WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
China Care Foundation, Inc. v. Choi Yun Gul
Case No. D2010-1208
1. The Parties
The Complainant is China Care Foundation, Inc. of Westport, Connecticut, United States of America, represented by Baker & McKenzie LLP, United States of America.
The Respondent is Choi Yun Gul of Seoul, Republic of Korea, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <chinacare.com> (“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 July 21, 2010. On July 22, 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 July 23, 2010, 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 July 27, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Respondent submitted a request that Korean be the language of the proceeding on July 27, 2010, and the Complainant submitted a request that English be the language of the proceeding on July 29, 2010. The Respondent further indicated an objection to the Complainant’s request on July 30, 2010. On August 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 the Panel has the authority to determine the language of the proceeding.
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 August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Response due date was extended to September 1, 2010 upon the Respondent’s request and the Complainant’s consent. The Response was filed with the Center on September 1, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 10, 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.
On October 5, 2010, the Panel issued an Administrative Panel Procedural Order No. 1 inviting the Complainant to provide additional evidence it may have going to the use, fame, or renown of the CHINA CARE mark at or prior to the registration date of the Disputed Domain Name. The Procedural Order also permitted the Respondent to file a reply to the Complainant’s submission. On October 13, 2010, the Center notified the Panel by email that it had received the Complainant’s submission in reply to the Procedural Order. Thereafter, on October 20, 2010, the Center notified the Panel by email that it had received the Respondent’s written reply to the Complainant’s submission. Both the Complainant’s submission and the Respondent’s reply were timely filed in accordance with the timetable set-forth in the Procedural Order. The Panel also hereby extends the relevant date or issuance of the Decision to the date indicated under the finding made in paragraph 7 below.
4. Factual Background
The Complainant was established in 2000 and is involved in charitable fundraising and related services, volunteer programs, and counseling and adoption placement services, including the providing of grants to orphanages in the People’s Republic of China (“China”), empowering young people to help improve the lives of children in need, and operating programs in China that provide medical care, education, and foster families for orphans. It owns the United States trademark registrations for the following marks:
CHINA CARE (registered: February 13, 2007; date of first use: October 10, 2000); and
CHINA CARE FOUNDATION (registered: December 27, 2005; date of first use: October 10, 2000)
(The CHINA CARE and CHINA CARE FOUNDATION marks are collectively referred to as the “CHINA CARE Marks”).
The Disputed Domain Name was registered in the name of the Respondent on September 4, 2001.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to its registered CHINA CARE Marks. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for various reasons, including the following: 1) the Respondent is not affiliated with nor authorized by it to register the Disputed Domain Name; 2) the Respondent registered the Disputed Domain Name one year after the Complainant began using its CHINA CARE Marks; and 3) there is no bona fide offering of goods or services at the Respondent’s <chinacare.com> website.
Finally, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. Again, the Complainant raises various reasons in support of this claim, including the following: 1) it should be inferred that the Respondent had at least constructive knowledge of the Complainant’s rights when he registered the Disputed Domain Name due to the fame of the Complainant’s CHINA CARE Marks; and 2) the Respondent registered the Disputed Domain Name solely for the purpose of selling it to a third party for a sum in excess of his out-of-pocket expenses.
The Respondent is an individual residing in the Republic of Korea. He is engaged in a business related to Indian culture, including Indian philosophy, Hinduism, and meditation, and is also interested in Chinese medicine.
The Respondent contends that the Disputed Domain Name and the Complainant’s CHINA CARE FOUNDATION mark may be similar but they are not identical. The Respondent further contends that he has rights or legitimate interests in the Disputed Domain Name on various grounds, including the following: 1) he registered the Disputed Domain Name much earlier that the Complainant registered its United States service marks for the CHINA CARE Marks; 2) at the time he registered the Disputed Domain Name, he had an interest in studying Chinese medicine but discovered that there were many restrictions on the practice of Chinese medicine and on the operation of a related business unless he were to obtain a university degree in the relevant subject matter, . and therefore, he decided to focus on studies in Indian religious/spiritual mediation, yoga, etc., and to sell the Disputed Domain Name; 3) the Disputed Domain Name is merely a combination of two common words that can mean “Chinese medicine,” and therefore it is not distinctive enough to be used as a mark; and 4) there are many third parties that are using the term “chinacare” as their names, and therefore, the Complainant does not have exclusive rights in the CHINA CARE mark that can supercede his rights to the Disputed Domain Name.
The Respondent also contends that he did not register nor use the Disputed Domain Name in bad faith. He argues that the mere act of offering to sell a domain name is not evidence of bad faith and that to make a successful claim of a respondent’s bad faith, a complainant must show that its mark is well-known or that the respondent knew of the complainant and its mark at the time the respondent registered the subject domain name. The Respondent concludes by arguing that in this case, the Complainant’s CHINA CARE Marks are not well-known and it did not even know of the Complainant.
The Respondent also argues that the Complainant’s support for the claim of bad faith based on the Respondent’s registrations of other domain names such as <alchemynet.com>, <sportssoft.com>, and <ashram.net> does not have merit, primarily because the words “alchemy”, “sports”, “soft”, and “ashram” have actual meanings, are merely common words, and are widely used by many third parties as domain names.
