WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TMK A/S v. woosan, James Motors
Case No. D2012-2073
1. The Parties
The Complainant is TMK A/S of Holstebro, Denmark, represented by Focus Advokater P/S, Denmark.
The Respondent is woosan of Daegu, Republic of Korea; James Motors of Tonga.
2. The Domain Name and Registrar
The disputed domain name <tvis.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against “woosan” on October 18, 2012. On October 18, 2012, the Center transmitted by email to Megazone Corp., dba HOSTING.KR a request for registrar verification in connection with the disputed domain name. On October 23, 2012, Megazone Corp., dba HOSTING.KR advised the Center that the disputed domain name was transferred to the current Registrar, Tucows Inc. The Center noted the transfer of the disputed domain name during its administration, and an email was sent to the current Registrar on October 19, 2012 requesting a registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response advising the disputed domain name was registered to a privacy service, and disclosing the registrant as “James Motors” and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On October 29, 2012, the Center transmitted by email to Megazone Corp., dba HOSTING.KR and Tucows Inc. noting the current status of the disputed domain name and the comments of Megazone Corp., dba HOSTING.KR which appear to indicate that the transfer of the disputed domain name from it to Tucows Inc. may have been in violation of paragraph 8(b) of the Policy. The Center requested the registrars to indicate by October 31, 2012 whether they would be in a position to restore the registrant details to those reflected in the WhoIs as of October 18, 2012 (providing Megazone Corp., dba HOSTING.KR as the registrar and “woosan” as the registrant for the disputed domain name). The Center further pointed out any final determination in relation to the possible violation of paragraphs 8(a) and (b) of the Policy, to the timing issues associated with the commencement of the administrative proceeding (and any related obligations arising therefrom), and/or any additional procedural steps that may be necessary, would be a matter for the Panel, upon appointment. Several email communications were exchanged between the Center and the registrars subsequently. However the registrars did not appear to be in a position to restore the registrant details to those reflected in the WhoIs as of October 18, 2012.
In light of the above, the Center sent an email communication on November 6, 2012 to the Complainant, inviting it to amend the Complaint. The amended Complaint was received by email on November 9, 2012 by the Center.
The Center verified that the Complaint together with the amended 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 November 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2012.
The Center appointed James A. Barker as the sole Panelist in this matter on December 5, 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.
On December 19, 2012, the Panel issued a Panel Order under paragraphs 10 and 12 of the Rules. The Panel Order requested the Complainant to provide evidence of having either registered or unregistered trademark rights at the date of the creation of the disputed domain name. That first Panel Order sought a reply from the Complainant by January 3, 2013. The Complainant provided some information on that date, but sought a short extension to provide further information. On January 4, 2013, the Panel issued a second Panel Order, agreeing to the requested short extension, allowing the Respondent an opportunity to reply, and extending the due date for decision until January 14, 2013. The Complainant duly provided further information. No communication was received from the Respondent.
4. Factual Background
The disputed domain name was first registered in April 2000, as indicated in the WhoIs details attached to the Complaint (from a search undertaken on October 18, 2012). No direct evidence was provided to establish at what precise time the Respondent (woosan) obtained the registration for the disputed domain name, although the historical use of the disputed domain name in relation to a Sedo parking site appears to be consistent over a period of years.
Evidence attached to the Complaint indicated that the disputed domain name was being advertised for sale on October 10, 2012 on a Sedo parking site with a sale price of Euro 10,000.
5. Parties’ Contentions
The Complaint is very brief. The Complainant claims that “tvis” is used in a trademark which is applied to one of its product lines of kitchens. The original Complainant provides no direct evidence (for example a registration certificate) of having registered rights in that mark. The Complaint attaches copies of the Complainant’s brochures for its products, some of which include a logo which includes the letters “tvis” within a lightly-shaded rectangular border, on top of another term “køkkener” which is also included in a darker shaded border.
The Complainant says that this mark has been used on its products and in advertising “for several years”. The Complaint also attaches a copy of the front page of the Complainant’s website at “tvis.as”. The Complainant says that, currently, its mark is used mainly in Denmark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the disputed domain name is only used for banner-advertising which does not seem to have any relationship to the disputed domain name and could therefore be a function performed by any other domain name.
