WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xstrata v. KpOREA; Kwon Youn-jung, PJS; CyberPark; and P
Case No. D2012-1073
1. The Parties
The Complainant is Xstrata (Schweiz) AG of Zug, Switzerland, represented by Baker & McKenzie, United Kingdom of Great Britain and Northern Ireland.
The Respondents are KpOREA of Seoul, Republic of Korea; Kwon Youn-jung, PJS, of Uiwang-si, Gyeonggi-do, Republic of Korea; CyberPark of Anyang-si, Gyeonggi-do, Republic of Korea; and P, Anyang-si, Gyeonggi-do, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <glencore-xstrata.com> and <glencorexstratainternational.com> are registered with Korea Server Hosting Inc. and <glencorexstrata.com> and <xstrataglencore.com> (the “Domain Names”) are registered with HANGANG Systems Inc. dba Doregi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2012. On May 23, 2012, the Center transmitted by email to Korea Server Hosting Inc. and HANGANG Systems Inc. dba Doregi.com requests for registrar verification in connection with the Domain Names. On May 24 and June 5, 2012, Korea Server Hosting Inc. and HANGANG Systems Inc. dba Doregi.com transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrants of the Domain Names and providing their contact details.
On May 25, 2012, the Center notified in both English and Korean that the language of the Registration Agreement in this case was Korean. On May 28, 2012, the Complainant submitted a request that English be the language of the proceeding. On May 26, May 29, June 12, and June 13, 2012, the Respondents submitted email requests that Korean be the language of the proceeding. On June 14, 2012, the Center notified via email that while the Panel would have the sole authority to decide the language of the proceeding, the review of various matters relevant to the language of the proceeding for the present case, including the Respondents’ strong objections to proceeding in English, appeared to suggest insufficient ground on which to proceed only in English. Accordingly, the Center requested that the Complainant submit a Korean translation of the Complaint, and the Complainant submitted the translation on June 22, 2012.
On June 7, 2012, the Center notified that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) do not contemplate the filing of a single complaint against more than one domain name holder. In the same document, the Center also notified that the question of allowing the inclusion of multiple respondents in a single complaint would be a matter to be decided solely by the panel upon the specific request of a complainant. Accordingly, the Complainant filed an amendment to the Complaint, requesting consolidation of the Respondents in the Complaint.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the 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 Respondents of the Complaint (the Center’s covering document being in both Korean and English), and the proceeding commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Respondents’ response (the “Response”) was July 16, 2012. On July 16, 2012, the Respondents requested an additional 15 days to file a Response. The Center declined to extend the period, taking into account 1) the Complainant’s strong objections to the Respondents’ request for the extension; 2) that the request was received on or close to the due date for Response; and 3) that there did not appear to be exceptional circumstances, as required by Rules, paragraph 5(d). The Center further informed the parties that it would forward the Respondents’ extension request to the Panel, who should have authority to determine whether it would consider such request, and any further procedural steps that might be required.
On July 24, 2012, the Center appointed Thomas P. Pinansky as the sole panelist in this matter. 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 the compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of trademarks worldwide including XSTRATA in Europe and in the United States of America, and is part of the Xstrata group of companies.
The Complainant and the Xstrata group of companies own a number of domain names incorporating the well-known XSTRATA mark. In particular, the Complainant registered the <xstrata.com> domain name in March 1999, the <xstratacoal.com> domain name in May 2002 and the <xstratacopper.com> domain name in December 2005 and have used these domain names, and operated the related websites since these dates.
The Complainant enjoys a substantial reputation in the XSTRATA mark through its, and the Xstrata group of companies’, use of this name and mark throughout the world. The XSTRATA mark is, and has been for many years, closely associated with the Complainant.
According to the publicly available WhoIs database, the Domain Names <glencorexstrata.com>, <glencore-xstrata.com>, and <glencorexstratainternational.com>, were either created or registered on February 1, 2012, February 2, 2012, and February 7, 2012, during the height of the press coverage around the merger between Xstrata Plc and Glencore International Plc. The Domain Name <xstrataglencore.com> was registered on May 2, 2010, when there was much speculation in the global press that the Complainant would agree on a merger with Glencore International Plc.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:
(i) The Domain Names <glencore-xstrata.com>, <glencorexstratainternational.com>, <glencorexstrata.com>, and <xstrataglencore.com> are identical or confusingly similar to the XSTRATA marks as the Domain Names incorporate the entire well-known XSTRATA mark.
(ii) The addition of the generic and non-distinctive terms such as “international” is insignificant.
(iii) The Respondents are fully aware that the XSTRATA mark is a well-known global brand.
(iv) The Respondents have no rights or legitimate interests with respect to the Domain Names.
(v) The Respondents have revealed that the Domain Names were registered and are being used in bad faith by, inter alia, offering to sell the Domain Names to the Complainant.
While the Respondents sent numerous informal email communications to the Center, they did not provide any proper substantive response to the Complainant’s contentions.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language, whereas the language of the Registration Agreement for the Domain Names is Korean. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ levels of comfort with each language, the expenses to be incurred, the possibility of delay in the proceeding in the event that translations are required, and other relevant factors.
In the present case, the Panel notes that following the Center’s preliminary finding of insufficient basis to proceed solely in English, the Complainant submitted a Korean translation of the Complaint. It also notes that the Center communicated to the parties that any final determination as to the appropriate language of proceeding would remain in the sole discretion of the Panel, and the Panel might choose to write a decision in either Korean or English.
While noting that the Respondents have strongly objected to the proceeding in English, the Panel considers that the email correspondences exchanged between the parties before the Complaint was filed with the Center appear to demonstrate the Respondents’ sufficient ability to understand the English language. It is also noteworthy that the Center has communicated with the parties in both English and Korean, requested that the Complainant submit a Korean translation of the Complaint, and appointed a panel familiar with both English and Korean.
