WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SIRMAX s.p.a. v. Younghee Kim/“Sirmax”
Case No. D2008-1021
1. The Parties
The Complainant is SIRMAX s.p.a., Vicenza, Italy, represented by Alberti & Fontana s.t.p., Italy.
The Respondent is Younghee Kim, Daegu, Republic of Korea; and “Sirmax”, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <sirmax.com> is registered with Cydentity, Inc. dba Cypack.com.
3. Procedural History
The Complaint was initially filed with the WIPO Arbitration and Mediation Center (the “Center”) against Younghee Kim on July 4, 2008. On July 7, 2008, the Center transmitted by email to Need Servers, Inc. the then concerned registrar a request for registrar verification in connection with the domain name at issue. After several reminders, on July 22, 2008, Need Servers, Inc. informed the Center that the disputed domain name was no longer registered with it but with Cydentity, Inc. dba Cypack.com. On August 5, 2008, the Center transmitted Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the disputed domain name. On the same day, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response in which it stated that Younghee Kim was not listed as the registrant and that the current registrant was in fact “Sirmax” of Seoul, Republic Korea. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 13, 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, and the proceedings commenced on August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September, 10, 2008.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 17, 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 has operated in Italy and in Europe, in the production and distribution of thermoplastic polymers, thermoplastic resins, poluoefins (PP-PE) and styrenic materials (ABS-PS), since the end of the 1990s.
The Complainant is the holder of the registration certificate for the Italian trademark no. 00923564 filed and having effect from January 31, 2000 and granted on December 30, 2003.
The trademark SIRMAX has been used by the Complainant since 1999, the year in which the company was incorporated, whilst the application for registration of the trademark in Italy dates back to January 30, 2000.
The Complainant registered the domain name <sirmax.it> on September 25, 2000; the domain name <sirmax.eu> on November 28, 2007; the domain name <sirmaxpa.com> on November 28, 2007.
The disputed domain name was registered on October 19, 2007. According to Annex 4 to the Complaint, the WhoIs data of June 26, 2008 indicates that the registrant of the disputed domain name was Younghee Kim and the registrar was Need Servers, Inc. According to the response received from Need Servers, Inc. on July 22, 2008, the concerned registrar is identified as Cydentity, Inc. dba Cypack.com. According to the registrar verification response received from Cydentity, Inc. dba Cypack.com on August 6, 2008, the registrant of the disputed domain name is listed as “Sirmax” of Seoul, Republic Korea.
The Complaint was filed with the Center on July 4, 2008.
5. Parties’ Contentions
The Complainant contends the following:
The Respondent has no right to or legitimate interest in using the domain name <sirmax.com>.
The Respondent registered the domain name in question without the intention of using it. The name has not, to date, been substantially used.
The Respondent registered this domain name without the intention of using it on its own behalf for bona fide purposes, whether private or commercial, but solely for the purpose of transferring it to others against payment of an enormous sum of money, by far in excess of the out-of-pocket costs incurred in registering it.
The Complainant, owner of the SIRMAX trademark, neither licensed nor authorized the Respondent in any way to use its distinctive mark.
The demand for US$ 25,000 made by the Respondent represents a figure by far in excess of the out-of-pocket costs incurred in registering the domain and the speculative end pursued by the Respondent cannot be denied.
The transfer from Younghee Kim to “Sirmax” was made in order to avoid this administrative proceeding in breach of the Policy, paragraph 8 which prevents the transfer of a disputed domain name during a pending administrative proceeding.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceeding
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Here, the Registrar confirmed to the Center that the language of the Registration Agreement is Korean. The Complainant requested that English be the language of the proceeding, including arguments and supporting material.
On August 8, 2008, the Center issued a Language of Proceeding notification to both parties in both English and Korean with instruction to both the Complainant and Respondent.
The Center has throughout the proceedings issued its case-related communications, including the Center’s complaint notification documents, in both Korean and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default. The Panel is satisfied that the Center’s approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of proceedings.
The Panel notes that the spirit of Paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full considerations to the parties’ level of comfortability with each language. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. In the present case, although the registration agreement for the disputed domain name is in the Korean language, the Panel notes that the content at the site of the domain name is in English. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, 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
According to the publicly accessible WhoIs, the current registrant of the disputed domain name is listed as “Sirmax” of Seoul, Republic of Korea. The Panel notes that the change in registrant data occurred after the filing of the Complaint, presumably with the Respondent’s knowledge of the present proceedings. The Panel further notes that the current registrant’s name has been changed to reflect that of the Complainant with what appears to be a false address in an apparent attempt to conceal its identity. Under these circumstances, the Panel does not exclude the possibility of a connection between Younghee Kim and the current registrant and shall, for purpose of these proceedings, consider both as the Respondent.
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 it 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 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.
D. Identical or Confusingly Similar
The Complainant has registered the SIRMAX marks and is the registrant of various domain names containing the name “Sirmax”. The domain name wholly incorporates the Complainant’s distinctive trademark and as such the Panel is satisfied that it creates sufficient similarity to be confusingly similar (Paragraph 4(a) of the Policy). Therefore, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s trademark pursuant to the Policy, Paragraph 4(a)(i).
E. 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 decisions of WIPO panels 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’s view is that these facts may 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 to the Complainant’s contentions.
Therefore, it has failed to invoke any circumstances that demonstrate rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.
F. 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), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are widely known, especially in the international plastics business community, it is very unlikely that the Respondent, at the time of registration or purchase of the domain name, was not aware that it was infringing the Complainant’s trademarks.
Bad faith can in appropriate circumstances also 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 mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the domain name without having knowledge of the Complainant.
The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
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 (see Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the “intent to sell” requirement of Paragraph 4(b)(i) of the Policy.
The conduct described above falls squarely within Paragraph 4(a)(iii) of the Policy and accordingly the Panel concludes that the Respondent registered and is using the domain name 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, <sirmax.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: September 30, 2008