Complainant is GetMore A/S, Denmark, represented by Høiberg A/S, also based in Denmark.
Respondent is Sooyong Kim, Republic of Korea, represented by Kijoong Kim of DongSuh Law Offices, also based in the Republic of Korea.
The disputed domain name <getmore.com> (“Domain Name”) is registered with CyDentity, Inc. d/b/a Cypack.com (“CyDentity”).
Complainant submitted the Complaint to the WIPO Arbitration and Mediation Center (“Center”) in English on March 18, 2009, identifying the Registrar of the disputed domain name, <getmore.com> (“the Domain Name”), as CyDentity.
On March 23, 2009, CyDentity confirmed by email to the Center that Respondent is listed as the registrant of the Domain Name and that the Registration Agreement is in Korean. CyDentity also stated that the Domain Name was “registrar-transferred” to CyDentity on January 13, 2009.
On March 30, 2009, the Center provided a Language of Proceedings Notice to the parties, in both English and Korean. The Center noted that the Complaint had been submitted in English, but that the language of the Registration Agreement was Korean. The Center requested Complainant to provide (1) evidence of an agreement between the parties that the proceeding should be in English, (2) a translation of the Complaint into Korean, or (3) a request for English to be the language of the proceeding, including argument and supporting material as to why the proceeding should be conducted in English. The Center also invited Respondent to submit comments if Complainant requested the language of the proceedings to be English.
Complainant submitted a request to conduct the proceedings in English. Respondent, in contrast, requested that the proceedings be conducted in Korean.
On April 8, 2009, the Center provided a formal Notification of Complaint and Commencement of the Proceedings to the parties, in both English and Korean. The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Center informed Respondent that the deadline for his response was April 28, 2009. The Center noted that Complainant had submitted a request to hold the proceedings in English, to which Respondent had replied. The Center notified the parties of its preliminary decision to (1) accept the Complaint in English, (2) accept a Response in either English or Korean, and (3) appoint a Panel familiar with both English and Korean, if available. The Center informed the parties that, in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding. The Center further informed the parties that, having provided both parties with the opportunity to comment, any subsequent communications regarding the language issue will be a matter for consideration at the discretion of the Panel, upon appointment. The Center informed the parties that the Panel may choose to write a decision in either language, or request translation of either party's submissions.
On the same date, the Center also informed the parties that the Complaint had been accepted on the grounds that, prima facie, Complainant had pleaded grounds which might justify entertaining the Complaint as a Refiled Complaint, but that the Center's preliminary finding on this issue was expressly subject to any determination made by the Panel appointed to decide the case. The background to this notice was that in October 2008, the same Complainant, GetMore A/S, had filed an English-language complaint with the Center to transfer the same Domain Name, <getmore.com> (referred to herein as “the Prior Complaint” and “the Prior Case”). As of the date of the Prior Complaint, the Domain Name was registered in the name of an entity called “Arisu Tech,” whose administrative contact was Sooyong Kim, the Respondent to the current proceeding. Arisu Tech submitted an English-language response (“the Prior Response”). On December 22, 2008, the panel denied Complainant's request to transfer the Domain Name, on the ground that Complainant had failed to establish that Respondent had registered the Domain Name in bad faith. GetMore A/S v. Arisu Tech, WIPO Case No. D2008-1595 (December 22, 2008) (referred to herein as “the Prior Decision”). The Prior Decision was issued by a different panel, but the undersigned Panelist has reviewed the Prior Decision as well as the Prior Complaint and Response, because they are relevant to this case for the reasons explained below.
On April 27, 2009, Respondent submitted a Korean-language Response to the Complaint in this proceeding. On May 19, 2009, the Center notified the parties that it had appointed the undersigned Panelist to resolve this dispute. 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.
Complainant is a Danish company that registered the domain name <getmore.dk>, on May 15, 2003. Complainant uses <getmore.dk> for a Danish-language website that sells computers, cameras, and other consumer products and related accessories.
