WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ipsos S.A. v. Nurinet
Case No. D2012-0912
1. The Parties
The complainant is Ipsos S.A. of Paris, France, represented by Novagraaf France, France (the “Complainant”).
The respondent is Nurinet of Gyeongju-si, Republic of Korea (the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <ipsosmori.com> (the “Domain Name”) is registered with Netpia.com. Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On April 30, 2012, the Center transmitted by email to Netpia.com. Inc. a request for registrar verification in connection with the Domain Name. On May 2, 2012, Netpia.com. Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and informing that the language of the applicable registration agreement is Korean.
On May 4, 2012, the Center notified the parties of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 11 concerning the language of the proceeding. In the notice, the Center stated that if the Respondent does not submit its comments by May 9, 2012, it would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of the proceedings. The Complainant confirmed its request that English be the language of the proceedings for the reasons already set forth in the Complaint. The Respondent did not submit any comments within the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2012.
The Center appointed Chunghwan Choi as the sole panelist in this matter on June 25, 2012. 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
The Complainant, Ipsos S.A. is a global market research company founded in 1975. It is headquartered in France and has offices in 84 countries. It researches market potential, market perceptions and market trends, tests products and advertising and conducts public surveys. The Complainant has a subsidiary in the United Kingdom of Great Britain and Northern Ireland whose name has been “Ipsos Mori UK Limited” at least since October 2009. The subsidiary has reserved the domain name <ipsos-mori.com> since 2005. The subsidiary provides market research services in the United Kingdom.
The Complainant is the holder of the community trade mark (abbreviated as “CTM”) IPSOS registered on January 21, 2008 and a Korean trademark IPSOS registered on January 25, 2000 (registration number 41-0059215-0000).
The Domain Name has been used for a website in the French language that offered the Domain Name for sale and provided a search box and an assortment of links.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered trademark IPSOS; that the Respondent has no rights or legitimate interest in the Domain Name; and that the Domain Name was registered in bad faith and is being used in bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of Proceedings
The language of the Registration Agreement for the Domain Name is Korean. Pursuant to the Rules, paragraph 11, in the absence of an agreement between 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. The Complainant filed initially its Complaint in English. On May 4, 2012, the Center notified to the parties that the language of the Registration Agreement for the Domain Name is Korean . The Complainant then reiterated its request that English be the language of the proceedings, to which the Respondent has not replied.
Paragraph 11(a) of the Rules provides:
“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.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the panel has the discretion to decide otherwise having regard to the circumstances of the case. The panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally chosen by the panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.
The Complainant, upon being notified by the Center that the language of the Registration Agreement is Korean, has reiterated its request that English be the language of the proceeding, to which the Respondent has not replied. Thus, given the provided submissions and circumstances of this case, the Center proceeded on the basis that Respondent would have no objection to the Complainant’s request.
In light of the fact that the Respondent has been notified by the Center in both Korean and English and that the Respondent has chosen not to participate in the proceeding, the Panel is satisfied that, inter alia, taking these and the above-discussed circumstances into consideration, the Panel may render its decision in English and that this may be considered fair to both parties in the circumstances of this case.
Review of Legal Elements
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must establish that each of the three following elements are satisfied:
1. the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to a Mark in which the Complainant has Rights
The Panel recognizes that the Complainant is the holder of the community trade mark IPSOS and a Korean trademark IPSOS and that a subsidiary of the Complainant is named “Ipsos Mori UK Limited”. The Complainant has continuously used the above trademarks for years in connection with providing market research services worldwide, including the Republic of Korea, and its subsidiary has used the above name for years in connection with providing market research services in the United Kingdom. The Panel is satisfied on the evidence that the Complainant has rights in the mark IPSOS.
The Panel further finds that the Domain Name is confusingly similar to the mark IPSOS. Apart from the generic top-level domain, “.com”, the Domain Name reproduces the Complainant’s registered mark in its entirety. In addition, it is more or less identical to the name of the Complainant’s subsidiary, “Ipsos Mori UK Limited”, which has reserved <ipsos-mori.com> since 2005. In these circumstances, the Panel finds it likely the public will be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the Domain Name.
The Panel finds that the first element of the Policy has been established.
B. Rights or Legitimate Interests
The Respondent is not an authorized intermediary of Ipsos or Ipsos Mori products or services, and it has not been licensed to use the mark IPSOS or any word which may include the term “Ipsos” by the Complainant. The Panel is satisfied by the Complainant’s unchallenged evidence that the Domain Name was used for a website in the French language that offered the Domain Name for sale and provided a search box and an assortment of links. The Panel finds that the Respondent has not used the Domain Name in connection with a bona fide offering of goods and services within the meaning of the Policy, paragraph 4(c)(i). Furthermore, the Panel does not find any evidence of any circumstances described in paragraph 4(c) of the Policy demonstrating any rights or legitimate interests on the part of the Respondent. Under the circumstances and based on the prima facie case of the Complainant, the Panel is of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel finds that the trademark IPSOS is widely known. It has been used worldwide for years and is one of the well-known trademarks for market research services. Therefore, the Respondent most likely knew of the trademark prior to registering the Domain Name. This finding of the Panel is also evidenced by the fact that the Respondent has utilized the Domain Name for a website that offered the Domain Name for sale in the French language, a language used where the Complainant is headquartered.
The Panel believes from the evidence presented that the Respondent has registered the Domain Name (which is confusingly similar to the Complainant’s mark) with the intention to resell it to the Complainant and also generating revenue through pay-per-click links on the website, a practice known as “domain parking.”
The Panel finds such conduct to fall within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Panel concludes that the Domain Name was registered and has been used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ipsosmori.com> be transferred to the Complainant.
Dated: July 16, 2012