WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BasicNet S.p.A. v. Jinpoong, Park Myung Hwan
Case No. D2008-0308
1. The Parties
The Complainant is BasicNet S.p.A., Torino, Italy, represented by Studio Legale Sindico Serantoni & Scannerini, Italy.
The Respondent is Jinpoong, Park Myung Hwan, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <kway.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On March 3, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On March 20, 2008, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with it;
(b) the Respondent is listed as the registrant;
(c) the contact details for the Respondent included in the Complaint are correct;
(d) English is the language of the registration agreement; and
(e) the domain name was created on January 20, 2000 and is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Center verified that the Complaint satisfied the formal requirements of 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 March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2008. The Response was filed with the Center on April 11, 2008.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 22, 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
The Complainant is the parent of a corporate group engaged in the business of manufacturing and marketing casualwear, sportswear and accessories.
It owns a number of trademark registrations for, or which include, KWAY. The Complaint states that the worldwide portfolio is listed in Annex 4. The trademark K WAY has been registered in Spain, No. 486389, since 1968 in class 25. Many of the other registrations include K-WAY as a second element with a stylized K; some of these are in blue and red colours which seems to be how the mark is used in practice. Many of these logo-type registrations date from the late 1970s and early 1980s including registrations in Canada, Brazil and Australia.
There are no trademark registrations in the Republic of Korea.
The K-WAY trademark is licensed in many parts of the world. Annex 5 of the Complaint is said to list these countries. The countries listed in Annex 5 are almost all European countries. Those which are not include Morocco, Turkey, Tunisia, Uzbekistan and, perhaps, Russia and Georgia.
It would appear from materials included in Annex 6 of the Complaint that the Complainant acquired the K-WAY brand in 2004. A press release in September 2004 described the acquisition of the K-WAY brand as having been “earlier this year”.
The same press release stated that Canada Inc. had been appointed as a distributor of K-WAY products for North America since 2004 in a “very strategic expansion of the brand into the key North American marketplace”. Other licensees were stated to “currently operate throughout the European market”. In addition to the trademark registration dating from 1978 in Canada, however, catalogues included in the Complaint identify a Canadian distributor in 1997 and 1999.
The Complainant does hold several domain names based on “k-way”.
The Respondent operates an internet services business including “www.dotist.com” and, at “www.muzom.com”, a shopping mall business.
As noted above, the disputed domain name was registered in January 2000. The Respondent has also registered <kway.co.kr> (in 2001), <k-way.co.kr> in 2003, <k365.com> (in 2001), <balkorea.com> (in September 2002), <koreasea.net> (in September 2002), <korusfta.com> (in 2006) and <kway.kr> (in April 2007).
At the time of the dispute, the domain name resolved to a website headed KWAY, where the K is presented in red and WAY is in blue. It states that the domain name is for sale for US$15,000 “because of other business schedule”. The page itself is a fairly generic parking page with links to advertisers under titles such as Airline Tickets, Hotels, Employment etc.
5. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
The Complainant has proved sufficiently for the purposes of this administrative proceeding ownership of at least the registered trademarks for K WAY and K-WAY with stylized K device referred to in section 4 above.
To the extent that the registered trademarks include the stylized K device, the domain name is nonetheless confusingly similar to them. The degree of similarity is even closer to those trademark registrations which are just for K WAY.
It is well established that the inclusion of the necessary gTLD (or ccTLD) can be disregarded for the purposes of the required comparison: see for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks identified in section 4 above.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
It is common ground between the parties that the Respondent is not associated with the Complainant or authorised by it to use the mark K-WAY or KWAY. It is also not in dispute between the parties that the Respondent is not known as K WAY or anything similar.
In these circumstances, the onus has therefore shifted to the Respondent to show a right or legitimate interest.
