WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stichting het Nationaal Exameninstituut voor Informatica (Stichting Exin) v. Cimin
Case No. D2010-2260
1. The Parties
Complainant is Stichting het Nationaal Exameninstituut voor Informatica (Stichting Exin) of Utrecht, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.
Respondent is Cimin of Pohang, Kyiong Bok, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <exin.com> is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name. On January 5, 2011, DomainPeople, Inc. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. Respondent did not submit any Response. On January 25, 2011, however, the Center received a communication from Respondent by email, in which Respondent requested the Center to extend the deadline for it to submit the Response on the basis that Respondent had been traveling and only recently received notification of the Complaint. On January 26, 2011, the Center informed parties that it would not grant such request, as it did not appear to the Center that exceptional circumstances in accordance with paragraph 5(d) of the Rules were mentioned in Respondent’s extension request.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on February 3, 2011. 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 February 9, 2011, the Panel issued Procedural Order No. 1, giving Respondent until February 14, 2011, to file a Response.1 Respondent again submitted no Response.
4. Factual Background
Complainant owns several international registrations for the trademark EXIN, including for example Community Registration No. 487603, registered June 2, 1999, for various services in Class 41 and International Registration No. 620340, registered May 20, 1994, including the Republic of Korea, again for various services in Class 41.
Since 2002, Respondent has been associated with the disputed domain name, which routed to a webpage representing that the website was “under construction”2. From 2004 through 2007 the webpage was active, displaying a search box and links related to education, online training, software and computers, among other content. Presently the disputed domain name does not appear to route to an active webpage, however, Complainant appended to the Complaint screenshots indicating that the disputed domain name recently redirected users to a webpage with appearance and links similar to those described by the Panel above.
5. Parties’ Contentions
Complainant avers that, using the EXIN trademark, it has run a worldwide examination, education, and certification program for information technology managers and that its program, which involves the use of third parties, has more than a million graduates. Complainant avers that its certification exams are taken daily in 125 countries in fifteen different languages and therefore, that its EXIN mark is well-known.
In summary, Complainant contends that the disputed domain name is identical to Complainant’s EXIN mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
In support of the latter allegation, Complainant notes that UDRP panels ordered transfer of domain names held by “Chang Il Min”, who is indicated in the WhoIs as the administrative contact for the disputed domain name in two previous cases and that therefore Respondent has engaged in a pattern of bad-faith registration of domain names under the Policy. See Novus International, Inc. v. Chang Il Min, WIPO Case No. D2002-0789; Hisamitsu Pharmaceutical Co., Inc. v. Chang Il Min, WIPO Case No. D2008-1390.
Complainant also avers that it tried to contact Respondent by email and at the fax number listed in the WhoIs record before initiating this proceeding, but received no response.
On the basis of the above allegations, Complainant requests transfer.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply to the Complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to a mark in which Complainant has interests.
Panels disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the “.com” suffix, the disputed domain name <exin.com> is identical to the EXIN trademarks of Complainant.
The Panel finds, therefore, that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal is placed upon the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Respondent’s website has on multiple occasions been used to display links to third-party websites promoting products and services of others. By diverting traffic to third parties and their products, the Panel finds that Respondent uses Complainant’s marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“the Panel is free to infer that Respondent is likely receiving some pecuniary benefit (...) in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use the EXIN mark in its disputed domain name and that Respondent is not commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel also agrees with Complainant that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that the disputed domain name was registered with awareness of Complainant and its business because the EXIN mark was registered in 1994 (and in many countries since then) and has been globally used, including in South Korea, where Respondent maintains its address.
The Panel finds therefore that the registration was made with the intention of trading on the value of Complainant’s trademark. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Under the circumstances, this constitutes registration in bad faith for purposes of the Policy.
The Panel also concludes that the circumstances show bad faith use of the disputed domain name, as elaborated below.
Respondent decided to refrain from filing a response to the Complaint. This Panel granted an extension of time for filing the Response, as Respondent requested, and Respondent still refused to file or to communicate respecting the substance of this proceeding in any manner.
Moreover, as highlighted by Complainant, the Panel is of the view that Respondent has engaged in a pattern of bad-faith registration of domain names based on the trademarks of others. While it is not clear that “[the disputed] domain name [was registered] in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name”, paragraph 4(b)(ii) of the Policy, Respondent has indeed engaged in a pattern of abusive registration. The Panel notes that paragraph 4(b)(ii) is illustrative, and, as many other panels have agreed, the circumstances described in paragraph 4(b) of the Policy are not exhaustive. E.g., Telstra Corporation Limited, supra. The Panel has no doubt under the circumstances that Respondent registered and uses the disputed domain name in bad faith.
The Panel therefore concludes that the requirements of 4(b)(iv) of the Policy are fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <exin.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: February 20, 2011
1 Procedural Order No. 1 read, in pertinent part: “In light of Respondent's request for extension received by the Center on January 25, 2011, the last day for filing a response to the Complaint, the Panel's authority under the Rules, paragraph 10(c), and in the interest of fairness and due expedition, the Panel rules that Respondent is given five days from the date of the present Procedural Order (therefore until February 14, 2011) to file electronically with the Center its response to the Complaint.”
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes and archives online at “www.archive.org”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5. The present WhoIs record indicates registration May 2, 2002.