WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nutri Pack v. Nutri-Pack
Case No. D2010-1030
1. The Parties
Complainant is Nutri Pack of Flines Lez Raches, France, represented by Nameshield, France.
Respondent is Nutri-Pack of Daegu, Republic of Korea, internally represented.
2. The Domain Name and Registrar
The disputed domain name <nutripack.com> (the “Disputed Domain Name”) 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 June 22, 2010. On June 23, 2010, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the Disputed Domain Name. On June 24, 2010, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. 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”).
On June 28, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceeding in its Complaint. Respondent indicated an objection to Complainant’s request. On July 2, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2010. The Response was filed with the Center on July 22, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 29, 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.
4. Factual Background
Complainant manufactures food packaging intended for the food service and the retail food industries. It owns the trademark registration for NUTRI PACK registered in France on December 3, 2007. Complainant also owns the following domain name registrations:
<nutripack.fr> (registered on January 29, 1999)
<nutripack.co.uk> (registered on May 16, 2001)
<nutripack.es> (registered on July 13, 2001)
<nutripack.be> (registered on May 16, 2001)
<nutripack.it> (registered on October 28, 2002)
<nutripack.biz> (registered on September 23, 2004)
<nutripack.eu> (registered on April 7, 2006)
<nutri-pack.eu> (registered on September 10, 2006)
<nutripack.cn> (registered on November 27, 2007)
<nutripack.com.cn> (registered on November 27, 2007)
The Disputed Domain Name was registered in the name of Respondent on December 4, 2009.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or at least confusingly similar to its registered NUTRI PACK mark and to its various senior registered <nutripack> and related domain names.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that Respondent is not affiliated with nor authorized by it in any way and that Respondent was aware of Complainant when it registered the Disputed Domain Name.
Finally, Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith, and that the very use of the Disputed Domain Name shows that Respondent was aware of the notoriety of Complainant. Complainant goes on to claim that Respondent’s bad faith is demonstrated by the fact that Respondent registered the Disputed Domain Name with knowledge of Complainant’s trademark. Further, Complainant asserts that Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant on the grounds that (i) Respondent stated on its website that it would operate a nutrition related business, which Complainant suggests is related to its food packaging business intended for the food service and retail food industries; and (ii) the main page of Respondent’s website is in the French language, the same language used by Complainant, despite the fact that Respondent is Korean.
Finally, Complainant asserts that bad faith is also demonstrated by the fact that Respondent offered to sell the Disputed Domain Name for at least USD 15,500, an amount believed to be far in excess of normal out-of-pocket expenses related to the registration of the Disputed Domain Name.
Respondent argues that the Complaint is deficient because it erroneously indicates the previous owner as Respondent in this action. Respondent also argues that Complainant violated paragraph 11 of the Rules by filing a complaint in the English language when, in fact, it should have been filed in the Korean language since Korean is the language of the Cydentity, Inc. dba Cypack.com registration agreement. As a result, Respondent claims that it could not understand Complainant’s allegations set forth in the Complaint and, therefore, it was unable to prepare a complete defense.
Respondent also claims the following: (i) it purchased the Disputed Domain Name to use in connection with its “nutrition shopping mall.” Respondent states that the Disputed Domain Name is currently parked but that it was planning/designing the shopping mall. Respondent also claims that it never offered to sell the Disputed Domain Name and it notes that the website indicated that the Disputed Domain Name is not for sale.
Respondent further claims that it did not know of Complainant at the time it purchased the Disputed Domain Name. Respondent stated that the Disputed Domain Name is not famous nor well-known, and therefore it had no reason to know of Complainant nor its mark. Since it paid for the Disputed Domain Name and since it had no prior knowledge of Complainant, Respondent claims that it has legitimate rights to the Disputed Domain Name and that if Complainant desired to own same, then Complainant should pay for the domain name just as it did. Finally, Respondent argues that it did not profit from the Disputed Domain Name.
6. Discussion and Findings
6.1. Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English and Respondent submitted a request for the dispute to proceed in Korean. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel must 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. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on (1) Respondent’s past emails in English to Complainant; (2) the English and French language content of Respondent’s website at the Disputed Domain Name; and (3) Respondent’s arguments in response to the Complaint, it does not appear Respondent has difficulty in at least comprehending English. If an entity conducts activities in English, it is difficult for that entity to object if someone complains about such activities in English. Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012. Furthermore, the Panel is mindful of the fact that a decision in Korean would not be readily comprehensible by Complainant and would therefore likely require it to expend resources to translate same.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English and the Response as filed in Korean; and (2) issue a decision in English.
