WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euroview Enterprises LLC v. Jinsu Kim
Case No. D2016-1124
1. The Parties
The Complainant is Euroview Enterprises LLC of Elmhurst, Illinois, United States of America, represented by Partridge Partners PC, United States of America.
The Respondent is Jinsu Kim of Hwaseong, Gyeonggido, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <euroview.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2016. On June 6, 2016, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2016, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.
On June 8, 2016, the Center transmitted to the parties a Language of Proceedings notice, in both English and Korean. The Center notified the parties that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement was Korean. The Center instructed the Complainant to provide, by June 11, 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 (again, also in Korean) 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 June 13, 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 [June 13, 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 June 9, 2016, the Complainant requested that English be the language of the proceeding, setting forth its reasons in its Supplemental Request Regarding Language of the Proceeding. On June 10, 2016, the Respondent requested that the language of the proceeding be Korean, referring to paragraph 11 of the Rules and setting forth reasons.
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 (in both Korean and English) formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2016. The Center’s notice indicated that the deadline for the Respondent’s Response was July 4, 2016, “in the absence of any extension.” On June 28, 2016, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the due date for the Response was extended to July 8, 2016. The Response, in Korean, was filed with the Center on July 8, 2016, with some of the annexes in English text.
On July 11, 2016, the Center received from the Complainant its Reply in Support of Complaint, which states that the Response “contains mistakes of fact and law and discloses new information that could not have been anticipated when filing the Complaint. In this Reply, Complainant respectfully submits to the Panelist a corrected factual and legal record, addresses new information disclosed in the Response and denies any of Respondent’s allegations left unaddressed.” On July 12, 2016, the Center acknowledged receipt and stated:
“No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel, when duly appointed, will be informed of the Center’s receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.”
On July 12, 2016, in response to the Complainant’s supplemental filing, the Respondent inquired whether it may file a supplemental filing of its own. The Center’s response, in both Korean and English, included the same message quoted above in its response to the Complainant earlier on July 12, 2016.
On July 12, 2016, the Respondent transmitted to the Center its supplemental reply [추가 답변서], again in Korean with some annexes in English.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on July 22, 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.
On August 3, 2016, the Panel issued Procedural Order No. 1, which requested each party to submit additional information, by August 10, 2016. The Order also stated that the Complainant may, if it so desired, by August 10, 2016, submit a supplemental filing responsive to the Respondent’s filing dated July 12, 2016, and that if the Complainant chose to do so, the Respondent may submit a responsive filing thereto by August 17, 2016. The parties were directed to transmit all materials to the Center, with a copy to the other party.
On August 5, 2016, the Respondent transmitted to the Center information requested in Procedural Order No. 1. On August 9, 2016, the Complainant transmitted to the Center its submission, with annexes, containing requested information and its response to the Respondent’s July 12, 2016 supplemental filing. On August 16, 2016, the Respondent transmitted to the Center its second supplemental filing [추가 2차 답변서] responsive to the Complainant’s August 9, 2016 filing. On August 17, 2016, the Respondent transmitted to the Center a third supplemental filing [추가 3차 답변서], requesting that its document from the previous day be withdrawn and that the new filing be accepted in its place.
On September 2, 2016, the Panel issued Procedural Order No. 2, requesting that by September 7, each party submit information relating to the timing of the Respondent’s acquisition of the disputed domain name. On September 6, 2016, the Complainant and the Respondent separately transmitted to the Center, with a copy to the other, its respective responsive submissions. Procedural Order No. 2 allowed for each party to submit, by September 12, 2016, a reply to each other’s submissions. The Respondent did so, on September 12, 2016.
4. Factual Background
The Complainant is in the business of “fabricat[ing] and install[ing] shower doors & tub enclosures.” It states that it previously operated as Heights Glass & Mirror Co. (HGMC). The Complainant is the listed owner of the EUROVIEW trademark for “glass shower and bathtub enclosures,” registered with the United States Patent and Trademark Office (“USPTO”), on August 3, 2010. Registration papers indicate a first use in commerce date of August 4, 1992.
HMGC previously registered the mark EUROVIEW FRAMELESS GLASS ENCLSOURES, also for “glass shower and bathtub enclosures,” with a first use in commerce of August 4, 1994. The application for this registration was filed on February 6, 1995, and the mark was registered on December 26, 1995. The Complainant states that it “inadvertently allowed the earlier registration to lapse in 2002”. This mark was cancelled on September 28, 2002.
The disputed domain name <euroview.com> was initially registered on July 31, 1995. As further discussed herein, the Respondent acquired the disputed domain name between September 2006 and the spring of 2007.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant also states that the Respondent’s bad faith is established under paragraph 4(b)(i), (ii), and (iv) of the Policy.
In addition, the Complainant states, inter alia:
“Euroview has been in business for over fifty years (previously operating as Heights Glass & Mirror Co.), and has operated under the EUROVIEW name and mark since 1992…. Euroview has extensively used the EUROVIEW name and mark in connection with a variety of glass fixtures and products since its first use in 1992, has expended substantial sums on advertising and marketing, and has generated over fifty million dollars in sales in connection with the EUROVIEW name.”
