The Complainant is Blue Financial Corporation of Tulsa, Oklahoma, United States of America, represented by King & Partners, PLC, United States of America.
The Respondents are DomainCA (Whois Protect Service) of Seoul, Republic of Korea, and Mediablue of Gwangju, Republic of Korea.
The disputed domain name <freebird.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCA.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2010. On April 9, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2010, the Registrar transmitted by email to the Center its verification response, indicating the registrant and contact information for the disputed domain name, which differed from those identified in the Complaint. The Center sent an email communication to the Complainant on April 12, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed its Amendment to Complaint on April 19, 2010, adding the newly disclosed entity as the second Respondent. The Center verified that the Complaint, together with the Amendment to 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”).
On April 19, 2010, the Center notified the parties, in both Korean and English, of the Center's procedural rules relevant to the language of the proceeding. The Center informed the parties that according to the Registrar, the language of the registration agreement is Korean, and that the Complaint was submitted in English. In addition, the Center specifically requested the Complainant to provide at least one of the following: “1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; . . . or 3) submit a request for English to be the language of the administrative proceedings . . . .” To the Respondents, the Center stated, “In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant's submission replying to this notification, the Respondent is requested to submit these to the Center by April 24, 2010”. The Center also instructed the Respondents, “Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials [. . .] as to why the proceedings should not be conducted in English.”
On April 19, 2010, the Respondent Mediablue responded to the Center by an email message, stating that the Respondent and the Registrar request that the proper language of the proceeding is Korean under the registration agreement, and that because the Respondent is not familiar with English, it is difficult for the Respondent to understand the document from the Complainant without translation. On April 20, 2010, the Complainant submitted its request for English to be the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 21, 2010. With respect to the language of the proceeding, the Center, further to its previous correspondence, informed the parties, again in both Korean and English, of its decision to “1) accept the Complaint as filed in English; 2) accept a Response in either English or Korean; 3) appoint a Panel familiar with both languages mentioned above, if available.” In accordance with the Rules, paragraph 5(a), the due date for the Response was May 11, 2010. The Response, in Korean, was filed with the Center on May 7, 2010.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on May 17, 2010. 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.
As discussed herein, the Panel determines that the language of the proceeding will be English.
A cursory search on the Internet indicates that the Complainant is: described as a credit reporting service; the owner of the mark BLUEFIN PAYMENT SYSTEMS, registered at the United States Patent and Trademark Office on July 12, 2005; and operating for its business a website at the domain name <bluefin.com>, registered on January 27, 1995.
The Complainant also received registration of the service mark FREEBIRD from the United States Patent and Trademark Office, on October 17, 2006, for “[p]roviding temporary use of on-line non-downloadable software for use in electronic authorization, processing and management of card present and card not present credit card, debit card, electronic check transactions and payments conducted via global computer networks”. The registration materials indicate “first use” on May 5, 2003, and “first use in commerce” on February 16, 2004.
The disputed domain name <freebird.com> was registered on June 22, 1997.
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights; (ii) the Respondents have 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. In addition, the Complainant urges that the disputed domain name is associated with a pay-per-click website, and that the Respondents are simply holding the disputed domain name in an effort to resell it.
The Respondent Mediablue argues, inter alia, that: the disputed domain name was registered several years before the Complainant's use and registration of its mark; the Complainant's FREEBIRD is not a well-known mark, but instead, a combination of two generic words; and the Complainant is trying to hijack the Respondent's domain name.
Initially, the Panel must address the language of the proceeding. Paragraph 11 of the Rules states in full:
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
In the present case, the registration agreement is in Korean. The Complainant nevertheless submitted its Complaint in English and requested that the language of the proceeding be English. The Respondents requested that the language of the proceeding should be that of the registration agreement.
Informative in the Panel's consideration is a significant number of WIPO-administered UDRP decisions in which the panelists addressed the very issue of the language of the proceeding in circumstances similar to those in the present case, i.e., a dispute involving a non-Korean complainant and a respondent based in the Republic of Korea (“Korea”), with a complaint filed in English, despite a registration agreement in the Korean language. E.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 (Panelist Boh Young Hwang); Windsolutions Sarl v. Jin-Hak Yoo, WIPO Case No. D2008-1204 (Panelist Thomas P. Pinansky); Massive, Inc. v. Ricky Park, WIPO Case No. D2008-1375 (Panelist Junghye (June) Yeum); Biohit Oyj v. Hochul Jung, WIPO Case No. D2008-1548 (Panelist Ik-Hyun Seo); NH Hoteles, S.A. v. Will Eom, WIPO Case No. D2010-0227 (Panelist Andrew J. Park). In each of these decisions, the panelists, under authority of paragraph 11 of the Rules, determined that English is the language of the proceeding.1 The Panel reaches the same conclusion here.