6.2. Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Before proceeding with the examination of the three above-mentioned elements for transfer or cancellation of the Disputed Domain Name, attention is given to the issue raised by Respondent that the Complaint was filed against the previous owner who sold the Disputed Domain Name to Respondent and is therefore deficient. The Panel, however, notes that the entity described as Respondent in the Complaint has the same name as Respondent, i.e., Nutri-Pack. Moreover, Respondent did not submit any evidence to support its claim that the two entities are not the same, and therefore that the Complaint was indeed filed against a wrong party. Respondent did not, for example, submit any evidence of the sale of the Disputed Domain Name from allegedly the previous owner to itself. Instead, Respondent merely submitted a copy of Cypack.com’s website showing that the address and telephone number of the registrant of the Disputed Domain Name had changed. Notably, however, the name of the registrant - Nutri-Pack - remains the same. Therefore, the Panel finds that since there is no evidence to support Respondent’s claim of change of ownership, Respondent’s claim that the Complaint was filed against a wrong party is unfounded and is therefore dismissed. Accordingly, the Panel will proceed with the examination of the merits of the Complaint against Respondent, all as set forth hereinbelow.
A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights in its NUTRI PACK trademark and to the various <nutripack> and related domain name registrations dating to as early as 1999. Further, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s NUTRI PACK mark. They are phonetic equivalents and are nearly identical in appearance. Accordingly, based on the evidence submitted by Complainant, the Panel finds that Complainant has relevant senior rights in NUTRI PACK, and in view of the nearly identical nature of the Disputed Domain Name to Complainant’s NUTRI PACK mark, the Panel concludes that Complainant has demonstrated the first element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests on the part of Respondent, Respondent carries the burden to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its NUTRI PACK trademark. Further, there is no evidence that Respondent is commonly known by the Disputed Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Thus, this combination of circumstances sufficiently establishes a prima facie case so that Respondent carries the burden to prove that it has some right or legitimate interest in respect of the Disputed Domain Name.
Respondent’s response contains no evidence that would rebut the prima facie case. In defense of its actions, Respondent claims that it purchased the Disputed Domain Name for USD 15,500, and therefore it has some right or legitimate interest in respect of the Disputed Domain Name. Again, Respondent makes a mere claim without proof, but even assuming arguendo that Respondent did purchase the Disputed Domain Name, the purchase is not probative of whether Respondent has a right or legitimate interest in the Disputed Domain Name. Contrary to Respondent’s allegations, its refusal to sell the Disputed Domain Name does not evidence rights or legitimate interests. Complainant has therefore prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company, WIPO Case No. D2007-1206. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Panel finds that Complainant has shown registration and use in bad faith by Respondent. Given Complaint’s senior and widespread use of its NUTRI PACK mark and its prior registration of the <nutripack.fr> domain name more than eleven (11) years ago, as well as its registrations of no fewer than ten (10) other <nutripack> domain names, Respondent was likely to be aware of Complainant at the time it registered the Disputed Domain Name. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation and its business. The connection between Complainant’s food packaging business and Respondent’s plan to operate a nutrition related business, as well as Respondent’s use of the French language in its website, are presumed to serve as an effort to attract Internet users to its website - this is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy. In addition, Complainant has submitted evidence of the website of the Disputed Domain Name advertising the sale of the Disputed Domain Name as well as copies of email communications with Respondent concerning the sale for an amount approximating USD 15,500, a figure mentioned by Respondent. Since Respondent failed to document this figure as a true and correct out-of-pocket cost related to the Disputed Domain Name, there is nothing on record that such asking price is a bona fide out-of-pocket expense. Unsupported as they are by appropriate evidence of record, the Panel finds Respondent’s claims unpersuasive. The Panel thus concludes that by using the Disputed Domain Name, Respondent has intentionally attempted to attract Internet users to its website or by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
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 <nutripack.com> be transferred to Complainant.
Andrew J. Park
Dated: August 12, 2010