“[T]he Infringing Domain Name was registered on March 14, 2007 …, long after Euroview’s adoption and registration of the EUROVIEW mark.”
“[T]he Infringing Domain Name resolves to a website that automatically redirects users to fraudulent computer scanning sites that lead to malware…. Euroview was alerted to this malicious activity when several of its customers, mistakenly drawn to the Infringing Domain Name, complained to Euroview about receiving viruses and malware from the website to which they had been redirected.”
“Respondent is currently using the Infringing Domain Name to automatically redirect users to a fraudulent computer scanning site that installs malware and infects the user’s computer. Upon accessing the Infringing Domain Name, the user is taken to the fraudulent site that informs the user a virus or malfunction has been detected on their system.”
“The Infringing Domain Name resolves to a website that automatically redirects users to fraudulent computer scanning sites that lead to malware and viruses …. Euroview’s customers have ventured to the Infringing Domain Name, mistakenly believing it to be Euroview’s own website, and their computers have been infected with malware.”
“Even if Respondent’s use of the Infringing Domain Name led to a simple landing page without malware, use of a domain name to post landing pages does not of itself confer rights or legitimate interests.”
The Complainant’s other arguments are addressed herein, as relevant.
The Respondent asserts, inter alia:
The term “euro” refers to monetary currency and is a general abbreviation for terms such as “European” [유럽인] and “European Union” [유럽연합의].
When creating the domain name, the Respondent merely added to “euro” another common term, “view”.
The “euroview” phrase contains two generic terms, and does not give rise trademark rights.
Anyone can see that “euro view” is a combination of two obviously generic terms. A google search of “euroview” term yields 18,300,000 hits.
The Complainant’s mark is not as well known as marks like “마이크로소프트 [Microsoft], 삼성 [Samsung], HP, Cocacola”.
The term “euroview” is used globally by many companies in various fields. Several other companies have websites containing “eurovew” in the domain name.
The Complainant’s cancelled trademark should not be considered.
The disputed domain name was registered on July 14, 1995.
The Complainant commenced this proceeding twenty-one years after the disputed domain name was registered.
The Complainant and the Respondent are in different businesses. There is no evidence of overlap between the two.
The Complainant’s actions are tantamount to Reverse Domain Name Hijacking.
The Respondent has registered two other domain names containing “euro” – <eurostone.com> and <europex.com>.
The Respondent has been “peacefully” using [“평화롭게 사용”] the disputed domain name <euroview.com>.
The Respondent is unaware of any viruses or malware associated with the disputed domain name.
The Complainant did not have a business presence in the Republic of Korea.
The Respondent did not know of the Complainant’s mark.
The Respondent’s other arguments, where relevant, are addressed herein.
6. Discussion and Findings
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 provides 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, because
“(1) Euroview and Respondent previously exchanged correspondence regarding the Infringing Domain Name in English; (2) Respondent has operated the Infringing Domain Name in English; (3) Respondent has engaged in several prior UDRP proceedings in English; and (4) Euroview is not able to communicate in Korean without substantial difficulty and undue delay.”
The Respondent objects, urging that the language of the proceeding be Korean. The Respondent asserts that although he was able to exchange emails with the Complainant in English in “brief, simple” correspondence, a UDRP proceeding is another matter. This might be a fair point for some parties, especially a novice to UDRP proceedings. But this Respondent is far from a stranger to the UDRP. The Respondent’s filings indicate that he has full command of the intricacies and details of the UDRP framework. Indeed, as the Respondent states, he has been a party in several UDRP proceedings. He notes that he prevailed in Alexey Kistenev v. Jinsu Kim, WIPO Case No. D2008-1870 (March 2, 2009), in which the panel denied the complaint, in a decision in English. Although the panel ruled in favor of the complainant and ordered a transfer of the domain name in Wilcom Pty Ltd v. Jinsu Kim, WIPO Case No. D2009-0670 (July 28, 2009), the Respondent declares that he successfully “blocked ICANN” (presumably meaning the registrar) from implementing the decision by bringing a timely action in the Seoul Central District Court. The court’s decision to this effect is attached to the Response. [Kim Jinsoo v. Wilcom Pty Ltd.], 2011 Gah-Hahb 44967.
After objecting to the Complainant’s request that English be the language of the proceeding, the Respondent submitted its Response, which, although in Korean text, refers to a number of WIPO-administered UDRP decisions (several in English), even quoting from the English text in these decisions.1 In addition, the Response and the Respondent’s supplemental filings include various attachments, several of which are in English, including most noticeably, the Respondent’s email correspondence with a domain marketing company. Thus, in the Panel’s view, the Respondent’s objection to English as the language of the proceeding is somewhat disingenuous.