The Respondent says that the disputed domain name and the domain name <kway.co.kr> were registered for a business project. The Respondent contends that “K WAY” means “Korea Way” as “K” is popularly used as a symbol or shorthand reference for Korea. To support its claim that “K” is recognised as a symbol for Korea, the Respondent identifies a number of other domain names where it is used in this fashion:
<kt.com> / <kt.co.kr> (Korea Telecommunication)
<ktf.com> (Korea Telecom Freetel)
<kbs.co.kr> (Korea Broadcasting System)
<kleaguei.com> / <kleaguei.co.kr> (Korea League)
<ktc.go.kr> (Korea Trade Commission)
<ktng.com> (Korea Tomorrow & Global)
<kepco.co.kr> (Korea Electric Power Corporation)
<bok.or.kr> (The Bank of Korea)
<kpta.co.kr> (Korean Physical Therapy Association)
<kma.org> (Korean Medical Association)
<kma.go.kr> (Korea Meteorological Administration)
<kpf.or.kr> (Korea Press Foundation)
<ksfc.co.kr> (Korea Securities Finance Corporation)
A significant difference between these usages and the Respondent’s domain name is that each of these appears to be the abbreviation of the relevant entity’s actual name. “KWAY” does not fall into that category. Further, an abbreviation such as “kt” for Korea Telecommunications or “bok” for Bank of Korea, if it does show use of the abbreviation as a common reference to the named entity, is just that; a usage for the named entity, not a popular usage of “K” to refer specifically to Korea (and even more particularly, the Republic of Korea).
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Bearing in mind that these are not an exhaustive enumeration of rights or legitimate interests, the second and third examples have no application on the present record. The first is instructive by way of the contrast to the present situation. The Respondent here has not stated the nature of the claimed “project”. Nor has the Respondent put forward any evidence to show any demonstrable preparations to use the domain name before his business schedule changed. The current use does not provide links specific to Korea except in the barest way. Most links resolve to a page of sponsored links for the relevant topic which seem primarily tailored for the country of the browser. This is consistent with the Respondent using the domain name now to generate pay per click revenues from traffic to the site at “www.kway.com”.
This may be contrasted to the situation in for example Emirates, Emirates Group v. Bluecom Consulting Group Pty Ltd, WIPO Case No. DAU2008-0004 where there was both credible evidence of the term Emirates being used colloquially to refer to the United Arab Emirates and the respondent’s website demonstrated time and effort spent on developing a website related to that subject matter.
Accordingly, the Panel finds that the Respondent has not made out the positive case he advanced. In these circumstances, the Panel finds that the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and is being used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant points out that the Respondent is offering the domain name for sale for US$15,000, well in excess of “out of pocket expenses”. It also draws attention to the depiction of the word “KWAY” written in red (letter K) and blue (WAY) which are the two colours used by the Complainant in presenting its trademark. The Panel notes that the Complainant appears to use red for the angled legs of the K in the stylized component of the device with the word “K-WAY” being all blue. Thirdly, the Complainant alleges that actual or constructive knowledge can be inferred from the fame and distinctiveness of its trademark so that the Respondent must have known about the Complainant’s trademark when registering the domain name or should have done, for example by a simple check of trademark registries worldwide.
The Respondent denies any knowledge of the Complainant’s trademark when he registered the domain name. He says that he arrived at the US$15,000 figure because he was offered 10,000,000 Korean won (US$11,000) for the domain name by another Korean five years ago. Thirdly, the Respondent says that the colours red and blue were chosen because they are in the centre of the Republic of Korea’s flag.
The Panel is not prepared to proceed on a theory of constructive knowledge: what the Respondent should have known if he had done a simple search of trademark registries around the world. First, the Panel acknowledges that some countries do apply a theory of constructive notice of trademark registration, but not all do. Secondly, as anyone who has attempted to obtain global clearance of a proposed trademark can testify, the process is neither simple nor inexpensive.
For a finding that the Respondent has registered the domain name and is using it in bad faith, therefore, it is necessary to show that the Respondent knew of the Respondent’s trademark, or at least had knowledge of the material facts of the Complainant’s mark, and attempted to profit from that. As it is necessary to show that the domain name was both registered in bad faith and is being used in bad faith, the relevant knowledge or awareness must be shown when the Respondent registered the domain name.
In making the assessment of what the Respondent knew, the Panel is not necessarily bound by a bare or flat denial of knowledge but may draw reasonable inferences from the available facts. Further, as the examples set out in paragraph 4(b) of the Policy show, an attempt to profit from the Complainant’s trademark is not limited just to attempting to divert trade but may extend to blocking the Complainant from registering the domain name.