Respondent is a Korean individual who appears to be related to Arisu Tech, which first registered the Domain Name with registrar Tucows on April 3, 2004. The Domain Name currently houses a website that contains sponsored links to various other websites. On January 13, 2009, the Domain Name was transferred to the current registrar, CyDentity, and registered in the name of Respondent Sooyong Kim. Both the prior registration with Tucows in the name of Arisu Tech and the current registration with CyDentity identify Respondent Sooyong Kim as the administrative contact, with the same e-mail address, mailing address, and phone and fax numbers.
Many of the parties' contentions are identical to those in the Prior Complaint and the Prior Response. Those prior contentions are adequately summarized in the Prior Decision. Accordingly, the following summary focuses on the parties' additional arguments that were not made in the prior proceeding.
Much of the Complaint in this case is identical to the Prior Complaint in WIPO Case No. D2008-1595. Moreover, Complainant relies on the same exhibits attached to the Prior Complaint, except that it has replaced evidence of the prior registration of the Domain Name with Tucows with evidence of the current registration with CyDentity.
The only significant differences between the Prior Complaint and the new Complaint in this case are (1) the new Complaint asserts that this proceeding should be conducted in English; and (2) Complainant argues that the new Complaint should be considered as a “re-filed complaint” because “new subject material has come to the attention of the complainant.” This new material consists of the following.
First, Complainant states that it has learned from the Danish Embassy in Seoul that Respondent's name is linked to the “adomain.com” website, which is a parking place for domain names and the purpose of which is to deal with domain names. Complainant states that dealing with domain names is not an unlawful action in itself, but that it is common knowledge that many of these domain registrations involve infringement cases with regard to prior trademark rights.
Second, Complainant has also learned from the Danish Embassy about a blog written in Korean and available on the Internet, which states that Respondent currently has approximately 2,000 domain names connected to his business, which is run on a single computer from his home, and that these domain names contribute to substantial income for Respondent. The Complaint contains a Korean-language excerpt from this blog, together with an English translation. Complainant argues that the above information should be considered to be “fresh evidence” that makes the Complaint admissible under the Policy, citing the decision in Creo Products, Inc. v. Website In Development, WIPO Case No. D2000-1490 (January 19, 2001).
Third, Complainant states that Respondent has been involved in two other domain name dispute cases: Strongarm Designs, Inc. v. Arisu Tech, WIPO Case No. D2001-0776 (September 17, 2001), and IPGM Institution Mixte de Prévoyance du Groupe Mornay v. Sooyong Kim, WIPO Case No. D2007-1513 (March 4, 2008). Complainant relies on the second case to argue that Respondent's transfer of the Domain Name to a Korean-language registrar is “suggestive of bad faith,” and has made it necessary for Complainant to request that this proceeding be conducted in English.
Finally, the Complaint in this case contains the new assertion that Respondent's website at the Domain Name, <getmore.com>, exists in a partly Danish version, which means that the website addresses itself to Danish consumers and may cause confusion among Danish consumers.
The Response in this proceeding is in Korean, while the Prior Response in WIPO Case No. D2008-1595 was in English. However, much of the content of the current Response is the same as the Prior Response. The only significant difference is that Respondent replies to Complainant's argument that “fresh evidence” warrants consideration of the new Complaint as a Refiled Complaint.
Respondent argues that Complainant's Refiled Complaint should be dismissed because the Policy, in principle, prohibits refiling a complaint against the same respondent with respect to the same domain name. Respondent notes that refiled complaints have been accepted based on the discovery of new evidence only upon a showing that: (1) the evidence could not have been obtained with the exercise of due diligence at the time of the prior proceeding; (2) the evidence would likely have an important impact on the outcome of the case; and (3) the evidence appears credible.
Respondent asserts that Complainant's “fresh evidence” could have been obtained with due diligence at the time of the Prior Complaint. Respondent notes that the blog cited by Complainant has been available on the Internet since November 2004, which was long before the Prior Complaint was filed. Respondent also states that even if considered, the blog would not have a material impact on the outcome of the case, as it is written in a playful and exaggerated manner, and Respondent already disclosed in its Prior Response that he owns multiple domain names.
