WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tyco International Services GmbH v. Whois Domain Admin / Kwang-Mook Choi

Case No. D2016-0257

1. The Parties

The Complainant is Tyco International Services GmbH of Schaffhausen, Switzerland, represented by Accent Law Group, Inc., United States of America (“United States”).

The Respondent is Whois Domain Admin of Seoul, Republic of Korea / Kwang-Mook Choi of Seoul, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <tycocloud.com>, <tycogram.com>, and <tycosoft.com> are registered with Whois Networks Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On the same date, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names. On February 12 and 16, 2016, the Registrar transmitted to the Center its verification response confirming that Kwang-Mook Choi is the registrant and providing the contact details.

On February 17, 2016, the Center notified the parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement was Korean. In the same notification, the Center instructed the Complainant to provide, by February 20, 2016:

“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or

2) submit the Complaint translated into Korean; or …

3) submit a request for English to be the language of the administrative proceedings.”

To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by February 22, 2016.” The Center also advised the Respondent:

“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.

Please note that if we do not hear from you by [February 22, 2016], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”

On February 17, 2016, the Complainant responded to the Center in a message also sent to the Respondent. The Complainant requested that English be the language of the proceeding, and referred to its reasons contained in the Complaint. The Center did not receive any correspondence from the Respondent.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 23, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was March 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2016.

The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on April 6, 2016. 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 identifies itself as a joint venture created by (i) Tyco International PLC, engaged in the business of global fire protection and security solutions industries, and (ii) TE Connectivity (formerly, Tyco Electronics), which designs and manufactures electronic connectors, components, and systems. The two entities have used the TYCO mark for its respective goods and services. The Complainant or its predecessor has registered various TYCO marks in a number of countries, including the United States (on August 23, 2005, July 7, 2012, March 3, 2015, May 19, 2015) and the Republic of Korea (on September 10, 2002). Tyco International PLC uses the <tyco.com> domain name. According to publicly available records, Tyco Fire & Security GmbH registered the domain name on November 23, 1998.

The Respondent registered the disputed domain names <tycocloud.com> and <tycosoft.com> on July 23, 2015, and <tycogram.com> on July 31, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.

In addition, the Complaint states, inter alia:

“Respondent is intentionally seeking to put Complainant to the added work of translating its correspondence from the Korean language so as to gain leverage in negotiating a sale of the Disputed Domains ....”

“Tyco has about 57,000 employees in more than 900 locations across 50 countries serving various end markets, including commercial, institutional, governmental, retail, industrial, energy, residential and small business.”

“TYCO Marks ... have continually been used in interstate and international commerce (including in Respondent’s home country of South Korea).”

“As a result of the long usage and promotion of the TYCO Marks, they have become overwhelmingly famous and widely recognized around the world.”

“Respondent’s website under the Disputed Domains changed after a demand letter was sent to Respondent by Complainant’s Representative …. After receiving this letter, Respondent changed the resolution of the <Tycosoft.com> domain to remove a nearly identical copy of Complainant’s TYCO blue-and-white logo … and changed its <Tycocloud.com> website from a registrar/hosting provider promotional page to what appears to be a blog page featuring third-party advertisements.”

“Respondent’s use has tarnished and diluted the Marks.”

“Respondent’s true identity was only discovered once it replied to the demand letter from Complainant’s Representative. Such use of a privacy service is further evidence of Respondent’s bad faith registration and use ….”

“The fact that Respondent made its offer to sell the Disputed Domains for $8,000 only highlights its bad faith in registering and using the Disputed Domains.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(f) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default.

6. Discussion and Findings

The Panel must initially address the language of the proceeding.

Under paragraph 11(a) of the Rules, the language of the Registration Agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the Registration Agreement. But the rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the Registration Agreement is Korean. Nevertheless, the Complainant requests that English be the language of the proceeding.

After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in the English language. The Respondent did not respond to the Center’s notification, and has declined to take part in the proceeding. Under these circumstances, the Panel determines that English is the language of the proceeding.

Turning to the merits, in order to prevail, the Complainant must satisfy each of the three elements under paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel determines that the disputed domain names <tycocloud.com>, <tycogram.com>, and <tycosoft.com> are identical or confusingly similar to a mark in which the Complainant has rights, TYCO. TYCO is the predominant portion of each of the disputed domain names. The addition of the generic term “cloud”, “gram”, or “soft”, followed by the generic Top-Level Domain “.com”, does not defeat confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9.

The first element is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has met its initial burden of making a prima facie showing. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted.

The Panel notes that the disputed domain names <tycosoft.com> and <tycocloud.com> both resolve to a website that contains the phrases “everything on cloud” and “Thank You, Cloud Office!” (emphasis in original). The phrases might suggest a legitimate interest in the domain names in that they relate to cloud-computing or computer software – and not the Complainant. Although the “ty” term might be an abbreviation for “thank you” in the current electronic vernacular, it is far less understood that “co” refers to “cloud office”. Moreover, other than the “everything on cloud” and “Thank You, Cloud Office!” phrases, the resolving websites do not contain or refer to anything that relates to cloud computing or software, making the referenced phrases seem more gratuitous than substantive. In addition, the Respondent’s use of a stylized graphic incorporating a substantially similar color and font scheme to the Complainant’s logo indicates that the Respondent intended to trade off the Complainant’s mark rather than use the disputed domain names for a bona fide offering or legitimate noncommercial or fair use.

The Panel is unable to ascertain any right or legitimate interest that the Respondent has in the disputed domain names.

The second element is demonstrated.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain names “ha[ve] been registered and [are] being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.

In its correspondence with the Complainant, the Respondent urged that because the Complainant’s business is related to fire extinguishing and related equipment, the disputed domain names <tycocloud.com> and <tycosoft.com> (which purport to relate to cloud computing or computer software) could not be confused with the Complainant. The Complainant replied to the Respondent that the Complainant “uses the TYCO name for both cloud computing and software.”

As noted above, the resolving websites for <tycosoft.com> and <tycocloud.com> contain little that refers to the purported target subject. It is the Panel’s view that Internet users will likely associate these disputed domain names with the Complainant, and that such was the Respondent’s intent. As set forth in paragraph 4(b)(iv), the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site[s] … by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site[s]”.

The disputed domain name <tycogram.com> resolves to a website whose content, in Korean, only announces that the domain name is registered, perhaps a form of a “passive holding” of a domain name. The panel has discretion to find bad faith in light of all circumstances, which in this case include the Complainant’s well-known mark, the Respondent’s use of a privacy service to shield its identity, and the Respondent’s default in this mandatory proceeding. WIPO Overview 2.0, paragraph 3.2.

The third element is present.

7. Decision

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 names <tycocloud.com>, <tycogram.com>, and <tycosoft.com> be transferred to the Complainant.

Ilhyung Lee
Sole Panelist
Date: April 19, 2016