for the domain name in dispute was made in the Korean language, it is also apparent from the written communications exchanged between the parties that the Respondent has sufficient ability communicating in the English language. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the Parties in both English and Korean, indicated that it would accept a Response in either English or Korean and indicated it would (and has) appointed a Panel familiar with both English and Korean.
On the other hand, the Complainants are not able to communicate in Korean and therefore, if the Complainants were to submit all documents in Korean, the proceeding would be unduly delayed and the Complainants would have to incur substantial expenses for translation. Therefore, in consideration of the overall circumstances of this case 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.
B. Respondent Identity
The Panel is satisfied that the current registrant of the disputed domain name is the named Respondent Choi Young Suk. While the Panel does not exclude the possibility of a relationship or association between the Respondent and the previous registrant CIT Solution, it is unnecessary for the Panel to decide here whether on that basis CIT Solution should be joined as a co-Respondent in order for the Panel to dispose of the present matter.
C. 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 Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, Complainants must prove each of the following:
(i) the domain name is identical or confusingly similar to Complainant’s trademark or service mark; and
(ii) 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.
D. Identical or Confusingly Similar
The domain name incorporates the Complainants’ registered trademarks. Numerous panels have held that where a domain name substantially incorporates a complainant’s trademark, that may be sufficient to make the domain name “confusingly similar” within the meaning of the Policy. See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678; Nicole Kidman v. John Zuccaarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313.
For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ marks pursuant to the Policy, paragraph 4 (a)(i).
E. 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 disputed domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes 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 the respondent to rebut the showing” (see, among others, 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 Complainants to use their marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent has not submitted a Response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Even if the Panel were to consider the previous registrant CIT Solution as a co-Respondent in this proceeding, its informal email communications to the Center are not suggestive of rights or legitimate interests in the disputed domain name. Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(c) of the Policy.
F. Registered and Used in Bad Faith
Both under past WIPO 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 paragraph 2 of the Policy), it is established that when someone registers a domain name, he/she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. In the circumstances of the case at issue, the Panel finds that since the Complainants’ trademarks are widely known, it is unlikely that the Respondent, at the time of acquisition of the disputed domain name or thereafter, was not aware(if it was not already aware of the present proceedings) that it was infringing the Complainants’ trademarks. Bad faith can be inferred based on the fame of the Complainants’ marks, such that the Respondent was aware or should have been aware of the Complainants’ widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the European Union would have made the Complainants’ registrations known to the Respondent.
In addition, it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (Adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Panel finds, in the absence of rebuttal by the Respondent, that the Complainants have adequately supported the inference that the Respondent’s actions and correspondence satisfy the “intent to sell” requirement of paragraph 4(b)(i) of the Policy.
The conduct described above also falls squarely within paragraph 4(b) of the Policy and accordingly the Panel concludes that the Respondent registered and used 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 <thephonehouse.com> be transferred as requested to the Complainants.
Thomas P. Pinansky
Dated: November 9, 2007