WIPO Arbitration and Mediation Center


Biohit Oyj v. Hochul Jung

Case No. D2008-1548

1. The Parties

The Complainant is Biohit Oyj of Helsinki, Finland, represented by Oy Jalo Ant-Wuorinen Ab, Finland.

The Respondent is Hochul Jung of Daegu, Republic of Korea appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <gastropanel.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 10, 2008. On October 10, 2008, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the disputed domain name. On October 13, 2008, 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.

On October 15, 2008, the Center notified the parties of the Center's procedural rules relevant to the language of the proceeding. The Center entertained the arguments of the Complainant and the Respondent on October 17 and October 20, 2008, respectively. On October 29, 2008, the Center notified the Parties of its preliminary decision to accept the Complaint in English and proceed with the case both in Korean and English.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. The due date for Response was extended to November 25, 2008 on the Respondent's request. The Response was filed with the Center on November 25, 2008.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on December 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

Details on the Complainant (e.g., background, areas of business, worldwide presence, etc.) could have been better presented in the Complaint by the Complainant itself, rather than requiring the Panel to find these himself. In any event, the Complainant, based in Finland and publicly traded on the Helsinki Exchanges, develops, manufactures, and markets liquid handling products and accessories as well as diagnostic test systems for use in research, health care, and industrial laboratories. While headquartered in Finland, it also has subsidiaries in France, Germany, United Kingdom of Great Britain and Northern Ireland, Russian Federation, People's Republic of China, Japan and the United States of America (“U.S.” or “United States”). The Complainant was first established in 1988 and began its GastroPanel program in 1996. Marketing of GastroPanel began in 2001, and among the various milestones for this product, a serum based H. pylori test that is part of the GastroPanel test kit was approved by the U.S. Food and Drug Administration in 2004. The Complainant also holds an International Trademark Reg. No. 795231 for GASTROPANEL, as well U.S. Trademark Reg. No. 2800357 for GASTROPANEL.

The Respondent appears to be an individual, and registered the disputed domain name on September 21, 2008.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a mark in which the Complainant has rights. More specifically, the Complainant relies on trademark registrations for GASTROPANEL (Int'l Reg. No. 795231 and U.S. Reg. No. 2800357).

The Complainant also contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant simply states that it has never authorized the Respondent to use its trademark in any manner.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. More specifically, the Complainant argues that the Respondent was contacted shortly after he registered the disputed domain name. Notwithstanding this, the Respondent offered to the sell the disputed domain name for 3,000 Euros, which is in excess of the Respondent's out-of-pocket costs.

B. Respondent

First, the Respondent contends that the term GASTROPANEL may be registered in Finland, but the term is not registered in other countries such as the United States, Canada, Europe, Japan, Republic of Korea (“Korea”), etc. The Respondent asserts that the disputed domain name is simply a combination of “gastro” and “panel”, and then proceeds to provide dictionary explanations of these two separate terms.

In response to the second element, the Respondent argues in a one sentence statement that he intended to use the disputed domain name in connection with a personal blog.

In relation to the final element, the Respondent presents various arguments to explain that he was not responsible for the posting of the “for sale” message associated with the disputed domain name.

6. Discussion and Findings

Preliminary Issue: Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the 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. In this case, the default language of the proceeding is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent eventually filed his response in Korean.

Since both parties were permitted to and in fact did present their cases in the language of their preference, it appears that fairness has been maintained in view of the overall circumstances. Further, the prior communications between the parties were conducted in English, and the content displayed at the site at the disputed domain name was in English as well. Accordingly, the Panel finds it fairer as a whole to render this decision in English.

A. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it has trademark rights in the mark GASTROPANEL. Not only does it have an International Registration that designates many countries throughout Europe, contrary to the Respondent's assertions, a registration also exists in the United States. The fact that a registration may not exist in Korea, the jurisdiction of the Respondent, is (at least under this first element) simply not relevant as there is no such requirement under the Policy or the Rules.

The disputed domain name consists entirely of the Complainant's trademark, followed by the extension “.com” which is ignored for these purposes. In this regard, the disputed domain name is identical to the Complainant's trademark.

B. Rights or Legitimate Interests

The Respondent has offered no meritorious arguments to establish that he has any rights or legitimate interests in the disputed domain name. Respondent appears to argue that no one can have rights in “gastropanel” as it is comprised of two common terms (“gastro” and “panel”) that can be easily found in the dictionary. This is contradicted by the fact that trademark registrations have already been granted in multiple jurisdictions. Further, while the two terms separately may be common terms, their combination is unusual, and the resulting mark has no common meaning known to the Panel.

Respondent further argues that his intentions were to use the disputed domain name in connection with a personal blog. There is no further explanation for this claim. Such an unsupported assertion cannot in the circumstances be given serious weight.

For the reasons given above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

After the Complainant contacted the Respondent, the Respondent offered to sell the disputed domain name to the Complainant for 3,000 Euros. While the amount offered may not be as egregious as those in some other cases, it is still well in excess of possible out-of-pocket costs and is one indication of bad faith. Beyond that, the Respondent has been on the losing end in prior domain name disputes, and was found to have acted in bad faith. See Club Méditerranée S.A. v. Jung Hochul (a/k/a Hochul Jung), WIPO Case No. D2000-1427 (<clubmed.net>); Echelon Corporation v. Jung Hochul, WIPO Case No. D2001-0939 (<lonmark.com>). In the <clubmed.net> matter, the Respondent claimed to be building a “club medical site”. In the <lonmark.com> matter, it was noted that the Respondent also held registrations for <netnasdaqkorea.com>, <webnasdaqkorea.com>, <gonasdaqkorea.com>, and <cybernasdaqkorea.com>. Respondent is either quite an active and diverse entrepreneur, or he is a cybersquatter. Based on the facts before this Panel, the latter seems more probable.

For the above reasons, the Panel finds that this element has been satisfied.

7. Decision

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 <gastropanel.com> be transferred to the Complainant.

Ik-Hyun Seo
Sole Panelist

Dated: January 19, 2009