The Complainant says that the disputed domain name has been used in bad faith. In this connection, the Complainant points to the offer of the disputed domain name for sale, for an amount substantially in excess of the Respondent’s out-of-pocket costs. The Complainant attaches information from Waybackmachine which indicates that the disputed domain name has been for sale at least 17 times since 2001, and that there has never been any real content on the website to which the disputed domain name reverts. The Complainant also provides evidence that the Respondent has registered a large portfolio of domain names, which it says is an indication of bad faith.
The original Complainant provided little evidence that the Complainant has registered or unregistered trademark rights for TVIS. (To succeed under paragraph 4(a)(i) of the Policy, the burden is on the Complainant to provide such evidence.) In response to the Panel Orders, outlined above, the Complainant claimed that it has unregistered trademark rights for TVIS in accordance with the Danish Trademark Act. The Complainant said that the term “TVIS” has been applied to one of its main product lines of kitchens for over 50 years. The Complainant provided evidence of advertising material for its TVIS products from 1985, 1991, and 1999 – these being dates before the creation of the disputed domain name. The Complainant also provided copies of what it claims are export licenses for its TVIS products from 1984, 1996, and 1997. The Complainant provided printouts of its website from 1999 and 2000, using the Internet archive Waybackmachine which featured its claimed mark.
(In response to the Panel Orders, the Complainant also reiterated arguments against the Respondent in relation to paragraphs 4(a)(ii) and (iii) of the Policy. As the Panel Orders expressly only sought information from the Complainant in relation to paragraph 4(a)(i) of the Policy, the Panel has not further taken the Complainant’s additional submissions into account.)
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or 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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after three procedural issues: relating to paragraphs 8(a) and (b) of the Policy, the identity of the Respondent, and delay in bringing the Complaint.
A. Procedural issues
Policy, paragraphs 8(a) and (b)
Paragraphs 8(a) and (b) of the Policy deal with transfers of a domain name during “a pending administrative proceeding”. Paragraph 8(a) relevantly provides that the respondent must not transfer a disputed domain name during a pending administrative proceeding. Paragraph 8(a) further provides that the registrar reserves the right to cancel any transfer of a domain name registration done in violation of that paragraph. Paragraph 8(b) provides that the respondent must not transfer the domain name registration to another registrar during a pending administrative proceeding.
Paragraph 4(c) of the Rules provide that the commencement of the administrative proceeding is the date on which the Center completes its responsibilities under paragraph 2(a) of the Policy. Those responsibilities deal with, inter alia, requirements for the Center to formally notify the complaint to the respondent, once it has reviewed the complaint for compliance with the Policy and the Rules. An obvious difficulty is that such a notification takes place after the complaint is filed by the complainant. Under paragraphs 2(h)(iii) and 3(b) of the Rules, the complainant must provide a copy of its complaint to the respondent when the complaint is first filed. At least at this point, the respondent will have notice of the complaint before the technical commencement of the administrative proceeding under paragraph 4(c) of the Rules.
The terms ”pending administrative proceeding” is not defined in the Policy or the Rules. It seems reasonably clear however that a proceeding is pending once it is filed with the provider (in this case, the Center), rather than at the point it formally commences under paragraph 4(c) of the Rules. If the terms “pending administrative proceeding”, in paragraph 8 of the Policy, are read as the period after the ”commencement of administrative proceeding” under paragraph 4(c) of the Rules, this can lead to a manifestly absurd result. That is, as in this case, a respondent which transfers a domain name after being notified of the filing of a complaint with the Center, but before formal commencement of a dispute under paragraph 4(c) of the Rules, would not be in breach of paragraph 8 of the Policy. The Panel does not consider this to be a reasonable reading of the Policy and Rules. There is no doubt that a dispute is initiated in fact once a complaint is filed with the Center. This is consistent with paragraph 3(a) of the Rules which provides that “any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any provider […]”. For these reasons, this Panel considers that a dispute is initiated, and therefore is “pending” within the meaning of paragraph 8 of the Policy, once a complaint is filed under paragraph 2 of the Rules, and continues to be pending until the decision is notified to the parties and the registrar. This approach is consistent with other decisions under the Policy see e.g. LPG SYSTEMS v. Jerry / Mr. Jeff Yan, WIPO Case No. D2010-0387.
