WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alma Media Corporation v. Almamedia.com/Jeong Seo Yong
Case No. D2008-0022
1. The Parties
The Complainant is Alma Media Corporation, Helsinki, Finland, represented by Heinonen & Co., Attorneys-at-Law Ltd., Finland.
The Respondent is Almamedia.com/Jeong Seo Yong, Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <almamedia.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2008. On January 7, 2008, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On January 8, 2008, Korea Information Certificate Authority Inc. d/b/a DomainCa.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 Registrar informed the Center that the registration agreement was in Korean. In reply to the Center’s notification of language of proceeding, the Complainant submitted a request to proceed in English with related evidence on January 23, 2008. 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 (with the Center’s covering documents being both in English and Korean), and the proceedings commenced on January 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2008. The Respondent did not submit any formal response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 18, 2008. 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
Alma Media Corporation is a Finnish company which officially began operating on April 1, 1998, and the trade name Alma Media was registered in Finland’s Trade Register.
In 2005, the original Alma Media Corporation merged with the current Alma Media Corporation, which continued using the registered company name Alma Media.
Alma Media Corporation has been actively operating on the Internet since 1998.
By 2001, Alma Media Corporation was the largest Internet service provider in Finland in terms of number of users.
Currently Alma Media Corporation is a major Finnish newspaper and online media company. Alma Media Corporation’s net sales in 2006 totalled EUR 302 million.
Alma Media Corporation has used ALMA MEDIA as its trademark for more than 10 years.
The trademark ALMA MEDIA is protected with Community Trademark no. 1048115 ALMA MEDIA as of January 20, 1999.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has not been in any way or anywhere ever commonly known by the domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use its company name and trademark.
The Complainant submits that the Respondent used the artificial name “AlmaMedia.com” as the registrant’s name appeared in the whois database in order to create an incorrect assumption that the Respondent would have a legitimate interest in the domain name.
The Complainant further submits that the domain name was registered and is being used in bad faith.
The domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
The Respondent has engaged in a pattern of such conduct.
The Respondent intentionally attempts to attract for commercial gain Internet users to the Respondent’s website or other on-line location by using the domain name.
The domain name has been offered for sale by the Respondent on June 5, 2002 and on August 10, 2003.
The Respondent also attempted to sell the domain name to the Complainant’s representative for the price of USD 55,000, which remarkably exceeds the out-of-pocket costs and such attempt proves that the Respondent’s aim is to seek income from the infringing domain name registration.
The Complainant submits that the Respondent has registered almost 500 generic domain names alone using the e-mail address email@example.com, and many of these domain names infringe world famous trademarks.
The Respondent is trying to hide his true identity by using the artificial name, “AlmaMedia.com”.
The Respondent intentionally attempts to attract users to the Respondent’s website for commercial gain.
The Respondent has left the domain name with a parking service and earns ‘revenue-per-click’ income.
The Respondent did not formally reply to the substance of the Complainant’s contentions. However, the Respondent sent email communications to the Center on January 23 and 25, 2008 (the second in English) stating his objection to the Complainant’s request to proceed in English.
6. Discussion and Findings
A. Language of Proceedings
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, the registration agreement for the domain name in dispute was made in the Korean language. The Complainant has submitted a request that English be the language of proceeding in which it has advanced a number of arguments including that, according to the Complainant, the Respondent has sufficient ability understanding in the English language. The Respondent stated to the Center its objection to the Complainant’s such request but would appear from these communications to have at least some familiarity with English. It is also apparent from the written communications exchanged between the parties and the Center 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 also indicated it would (and has) appointed a Panel familiar with both English and Korean. In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding.
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 all 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 also 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 ALMA MEDIA mark as a Community Trademark and elsewhere. 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 is, or has been commonly known by the domain name. The Panel’s view is that these facts and the assertions made by the Complainant must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent. The Panel deems the use of “AlmaMedia.com” as an owner name as an attempt by the Respondent to hide his true identity and/or a bad faith effort to indicate he may be known by such name.
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(a)(ii) 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 was not aware of 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 $55,000 to settle the dispute, which is an amount far greater than the out-of-pocket costs of registering and establishing the domain name.
The Panel also notes the Respondent’s pattern of abusive domain name registrations.
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 pursuant to paragraph 4(a)(iii) of the Policy.
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 <almamedia.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: March 24, 2008