As Panelist Boh Young Hwang in Deutsche Messe AG, supra, wrote, “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 possibility of delay in the proceeding in the event translations are required and other relevant factors.” This statement has been repeated and affirmed in subsequent decisions. E.g., Windsolutions Sarl, supra; Massive, Inc., supra; see NH Hoteles, S.A., supra (“In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.”) (citing Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
In the Panel's view, the following factors in the present case support the decision that English should be the language of the proceeding.
- The content of the Respondents' website at the disputed domain name is in English, indicating the Respondents' facility in the language. This factor was also present in NH Hoteles, S.A., supra; Biohit Oyj, supra.
- The Respondent Mediablue's Response indicates proficiency in comprehending the English text in the Complaint and annexes attached thereto, and specifically, the requisite elements under paragraph 4(a) of the Policy. See NH Hoteles, S.A.. supra. Indeed, the Response includes citations to various WIPO-administered UDRP decisions purportedly in support of the Respondent Mediablue's arguments rebutting the Complainant's cause with respect to each element under paragraph 4(a).
- Undue delay would result, and additional expenses would be incurred, if the Complainant were required to submit documents translated in Korean at this point in the proceeding. See Windsolutions Sarl, supra; Massive, Inc., supra.
The Panel emphasizes the following points. First, it is the combination of the above three factors, and not any single factor, that the Panel finds determinative in the present case. Second, precisely as the panelist in Massive, Inc., supra, observed, there appears in the present case no prejudice to the Respondent as a result of the Complainant's English-language submissions, or this decision being issued in English. Third, although the Complainant formally requested that English be the language of the proceeding, and the Respondents requested that the proceeding be in Korean, the Center has allowed the parties to submit their respective submissions in the language of their preference. Here, the Panel will consider arguments on the issues advanced by both parties – the Complainant's in English, and the Respondents' in Korean.
The Panel turns to the merits. In order to prevail, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy. The Panel will also address the Respondents' allegation of reverse domain name hijacking.
The Panel determines that the Complainant has rights in its mark FREEBIRD, and that the disputed domain name <freebird.com> is identical or confusingly similar to said mark. The Respondent Mediablue argues that the disputed domain name was registered before the Complainant established rights in its mark. Previous UDRP panels have held that for purposes of this element under paragraph 4(a), the Policy does not require that rights in the complainant's mark be established before the disputed domain name is registered. Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.
The first element is demonstrated.
The Complainant has met its initial burden of making a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondents to demonstrate any such rights or legitimate interests. In this regard, the Response does not advance any evidence that would demonstrate the Respondents' rights or legitimate interests in the disputed domain name, as described paragraph 4(c) of the Policy, or otherwise. The Panel independently is unable to ascertain sufficient evidence in this regard.
The second element is established.
The Complainant must also show that the disputed domain name “has been registered and is being used in bad faith” under paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides illustrative circumstances that are evidence of “registration and use of a domain name in bad faith.”
The impassable hurdle for the Complainant is that the disputed domain name was registered nearly six years before the Complainant first used the mark (and eight years before the Complainant filed its application for registration). At the time they registered the domain name, the Respondents could not have contemplated the Complainant's rights that did not exist. Therefore, the Respondents could not have acted in bad faith. The present case does not indicate an exception to the general rule, for example, where the Respondents were aware of the Complainant and the Complainant's potential rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions 3.1.
The third element is absent. The Complaint must therefore be denied.
As described above, it is a basic principle that the bad faith element under paragraph 4(a) of the Policy cannot be shown where the disputed domain name is registered long before the complainant establishes its trademark rights. Here, the <freebird.com> domain name was registered in 1997; nearly six years later, the Complainant began using FREEBIRD, toward establishing rights in the mark. The Complainant nevertheless brings this proceeding, seeking a transfer of the domain name. This cannot be within the intended spirit of the UDRP. Instead, the circumstances warrant a finding of reverse domain name hijacking. See Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks, WIPO Case No. D2008-0585.
For all the foregoing reasons, the Complaint is denied.
Dated: June 8, 2010
1 In Massive, Inc., supra, the panel decided that “both English and Korean shall be the languages of this proceeding,” but that the decision would be in English.