6. Discussion and Findings
6.1 Language of the Proceedings
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, the Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English and the Respondent submitted a request to proceed in Korean. The Center made a preliminary determination to accept the Complaint filed in English, and to allow the Respondent to submit a response in Korean, 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 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. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the pre-Complaint letter the Complainant sent to the Respondent in English, and the Respondent’s multi-point reply in well-written English, it does not appear as though the Respondent has any difficulty comprehending and communicating in English. Accordingly, 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 2) issue a decision in English.
6.2 Analysis of the Complaint
Under the Policy, in order to prevail, the Complainant must prove the following three elements of a claim for transfer or cancellation of the Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the 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.
A. Identical or Confusingly Similar
The case record contains evidence to demonstrate the Complainant’s rights in the CHINA CARE Marks. First, the United States registration certificates for the CHINA CARE Marks show that while they were registered subsequent to the registration date of the Disputed Domain Name, the registration certificates also show that the Complainant first used the CHINA CARE Marks as early as October 10, 2000, which predates the Respondent’s registration date for its Disputed Domain Name by approximately one year. While the Panel recognizes that the registration certificates are not primary evidence of the date of first use, it may nevertheless have some probative value in determining its rights to the CHINA CARE Marks when taken into consideration with other corroborating evidence. In this case, the Complainant, in response to the Panel’s Procedural Order, produced other evidence of the Complainant’s rights to the CHINA CARE Marks, including the submission of several newspaper articles from May, 2001, that discuss the Complainant’s charitable services under the CHINA CARE name.
The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s CHINA CARE Marks. They are phonetic equivalents and are nearly identical in appearance. The fact that the Complaint’s CHINA CARE Marks are composed of separable words while the Disputed Domain Name appears as a single word followed by “.com” does not create any material difference. It is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identical or confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the 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 the Respondent of the dispute, the 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) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has not acquired trademark or service mark rights; or (iii) the 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 the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
There is no evidence that the Respondent ever used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services and there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. Indeed, the Respondent, in his response brief, acknowledged that although he did have plans to use the Disputed Domain Name in connection with his interest in Chinese medicine, he abandoned his interest in Chinese medicine, and as a result, he decided to sell the Disputed Domain Name.
Finally, since the Respondent has not used the Disputed Domain Name for any purpose and the Respondent has acknowledged this fact, the Respondent did not and could not make a legitimate noncommercial or fair use of the Disputed Domain Name. Thus, the foregoing combination of circumstances sufficiently establishes a prima facie case so that the Respondent carries the burden of demonstrating that he has rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent, however, by its own contentions – the most relevant of which were summarized in Paragraph 5.B above – do not satisfy the Respondent’s burden of demonstrating any legitimate rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Most notably, the record is totally devoid of any evidence to support the Respondent’s key contention that at the time he registered the Disputed Domain Name he had an interest in Chinese medicine. Further, the Panel finds that the Respondent’s claim of some rights or legitimate interests in the Disputed Domain Name based on the argument that there are many third parties who have also registered domain names composed of “chinacare” is not persuasive.
The 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 the Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by the Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. 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 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 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.
A complainant is generally expected to show both the respondent’s knowledge of the relevant mark at the time of registration of the subject domain name (whether actual, constructive, or inferred from circumstances of willful blindness), and the respondent’s intent to target or benefit in some way from inclusion of the complainant’s mark in the subject domain name. In this case, the Complainant raised various claims and submitted various pieces of evidence in an effort to establish the existence of the above-mentioned bad faith factors. The Panel finds that the Complainant’s claims of: 1) the alleged fame of the Complainant’s CHINA CARE Marks; 2) the alleged false or misleading information submitted by the Respondent in connection with its other domain name registrations; and 3) other arguments relating to irregularities of the Respondent’s other domain name registrations are either unsubstantiated or not persuasive/not relevant despite the Complainant’s additional opportunity to buttress its evidentiary submissions afforded by the Procedural Order.
The vast majority of the Complainant’s evidentiary submissions, including those submitted in reply to the Procedural Order, consist of materials that were dated in 2004 and later. There is no direct evidence of the Complainant’s own use of the CHINA CARE mark prior or at the time of the registration of the Disputed Domain Name, i.e., in 2000 or in 2001. The only materials that associated the Complainant with its CHINA CARE mark prior to the registration date of the Respondent’s Disputed Domain Name are several newspaper articles in a local newspaper that is likely to be of a very limited circulation. Even assuming arguendo that these articles establish the Complainant’s use of the CHINA CARE mark prior to the registration date of the Disputed Domain Name, neither they nor any other evidentiary submissions establish to this Panel’s satisfaction that the Respondent 1) knew or should have known, or even could have known about the Complainant’s mark; 2) intended to capitalize on the Complainant’s mark; and 3) did not merely register the Disputed Domain Name because of some genuinely generic or descriptive meaning or purpose wholly unconnected with the Complainant or its competitors at the time of registration. In fact, there is not even evidence to show that the Respondent was, at the very least, aware of the Complainant’s existence, or of its competitors, and of the likelihood that the Complainant would soon obtain the relevant trademark rights.
For these reasons, the Panel cannot find on the record in the present case that the Respondent had the relevant bad faith intent, or to infer such intent from the relevant circumstances when it acquired the Disputed Domain Name. Accordingly, this Panel finds that the Complainant has failed to establish the requisite third element of its case under the Policy. See e.g., Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413 and the majority opinion in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.
For all the foregoing reasons, the Complaint is denied.
Andrew J. Park
Dated: November 10, 2010