The evidence suggests, and the concerned registrars appear to acknowledge, that the disputed domain name was transferred to the current Registrar (Tucows, Inc.) immediately after the filing of the Complaint on October 18, 2012. As noted by the Center in communications to the registrars, a UDRP panel has previously indicated that under apparently similar circumstances, restoration of the original registrant details would be appropriate until such time as a panel decision or further instructions would be forthcoming: See F. Hoffmann-La Roche AG v. Isakov Aleksandr, WIPO Case No. D2012-1449.
However the registrars have not reinstated the original Respondent’s details. This is not a breach by the registrars of paragraph 8 of the Policy. This is because the obligations under those paragraphs rest on the Respondent. The registrar reserves a right to reinstate original registrant details for violations of paragraph 8(a) of the Policy, but it is not required to do so. That said, this Panel reaffirms the comments made by the Panel in F.Hoffmann-La Roche AG, supra. It would generally be desirable for such details to be reinstated because of the obvious potential for changes to a respondent’s details to affect a pending administrative proceeding, and therefore the proper function of the Policy.
The immediate issue is whether those changes to the Respondent’s details materially affect the Complainant’s case. In the present circumstances, the Panel does not consider that the Complainant’s case has been so affected. This is because there is no convincing evidence that the “new” Respondent is a different entity in fact to the original Respondent. There is no evidence of any more than a change in name. As that change was made by the original Respondent so soon after the commencement of these proceedings, without warning or any communication to the Center, the Complainant, or the original registrar, the Panel has inferred that this change was made by the Respondent in a deliberate attempt to frustrate the application of the Policy (“cyberflight”).
On the approach outlined above to paragraph 8 of the Policy, the actions of the Respondent in this case can also be said to be in violation of both paragraphs 8(a) and (b) of the Policy. Paragraph 14(b) of the Rules provide that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. The Rules do not include such a provision for inferences to be drawn for non-compliance with the Policy itself. However, this Panel considers it consistent with its general powers under paragraph 10(a) of the Rules, and its obligations to consider all the factual circumstances of the case, that it may draw similar inferences from the failure of a party to comply with the Policy. In the circumstances of this case, the Panel considers that this is suggestive of both a lack of rights or legitimate interests in the disputed domain name, and of use of the disputed domain name in bad faith. These matters are addressed further below in relation to each of those matters respectively.
Identity of the Respondent
An issue related to that of cyberflight is the identity of the Respondent. The original Respondent has, on its face, transferred the disputed domain name registration to a new Respondent. This raises the issue of whether the Complainant’s case is affected by this change. While the Complainant amended its Complaint to include the name of the new registrant, the substance of its Complaint was otherwise unchanged.
The Panel does not consider that the Complainant’s case is materially affected by this change. Principally, this is because there is no convincing evidence to this Panel that the underlying registrant-in-fact has changed. As the Respondent chose to submit no Response, there is no evidence in this case that the original Respondent is a different entity to the new Respondent. This is reinforced by the superficial contact details for the new registrant, “James Motors”, which contain nonsensical address details (e.g. listing the registrant’s city and state both as “Sy”). As such, the Panel has proceeded on the basis that the allegations in the Complaint apply equally to the newly named registrant, and that the first Respondent remains the registrant-in-fact.
Delay in bringing Complaint
As noted above, the disputed domain name was first registered in 2000. This means that the disputed domain name was registered around 12 years before the Complainant filed the Complaint. The Complainant provides no explanation as to why it took so long to file the Complaint. Such a lack of explanation is notable. The disputed domain name is registered in the “.com” TLD, which is one of the more obvious domain spaces for the registration of a mark. This means that the Complainant has waited more than 12 years to initiate a Complaint.
However, as this Panel has discussed in other cases, a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256. In addition, by choosing not to respond, the Respondent has provided no evidence as to whether the Complainant’s delay should be held against it. While a complainant’s delay may make it more difficult to prove its case, particularly under paragraphs 4(a)(ii) and (iii) of the Policy, delay itself is not a matter that relates directly to any of the issues which a Complainant must prove under paragraph 4(a) of the Policy. In these circumstances, the Panel has not drawn adverse implications against the Complainant.