Respondent further notes that the prior domain name disputes involving Respondent cited by Complainant resulted in denial of requests to transfer domain names owned by Respondent. Respondent contends that those prior decisions show that its domain name business is legitimate.
Before addressing the merits of the Complaint, the Panel first addresses the procedural issue of the language of the proceeding. Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the Panel determines otherwise. As noted above, the Domain Name has been registered with CyDentity since January 13, 2009, which was before the Complaint was submitted on March 18, 2009. CyDentity has confirmed that the language of the registration is Korean. Therefore, this proceeding should be conducted in Korean unless the Panel determines otherwise.
Complainant has requested that the proceeding be conducted in English because Respondent's website at “www.getmore.com” has an English version and Respondent previously participated in several domain name disputes in English. Complainant has also asserted that Respondent's prior email communications with Complainant show that Respondent can communicate in English, but has not submitted copies of any such emails. Complainant further states that it would be burdensome for it to proceed in Korean.
Respondent has requested that the proceeding be conducted in Korean because the Domain Name registration was in Korean when the Complaint was filed, and because it is burdensome for Respondent to review the English-language Complaint and to translate it into Korean. Respondent acknowledges that it has responded to other complaints in English (including the Prior Complaint involving the same Complainant and the same Domain Name), but notes that in those cases, the domain name registration was in English, so Respondent had no choice but to proceed in English.
A number of other panels have decided to conduct a proceeding primarily in English, even when the domain name registration is in a different language, when there is evidence that the respondent has sufficient understanding of English to prepare a response, and when the respondent is allowed to submit its response in its native language. For example, in Educational Testing Service v. ISITE, Inc., Masuo Santo, WIPO Case No. D2008-1980 (March 30, 2009), the panel granted the complainant's request that the parties be allowed to make submissions in their native language without translations (English for complainant and Japanese for respondent), and issued its decision in English, even though the registration agreement was in Japanese. The Panel noted that Paragraph 11(a) confers discretion on the Panel to determine the language of the proceeding, and that this determination should take into account the goals of ensuring a fair and efficient proceeding, and avoiding undue burden or delay. Id., Section 6.1 (citing Whirlpool corporation v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The panel noted that the respondent's website included both English and Japanese language content, and that the respondent had demonstrated a functional grasp of English by replying to the arguments in the English-language complaint. See also eBay Inc. v. Fu ZhiYong, WIPO Case No. D2007-0865 (August 28, 2007) (granted the complainant's request to conduct the proceeding in English even though the registration was in Chinese, because the domain name and website were in English, and respondent had responded to arguments in the English-language complaint).
Having reviewed the file and considered the parties' arguments, the Panel decides to adopt a similar approach: this proceeding will be conducted primarily in English, but the Panel will consider Respondent's Korean-language submissions. Although Respondent asserts that it is burdensome for him to proceed in English, the record shows that Respondent and his counsel have a sufficient command of English to understand the English-language complaint. In the Prior Case, Respondent submitted an English-language response to the English-language arguments in the Prior Complaint. As noted above, much of the new Complaint in this case is identical to the Prior Complaint, to which Respondent has already replied. The new Complaint contains some new arguments, but Respondent's Korean-language Response shows that Respondent understands these new arguments sufficiently to be able to reply. Moreover, any burden on Respondent is mitigated by the fact that Respondent has been allowed to make submissions in Korean, without an English translation.
The Panel further notes that Respondent's website housed at the Domain Name is primarily in English and that the Domain Name is English. This is significant both because it confirms that Respondent is able to communicate in English, and because it shows that Respondent's website is directed to English-speaking users. Accordingly, the Panel hereby determines that the proceeding shall be conducted primarily in English, and the decision shall be issued in English, but that Respondent's Korean-language submissions will be accepted.