Even though the Respondents were provided with the Complaint in the Korean language as it had requested, on July 16, 2012, the due date for submission of Response, the Respondents have requested the extension to file its Response to July 31, 2012, asserting that it would need more time to understand the English annexes to the Complaint. However, as of August 7, 2012, the Panel has not received any submission from the Respondents. Accordingly, given the fact that the Respondents have had sufficient time to contest the Complainant’s allegations, and in absence of any exceptional circumstances as well as the stipulation between the parties, the Panel agrees with the Center’s determination not to grant further extension for submission of Response.
Further, under paragraph 11 of the Rules, in consideration of the above circumstances, including the fact that the Respondent had been given an opportunity to submit its Response in Korean to contest the Complainant’s allegations translated into Korean, but failed to do so, and in the interest of fairness to both parties, the Panel agrees with the Center’s determination on the language of the proceeding issue and concludes to issue a decision in English.
B. Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion, and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provides for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents cases and extracted the following general principles:
1. Consolidation of multiple registrants as respondents in a single administrative proceeding may, in certain circumstances, be appropriate under paragraphs 3(c) or 10(e) of the Rules, provided that the complainant demonstrates that the domain names or the websites to which they resolve are subject to common control, and that the panel, taking into consideration all relevant circumstances, determines that consolidation would be procedurally efficient, fair, and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondents have the opportunity to make their submissions on the validity of the consolidation along with substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s trademark XSTRATA as well as the name of the company with which the Complainant merged, Glencore International Plc. In addition, according to the publicly available WhoIs database and the information provided by the concerned Registrars, KpOREA, CyberPark and P all share the same email address ([…]@daum.net), and Kwon Youn-jung, CyberPark and P all share the same telephone number (+82.[…]). Also, all the websites connected with the Domain Names are either deactivated or appear to be held by one of the concerned Registrars. The Panel further accepts the Complainant’s evidence supporting its assertion that the Domain Names are covered by the same entity or person, including the fact that the replies from each domain name holder to the Complainant’s cease and desist letters contain almost identical content.
The Respondents had the opportunity to substantively respond to the Complaint, but did not.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has, more likely than not, established that the Domain Names are subject to the common ownership or control of the same person or company. The Panel finds that such common control justifies the consolidation of the Complainant’s claims against the registrants of the Domain Names in this single proceeding. The Panel further concludes that, in the circumstances of this case, consolidation would be fair and equitable to all parties and procedurally efficient, and that it will, therefore, allow consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
C. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires that the Complainant prove each and all of the following three elements in order to prevail in this proceeding:
(i) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests with respect to the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The fact that the Respondents have not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default”, the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b) the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
D. Identical or Confusingly Similar
The Complainant registered the XSTRATA trademark in various jurisdictions around the world. All the Domain Names wholly incorporate the Complainant’s distinctive XSTRATA trademark as well as the dominant part of the name of the entity with which the Complainant publicly merged, “Glencore.” The addition of the word “international” or a hyphen “-“ to the Complainant’s distinctive trademark is insufficient for avoiding any confusion.
The Panel, therefore, finds that the Domain Names are confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
E. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondents have no rights or legitimate interests in the Domain Names. In connection with the burden of proof, several UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondents have no relationship with or authorization from the Complainant to use its mark. The Panel also notes that there is nothing in the record to suggest that the Respondents have been commonly known by the Domain Names. The Panel’s view is that these facts must be taken as proven, provided that they have not been denied by the Respondents.
Further, the Domain Names <xstrataglencore.com> and <glencorexstrata.com> do not link to any operational websites. The Domain Names <glencore-xstrata.com> and <glencorexstratainternational.com> lead to the same webpage which appears to be a domain name search page held by the concerned Registrar. In other words, the Respondents have not used the Domain Names for any legitimate purpose, or in connection with a bona fide offering of goods or services.
The Respondents have not submitted a Response to the Complainant’s contentions. Therefore, they have failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the Domain Names under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
F. Registered and Being Used in Bad Faith
It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Respondents sent an email to the Complainant on April 3, 2012 and offered to sell the Domain Name <glencorexstrata.com> to the Complainant for USD 5,000, an amount well in excess of the reasonable costs of registering a domain name. The Respondents have also asked for “compensation” in respect of the Domain Names <xstrataglencore.com>, <glencore-xstrata.com> and <glencorexstratainternational.com>. The Panel finds, in the absence of rebuttal by the Respondents, that the Complainant has adequately supported the inference that the Respondents’ actions satisfy the “intent to sell” requirement of paragraph 4(b)(i).
The Complainant has further asserted with supporting evidence that the Domain Names <glencorexstrata.com>, <glencore-xstrata.com> and <glencorexstratainternational.com> were created during the height of the press coverage around the merger between Xstrata Plc and Glencore Internaional Plc, and the fourth Domain Name <xstrataglencore.com> was registered around the time when there was speculation in the global press that the Complainant would agree on a merger with Glencore International Plc. The Complainant cites Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446, which has found that such an opportunistic combination of two well-known trademarks made shortly after the announcement of a merger by someone having no connection with either of the merging companies amounts to registration and use in bad faith.
For all of the reasons above, the Panel finds that the Respondents have registered and use the Domain Names in bad faith and that paragraph 4(a) of the Policy has been met.
For the foregoing reasons, the Panel orders that the Domain Names <glencore-xstrata.com>, <glencorexstratainternational.com>, <glencorexstrata.com> and <xstrataglencore.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: August 7, 2012