The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence. See e.g., in addition to this panel’s earlier-mentioned decision in Chocolaterie Guylian, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, and cases cited therein. While this Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g. Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), this Panel sees no compelling reason to disrupt or depart from years of well settled UDRP jurisprudence on this point.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove both that it has rights in a mark, and that the disputed domain name is identical or confusingly similar to that mark. As noted above, the Complaint included little information on whether the Complainant had rights in a mark. As such, on December 19, 2012, the Panel issued an order seeking further information from the Complainant as to whether it claimed rights in either a registered or unregistered mark. The Complainant provided further information to the effect that it claims rights in an unregistered mark for TVIS, based on the Complainant’s long-standing use of that mark in connection with particular kitchens. The Complainant provided various evidence for such rights, including advertising under the mark which it claimed from dates before the registration of the disputed domain name.
What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview 2.0. The consensus of prior UDRP panels is relevantly set out under the paragraph ”1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?”:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.”
The Panel considers that the Complainant’s evidence, outlined above, is sufficient to indicate that the Complainant has a history of trading under the mark TVIS in relation to particular kitchen products. That mark has featured prominently on the Complainant’s advertising over many years, and on the Complainant’s website. It is a mark that is clearly put forward as the Complainant’s brand. The Respondent provided no evidence to rebut the Complainant’s case in this respect.
The second issue which the Complainant must establish under paragraph 4(a)(i) of the Policy is that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights. The Panel finds that the disputed domain name is relevantly identical for this purpose, as the Complainant’s unregistered mark is entirely incorporated, without change or addition, in the disputed domain name. It is well-established that the “.com” extension is to be disregarded for the purpose of this comparison.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds that the Complainant has presented a bare prima facie case against the Respondent. The Respondent has chosen not to respond to that Complaint. There is no evidence in the case file which suggests to the Panel that the Respondent might have a right or legitimate interest in the disputed domain name, and the Respondent’s ”cyberflight” reinforces this conclusion. As indicated in the Complaint, the disputed domain name reverts to the Sedo parking site and is offered for sale. By choosing to submit no reply, the Respondent has provided no explanation or evidence as to whether there is a legitimate connection is between the term “tvis” and its activities. In the absence of such an explanation, the Panel considers that the only reasonable inference is that the Respondent registered the disputed domain name to on-sell it because of its potential trademark value. Such a use cannot be a basis for a right or legitimate interest under the Policy.
This does not, however, mean that the Complainant established a strong case against the Respondent. The initial Complainant provided little direct evidence of the reputation of its mark, beyond mere copies of brochures for its products. The Complainant provided no evidence of the extent of its reputation on the Internet, its market share, the extent of its advertising or revenue, or its reputation in a particular segment of the relevant market. Despite this, establishing a prima facie case requires only that the Complainant establish a colorable case against the Respondent. The Panel considers that the Complainant has established such a case, by its argument and the further evidence provided in response to the Panel Orders. Further, the case file otherwise contains no evidence which suggests that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s trade mark rights and reputation. See e.g. SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
In this case, there is no direct evidence as to the Respondent’s motivation in registering and then using the disputed domain name. Evidence in the Complaint indicates that the disputed domain name has been advertised for sale over a number of years, and is currently advertised for sale for Eur 10,000. On its face, this is an amount well in excess of the Respondent’s out-of-pocket costs, and suggests that the Respondent registered and has used the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor. These circumstances are evidence of registration and use in bad faith for the purpose of paragraph 4(b)(i) of the Policy. The Respondent’s attempt at cyberflight also reinforces this conclusion. Previous UDRP panels have concluded that cyberflight is indicative of bad faith registration and use under paragraph 4(b) of the Policy: see e.g. Funix B.V. v. Domain Administrator, WIPO Case No. D2009-1048.
There is otherwise no evidence of an objective connection between the Respondent and the term “tvis”. The Complainant’s business and unregistered rights substantially predate the registration of the disputed domain name. Accordingly, there is an inference that the Respondent was aware of the Complainant’s mark when it registered and then used the disputed domain name.
The Panel finds that the Complainant has therefore established its case under paragraph 4(a)(iii) of the Policy.
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,<tvis.com>, be transferred to the Complainant.
James A. Barker
Date: January 14, 2013