The Policy, Rules, and Supplemental Rules do not explicitly address whether a prior decision denying transfer of a domain name precludes the complainant from filing a new complaint concerning the same domain name against the same respondent. However, prior WIPO decisions have set forth principles for dealing with such “Refiled Complaints.” Two of the earliest decisions on this issue are Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 (November 10, 2000), and Creo Products, Inc. v. Website In Development, WIPO Case No. D2000-1490 (January 19, 2001). These decisions have been widely followed by other panels. See The Knot, Inc. v. Ali Aziz, WIPO Case No. D2008-0033 (March 10, 2008); Jones Apparel Group, Inc .v. Jones Apparel Group.com, WIPO Case No. D2001-1041 (October 16, 2001); Furrytails Limited v. Andrew Mitchell d/b/a Oxford Die-Cast, WIPO Case No. D2001-0857 (September 6, 2001).
The panel in Grove Broadcasting first noted that Paragraph 15(a) of the Policy authorizes the Panel to make a decision “in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” WIPO Case No. D2000-0703, Section 6 (emphasis in original). The Panel then examined by analogy general principles for reconsidering a prior decision in the context of court litigation and international arbitration. The panel found that submission of new evidence might justify reconsideration of the prior decision, provided that the evidence could not have been obtained with reasonable diligence at the time of the prior proceeding, would probably have an important influence on the result, and appeared to be credible. However, the panel concluded that the new evidence cited by the complainant did not justify consideration of the Refiled Complaint because the complainant had failed to show that it could not have obtained such evidence at the time of the prior proceeding. The panel emphasized that the Policy contemplates a highly expedited proceeding with stringent time limits, and that the complainant is expected to “get it right” the first time. The panel also noted that the complainant was still free to seek relief from the national courts of the respondent's country.
The panel in Creo Products cited Grove Broadcasting with approval and adopted much of the same reasoning. The panel held that Refiled Complaints should be allowed in limited circumstances only, so as to enable unsuccessful complainants to address injustice where appropriate while, at the same time, “providing a reasonable degree of protection to successful respondents against unsuccessful complainants opportunistically seeking readjudication of the dispute without justification.” WIPO Case No. D2000-1490, Section 6.11. The panel further held that: (1) the burden of establishing grounds for entertaining a Refiled Complaint rests on the complainant; (2) that burden is “high”; and (3) the complainant should clearly identify the grounds for entertaining the refiled complaint. Id., Section 6.16.
The undersigned Panelist agrees with the basic principles and reasoning of Grove Broadcasting and Creo Products. The purpose of the Policy is to provide an expedited means of resolving domain name disputes. Complainants have the option of seeking relief from the appropriate national court. Allowing unsuccessful complainants to refile without solid grounds that could not have been presented before would clog the system with repeat cases, interfering with expedited adjudication of domain name disputes.
As noted above, this case involves the same Complainant and the same Domain Name as the Prior Case, but a different respondent, Sooyong Kim, who appears to be related to Arisu Tech, the respondent in the Prior Case. The difference in respondent could potentially raise an issue as to whether this case involves a “Refiled Complaint.” The Panel will not address this issue, however, because Complainant has treated this case as a “Refiled Complaint” and has not argued that the change in respondent has any significance. Indeed, Complainant has treated Sooyong Kim and Arisu Tech as the same respondent. For example, Complainant states that Respondent “registered the domain name <getmore.com> on April 3. 2004” and offered to sell the Domain Name to Complainant for 200,000 Euros, even though the registration and offer for sale were by Arisu Tech, and not by Sooyong Kim.