In this case, the Complainant has not provided an adequate foundation for its claim that its trademark is famous throughout the world. There is for example no evidence provided of sales revenues or advertising expenditures. There is some evidence of advertising of the brand on websites and in some fashion magazines, but there is no evidence of whether these magazines were circulated in the Republic of Korea or that Koreans regularly accessed the Complainant’s website. Nor is there any evidence that the Complainant’s products are sold or promoted in the Republic of Korea at all, let alone on any scale.
The materials in Annex 6b, in particular, do indicate that revenues derived by the Complainant’s corporate group from all its brands was in the order of Euros 234 million in 2004, which are claimed to be derived from operations in 92 countries with 52 licensees. Later press releases also refer to the rapid growth of the Complainant group’s business in Asia.
This appears to be, however, for the group’s four brands; Kappa, Robe di Kappa, Superga and K-Way. The materials in the Complaint do not provide sufficiently specific information relating to the particular trademark in question. In this context, the Panel notes that Annex 5, stated to list the licensees for K-Way, does not include anything like 92 countries or 52 licensees. Nor does it mention licences for the Republic of Korea and the announcement of the licence agreement with Canada Inc. referred only to there being licensees in Europe.
Against this, there is some evidence from which an inference can be reasonably drawn that the Respondent did know of the Complainant’s trademark and was seeking to profit from that by registering and using the domain name.
First, as already discussed in section B above, the Respondent has not persuaded the Panel that the domain name was registered for the purpose positively advanced by the Respondent.
Secondly, there is the offer to sell the domain name for US$15,000. An adverse inference could not be drawn from this if the Respondent had made out his claim to a right or legitimate interest in the domain name. The Respondent has not provided any evidence to support his claim that he has previously been offered the equivalent of US$11,000 for the domain name. Nor would such evidence be conclusive if, as the Complainant contends, the value of the domain name lies in its association with the Complainant’s trademark.
Thirdly, the Respondent has also presented the domain name on his website in the same, or a very similar colour scheme to the way the Complainant uses it. It is true that blue and red are colours used on the Republic of Korea’s flag, but they appear differently and, as already noted, the use on the Respondent’s website is very close to the arrangement used by the Complainant. In addition, it is only the letters “K WAY” that are presented in the red and blue colours. Overall, the colour scheme of the website could not be described as being draped in red and blue.
Fourthly, the pattern of domain names registered by the Respondent shows a willingness to register domain names opportunistically: e.g. <korusfta.com> indicates an awareness the negotiations with the United States of America for a free trade agreement, the negotiations for which were announced in February 2006 (shortly before <korusfta.com> was registered) see for example “http://en.wikipedia.org/wiki/U.S.-Korea_Free_Trade_Agreement”. The Respondent also registered k-way.co.kr which is the precise way in which the Complainant uses its trademark.
Taken together, these factors provide a fairly strong indication that the Respondent is now using the domain name to take advantage of the Complainant’s trademark rights.
The use of the domain name to generate advertising revenues from sponsored links is directly specified in paragraph 4(b)(iv) of the Policy as evidence of registration and use in bad faith. In such circumstances, other Panels have ruled that it is permissible to infer both registration and use in bad faith unless the Respondent demonstrates that the domain name was not registered in bad faith: see e.g. Passion Group Inc v. Usearch Inc. eRes Case No. AF-0250, Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava WIPO Case No. D2000-0905 and Admiral Insurance Services Limited v. Mr. Adam Dicker WIPO Case No. D2005-0241.
As discussed in section B above, the Respondent has contended that it registered the domain name for a different project and that the nature of his use changed. As also discussed in section B, however, the Respondent did not provide any evidence in support of that claim and the Panel has concluded that the Respondent has failed to make out the positive defence he advanced.
In these circumstances, therefore, the Respondent has failed to displace the inference of registration and use in bad faith arising from the way he has chosen to operate his website.
Accordingly, the Panel finds that the domain name has been registered and is being used in bad faith.
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 <kway.com> be transferred to the Complainant.
Warwick A. Rothnie
Dated: May 6, 2008