WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Erik Olsson Fastighetsförmedling AB v. Noori net
Case No. D2012-1090
1. The Parties
The Complainant is Erik Olsson Fastighetsförmedling AB of Stockholm, Sweden, represented by Domain and Intellectual Property Consultants Dipcon AB, Sweden.
The Respondent is Noori net of Gyeongju-Si, Gyeongsangbuk-Do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <erikolsson.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2012. On May 24, 2012, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.coma request for registrar verification in connection with the disputed domain name. On May 25, 2012, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the 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 May 25, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On May 29, 2012, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding within the specified due date.
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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.
The Center appointed Hae-Chan Park as the sole panelist in this matter on July 10, 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.
The Panel determines that the language of this proceeding is English, as discussed herein.
4. Factual Background
As shown in the WhoIs registration record provided in Annex 1 to the Complaint, the disputed domain name <erikolsson.com> was created on December 9, 2008.
The Complainant owns trademark registrations for ERIK OLSSON in various classes as provided in Annexes 3, 4, 5, and 6 to the Complaint. The Complainant’s applications for trademark registration were filed prior to December 9, 2008 when the Respondent appears to have registered the disputed domain name.
The Complainant also owns the domain name <erikolsson.se>, which contains the ERIK OLSSON mark.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <erikolsson.com>, by virtue of containing “Erik Olsson” in its entirety, is identical or confusingly similar to the Complainant’s ERIK OLSSON mark. Accordingly, the Complainant asserts that it has satisfied the identity or confusing similarity requirement in paragraph 4(a)(i) of the Policy.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. The Complainant states that the Respondent is not a licensee; that Internet screenshots of linked advertisements in Swedish relating to real estate matters and offers to sell the disputed domain name demonstrate the Respondent’s intent to commercially profit from misleading consumers searching for the Complainants’ business; and that the word “Erik Olsson” has no meaning beyond being Swedish name.
The Complainant contends that the Respondent registered and uses the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. The Complainant asserts that the Respondent knew of the Complainant’s trademarks, company name and business prior to registering the disputed domain name. The Complainant further asserts that the links on the Respondent’s website to competitors’ services, together with a continuous update or renewal of the domain name registration the latest update being on January 5, 2012, are compelling evidence of bad faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 11(a) 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, subject to the authority of the Panel to determine otherwise. The Complainant, upon receiving the language of proceeding notification from the Center, submitted a request for this dispute to proceed in English. In support of its request, the Complainant states that it is not able to communicate in Korean and that the costs and time required for such translation would be disproportionately burdensome. Based on evidence of previous use of the Respondent’s website in Swedish, presumed use of English in negotiating advertising agreements with Swedish companies, and removal of the advertisement in the website upon receipt of cease and desist letters sent in English to the Respondent, the Complainant asserts that the Respondent understands English and would not be prejudiced if the proceedings were undertaken in English.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including 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. The Panel notes that, apart from the Complaint, the Center’s case-related communications have been made to the parties in both Korean and English. The Panel also notes that the Respondent has failed to participate in the proceeding, and has been notified of its default. 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 2) issue a decision in English. Banco Itau S.A. v. Webmedia, WIPO Case No. D2008-0531.
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The 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.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Based on presented evidence of trademark registrations, use of its mark in the Complainant’s domain name <erikolsson.se> and on its website, and other business uses, the Panel finds the Complainant has demonstrated that it has rights in its ERIK OLSSON trademark.
The Panel further finds that the disputed domain name is identical or confusingly similar to the trademark under which the Complainant sells its services since it incorporates the entirety of the ERIK OLSSON trademark. The only difference between the Complainant’s trademark and the disputed domain name is the addition of the Top-Level Domain (TLD) extension “.com.” The Panel finds that the TLD extension has no relevance to the disputed domain name beyond functional necessity. Accordingly, the Panel adheres to the well-established principle that TLD extensions are irrelevant distinctions which do not change the likelihood for confusion and must be excluded from consideration as being a generic or functional component of a domain name. Belo Corp. v. George Latimer, WIPO Case No. D2002-0329; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
Accordingly, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant asserts that no connection between the Respondent and the Complainant or its business exists. Screenshots of the Respondent’s website (Annexes 7 and 8 to the Complaint) show sponsored links to the Complainant’s business competitors and an offer to sell the disputed domain name.
“[M]ere use of the disputed domain names to attract customers, for commercial gain, to Respondent’s website by creating consumer confusion with Complainant’s trademarks would not […] establish rights or legitimate interests in the domain names on the part of Respondent.” Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
While the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.
Paragraph 4(c) of the Policy lists a number of circumstances which can be taken into consideration to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply to the present case.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), for a complaint to succeed, the panel must be satisfied that the disputed domain name was registered and is being used in bad faith.
There is no evidence that the Respondent conducts any legitimate commercial or noncommercial business activity under the name “Erik Olsson,” nor is there evidence that the Respondent is commonly known under such name.
The Complainant has been doing business under the “Erik Olsson” name for over 17 years in relation to real estate and operates a website under the same name. In this Panel’s view, it is unlikely that the Respondent was not aware of the Complainant’s trademark when registering the disputed domain name.
The disputed domain name directed Internet users to a website featuring sponsored listings and advertising links related to real estate while the Complainant provides real estate services. The Respondent’s website also stated that the disputed domain name was available for purchase.
The Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name, nor did the Respondent reply to the Complainant’s contentions.
Whether the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant, who is the owner of the trademark, or to a competitor of the Complainant, or capture and profit from click-through revenues based on web traffic seeking the Complainant’s website, the Panel finds that the disputed domain name was registered and used in bad faith.
Also, while the Panel notes that the Respondent’s website appears to have been subsequently deactivated after commencement of these proceedings, this does not in the circumstances preclude a finding of a bad faith registration and use of the disputed domain name.
Accordingly, the Panel considers paragraph 4(a)(iii) of the Policy to be fulfilled.
For 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 <erikolsson.com> be transferred to the Complainant.
Date: July 19, 2012