Because Complainant has treated this case as a Refiled Complaint, the Panel will do the same and finds no need to decide in this case whether a “Refiled Complaint” always includes a complaint filed by the same complainant with respect to the same domain name against a respondent that is related to, but different from, the respondent in the prior proceeding. The Panel notes, however, that some prior decisions suggest that such a complaint may constitute a “Refiled Complaint,” at least in certain circumstances. For example, in Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd, WIPO Case No. D2004-0158 (June 14, 2004), the panel treated the case as a Refiled Complaint, even though the respondent had a different name from the respondent in the first proceeding, where the complainant did not show that there had been any change in ownership, and the respondent was “essentially the same” as the original respondent. Id., Section 6(i). Similarly, in Maruti Udyog Ltd v. maruti.com, WIPO Case No. D2003-0073 (May 5, 2003), the panel treated the case as a Refiled Complaint where the respondent in the second case was an alter ego of the respondent to the first case, with the same administrative contact. And Creo Products defined a Refiled Complaint as “one which, in practice, concerns the same parties and domain name that were the subject of a previous adjudication on the merits under the Uniform Policy.” WIPO Case No. D2000-1490, Section 6.3 (emphasis in original).
The question is thus whether Complainant has met its burden to justify consideration of the Refiled Complaint. Complainant contends that it has met this burden by pointing to alleged “new” evidence. The Panel finds that this evidence is insufficient for the following reasons.
Complainant asserts that it recently learned from the Danish Embassy that Respondent's name is linked to the “adomain.com” website, which is a parking place for domain names and whose purpose is to deal with domain names. However, Complainant has submitted no evidence that Respondent's name is, in fact, linked to this website. Nor has Complainant explained why it could not have learned of any such link when it filed the Prior Complaint. In addition, Complainant has not explained why any such link would be likely to change the result of the Prior Case. Accordingly, Complainant's new argument about the “adomain” website fails to justify consideration of the Refiled Complaint.
Complainant states that the Danish Embassy recently brought to its attention a blog available on the Internet that describes Respondent's domain name business. However, Complainant has presented no evidence or argument as to why it could not have discovered this blog before filing the Prior Complaint. Moreover, Respondent has submitted a screen shot of the blog that shows that the relevant entry was posted in November 2004, or nearly four years before the Prior Complaint was filed. Accordingly, the Panel concludes that Complainant has failed to meet its burden of showing that it could not have discovered this blog with the exercise of reasonable diligence at the time of the Prior Complaint.
The Panel also concludes that Complainant has not demonstrated that the blog is important new evidence that would likely change the result. The blog merely states that Respondent generated income from his ownership of numerous domain names and operation of related websites. However, although generating income from registering domain names and related activities may be suggestive of bad faith in some cases when combined with other evidence, it is not illegal per se. See TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134 (June 4, 2008); Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (September 23, 2006). Moreover, Respondent admitted in the Prior Response that he is in the business of registering domain names and generating revenues from related websites, so there is no reason to conclude that the Panel in the Prior Case would necessarily have reached a different result if evidence of the blog had been presented in the Prior Case.
Complainant makes the new argument in the Refiled Complaint that, with respect to the question of whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the fact that the disputed website, “www.getmore.com”, exists in a partly Danish version means that the website addresses itself to Danish consumers, which may cause confusion among Danish consumers. However, Complainant has not asserted that it could not have discovered this argument at the time of the Prior Complaint, nor has it asserted that this argument is sufficient to justify consideration of the Refiled Complaint.
A material change in the content of a website may justify consideration of a Refiled Complaint in some cases. See Kur- und Verkehrsverein St. Moritz, WIPO Case No. D2004-0158, Section 6(ii). However, Complainant has not argued or presented any evidence that the content of Respondent's website changed after the Prior Decision was issued. Indeed, Complainant relies on the same screen shot of the website housed at the Domain Name that it submitted with the Prior Complaint, which is partially in Danish. Moreover, Complainant argued in the Prior Complaint, with respect to bad faith, that Respondent's website includes a statement, in Danish, that the website may be for sale. The Panel also notes that inspection of the website shows that it is primarily in the English language. The website contains a drop-down menu for Danish, but that same menu also includes English and eighteen other languages, such as French, German, Spanish, Italian, Portuguese, Japanese, Korean, Chinese, and Arabic. Changing the language in the drop-down menu changes the language of a few of the introductory titles (such as a reference to “sponsored links”), and in some cases, changes the links themselves. However, the descriptions of the links continue to be in English regardless of which language is chosen.
