WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Promotec S.p.A v. Hyun-Doo Shin
Case No. D2007-1444
1. The Parties
The Complainant is Promotec S.p.A, Anzola Emilia, Bologna, Italy, represented by Avv. Tommaso Bagnulo, Italy.
The Respondent is Hyun-Doo Shin, Chilgok-gun, Gyeongbuk, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <autopromotec.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 October 1, 2007. On October 3, 2007, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On October 4, 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. 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 October 11, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 8, 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
On December 2, 1999, the Complainant registered the trademark AUTOPROMOTEC in accordance with the Madrid System, administrated by the World Intellectual Property Organization.
Autopromotec is a biennal international fair – organized by the Complainant – and it’s the most specialized international exhibition of equipment and products for the transportation industry (equipment, car service, tyres, spare parts). The exhibition has taken place in Bologna since 1990.
The Complainant registered and maintains the following websites, <autopromotec.it>, <autopromotec.eu>, <autopromotec.biz>, <autopromotec.cc>, <autopromotec.info>, <autopromotec.mobi>, <autopromotec.org>, <autopromotec.tv>, which provide fair visitors with news reporting and commentary about Autopromotec, and also provides to the exhibitors information forms, product groups, Bologna fair plans, organization contacts, and statistics. The above-mentioned web pages allow exhibitors to download their application form and the relevant fair rules, which makes the websites one of the most important administrative and marketing connections among the organizer, i.e. the Complainant, and possible exhibitors from all around the world.
5. Parties’ Contentions
The Respondent has no rights and no legitimate interests in the domain name.
The domain name was registered years after the registration of the trademark, AUTOPROMOTEC.
The domain name is not being used at all, other than offering links to various other links, mostly relating to car insurance, hotels, and air travel.
The Respondent must have registered the subject domain name in circumstances where the Respondent knew full well of the Complainant’s overwhelming legal rights to the mark AUTOPROMOTEC and has made no legitimate use of the name. Further, the Respondent tried to sell the domain name.
The Respondent did not reply to the Complainant’s contentions.
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.
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 Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would 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 proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
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 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, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complaint 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.
C. Identical or Confusingly Similar
The Complainant has registered the AUTOPROMOTEC mark in accordance with the Madrid System. The domain name wholly incorporates the Complainant’s distinctive trademark and as such creates sufficient similarity to be confusingly similar (see Paragraph 4(a)(i) of the Policy).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, Paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the 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 Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its 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 further notes that there is nothing in the record to suggest that the Respondent is, or has ever 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. 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.
E. Registered and Used in Bad Faith
Both 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 Paragraph 2 of the Policy), it is a well-established principle is that when someone registers a domain name, he or 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 reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he/she was infringing the Complainant’s trademark.
Bad faith can be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s 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 Complainant’s registrations known to the Respondent.
In addition, the Panel notes that the Respondent requested $10,000 to settle the dispute, which is an amount far greater than the out-of-pocket costs of registering and establishing the domain name.
The conduct described above falls 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 Complainant has 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 <autopromotec.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: November 22, 2007