For all of these reasons, the fact that the website is partially in Danish does not justify consideration of the Refiled Complaint.
Complainant has noted that Respondent has been involved in other domain name disputes. However, those prior decisions were issued before the filing of the Prior Complaint, and thus do not constitute new evidence that Complainant could not reasonably have discovered at that time.
Complainant has submitted evidence that the Domain Name has been transferred to a Korean-language registrar. This is a new fact that did not exist as of the date of the Prior Complaint. However, Complainant has failed to meet its burden of showing that this new fact is important evidence that is likely to change the result.
Complainant states that the transfer to a Korean-language registrar is suggestive of bad faith. Complainant cites the following language from the decision in IPGM Institution Mixte de Prévoyance du Groupe Mornay v. Sooyong Kim, WIPO Case No. D2007-1513 (March 4, 2008): “Respondent's conduct of transferring the Domain Name to a Korean-language registrar after Respondent became aware of the Complaint in an apparent attempt to change the language of the proceeding from English to Korean was improper and is suggestive of bad faith with regard to the conduct of these proceedings.” Id., Section 6(D). In Groupe Mornay, however, Respondent had transferred the Domain Name to a Korean-language registrar during a pending WIPO proceeding, apparently in an attempt to change the language of that proceeding. Here, in contrast, the Domain Name was transferred after the Prior Decision denying transfer was issued, and before the Refiled Complaint was filed.
Moreover, Complainant appears to overlook the sentence immediately following the quoted language from Groupe Mornay, which reads: “However, this conduct is not sufficient, by itself, to show that the Domain Name was registered in bad faith.” Groupe Mornay, WIPO Case No. D2007-1513, Section 6(D). Here, as in Groupe Mornay, Respondent has not demonstrated why the change to a Korean-language registration would be sufficient to prove that the Domain Name was registered in bad faith.
The Panel notes that, in certain circumstances, registration of the disputed domain name with a new registrar and/or in the name of a new respondent may constitute sufficient “new evidence” to justify consideration of a Refiled Complaint. For example, in some cases, the date for determining whether the domain name was “registered in bad faith” may be the date of the new registration, rather than the date of the underlying registration, which may affect the ultimate result. See Certipost NV v. Virtual Point Inc., WIPO Case No. D2008-1183 (September 25, 2008) (where the registrant transferred the domain name from himself as an individual to his “wholly owned subsidiary” (the respondent), the relevant date for bad faith was the date of acquisition by the respondent, not the date of registration).
However, in this case, Complainant has not argued that bad faith should be determined as of the date of the new registration (if that is indeed what has occurred) rather than the date of the underlying registration. On the contrary, Complainant has asserted that Respondent registered the Domain Name in 2004, which is the date of the original registration. Moreover, it is not clear that a change in the listed registrant's name would necessarily result in a new date for determining whether the domain name was registered in bad faith in all cases, such as when the second registrant is a legal successor or alter ego of the first registrant. This issue need not be decided in this case, however, because Complainant has not argued that the titular change in registrant affects the date for determining bad faith (or even that there has been a change in the registrant), and the Panel is reluctant to address an argument that Complainant itself has not presented.
In sum, Complainant has treated this case as a Refiled Complaint, but has failed to meet its burden of demonstrating grounds for the Panel considering the Refiled Complaint, in light of the Prior Decision denying Complainant's earlier request to transfer the same Domain Name.
Respondent contends that Complainant has engaged in reverse domain name hijacking. Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Although the Panel has concluded that the requirements for consideration of the Refiled Complaint have not been met, Complainant presented some arguments and evidence in support of its argument that the Refiled Complaint should be considered. The Panel concludes that these arguments and evidence are sufficient to avoid a finding that Complainant was proceeding in bad faith.
For the foregoing reasons, the Panel denies Complainant's request to transfer the Domain Name, <getmore.com>, to Complainant. Respondent's claim of reverse domain name hijacking is rejected.
Grant L. Kim
Dated: June 2, 2009