The parties here have submitted all they wish, in their preferred languages. It appears that each party understands or has received translations of the other’s filings, allowing it to submit responsive arguments. At this stage, a formal declaration of the language of the administrative proceeding – either English or Korean, or both – is unnecessary. The full case record indicates that both parties have the means and ability to understand the English decision with little difficulty. In any event, the Panel’s decision is in English.
The Center notified the parties that under the Rules, the Panel has the sole discretion to determine the admissibility of supplemental filings. The case file that the Panel initially received from the Center on appointment includes the supplemental filings submitted by both parties on July 11 and 12, 2016. In the Panel’s discretion, and in an effort to consider the parties’ full arguments, the Panel chose to review and consider these filings. Also in its discretion, the Panel issued two Procedural Orders requesting additional material and evidence from the parties. The case record is complete, and the parties have had their say.
Delay in Commencement of Proceeding
The Respondent questions the timing of the Complaint, which was filed twenty-one years after the initial registration of the disputed domain name, by a different party. This is not fatal for the Complainant. First, “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP ….” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10. Rather, the instructive question is whether “a complainant can establish a case on the merits under the requisite three elements.” Id. Second, as discussed herein, the instructive date is the date that the Respondent acquired the disputed domain name, not the date that it was previously registered by another party.
Turning to the merits, the Complainant must satisfy each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove that (1) it has rights in a mark, and (2) the disputed domain name is identical or confusingly similar to that mark. The Respondent challenges the Complainant’s rights in the EUROVIEW mark. The Respondent argues that the mark contains two generic terms, the mark is not distinctive, the mark was registered after the registration of the disputed domain name, and one of the Complainant’s marks was cancelled.
Simply, “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” WIPO Overview 2.0, paragraph 1.1. The Complainant has shown that it has rights in the EUROVIEW mark, initially through use; it has also obtained registration in the USPTO. The Panel determines that the disputed domain name <euroview.com> is confusingly similar or identical to the Complainant’s EUROVIEW mark. The addition of the generic Top-Level Domain (“.com”), a technical requirement of the domain name, is all that differentiates between the disputed domain name and the mark, and may be disregarded here. Id. paragraph 1.2.
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 name. The Complaint states that the “Respondent is not affiliated or related to Complainant Euroview in any way, nor is Respondent licensed by Euroview or otherwise authorized to use the EUROVIEW mark.” The Complainant has met its initial burden of making a prima facie showing. The Respondent thus has the burden to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of examples that demonstrate a respondent’s rights or legitimate interests in the domain name (with “you” or “your” referring to the respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent appears to be in the business of domain name speculation, owning some 900 domain names. The Respondent contends that “euroview” is a combination of commonly used generic terms. But if “euro” and “view” are separately dictionary terms, it is not clear for what product or service “euroview” is the generic term. Moreover, even assuming arguendo that <euroview.com> contains a generic term, the “mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase … may not of itself confer rights or legitimate interests in the domain name.” WIPO Overview. 2.0, paragraph 2.2.
The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is demonstrated.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires evidence that the “domain name has been registered and is being used in bad faith.” For purposes of paragraph 4(a)(iii), it is the date that a respondent takes possession of the disputed domain name that is instructive. WIPO Overview 2.0, paragraph 3.7. Although the Registrar notified the Center that the disputed domain name <euroview.com> was initially registered on July 31, 1995, submissions by the parties, as requested by the Panel, indicate a later date when the Respondent took possession. The Respondent states that it purchased the disputed domain name on September 7, 2006; the Complainant contends that the disputed domain name came into the Respondent’s control by March 14, 2007. The Panel agrees with the Complainant that whether the conclusive date is 2006 or 2007, by the time that the Respondent acquired the disputed domain name, the Complainant’s rights in the EUROVIEW mark were established.
Paragraph 4(b) of the Policy provides a list of circumstances that are evidence of “the registration and use of a domain name in bad faith.” The examples provided in paragraph 4(b) are not exhaustive, and the requisite bad faith element may be deemed present by other circumstances. See, e.g., Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074 (November 28, 2000).
Here, the Complainant asserts that Internet users resorting to the disputed domain name, namely and most notably, the Complainant’s customers, were redirected to a site that led to malware and infection. The Complainant has provided a notarized affidavit from its vice president stating, “On multiple occasions, it has been brought to my attention that customers were directed toward euroview.com and upon visiting the site they received malware and hijacking attempts. These customers intended on coming to our site to purchase products and services from our company.” The Complainant also submitted an email message from one of its customers supporting this statement.2
Evidence of malware infection is relevant in the Panel’s determination of bad faith under paragraph 4(a)(iii) of the Policy. See Humble Bundle, Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0914 (June 21, 2016). As Panelist Lothian has written, a respondent’s spreading malware “implies abusive conduct of a particularly serious nature,” conduct that “goes well beyond the activities of the typical cybersquatter.” Id. Here, when the Respondent engaged in such activity, it must have been aware of those who would be affected, including the Complainant and its customers.
The third element is present.
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 <euroview.com> be transferred to the Complainant. The Panel declines to find Reverse Domain Name Hijacking in the present case.
Date: September 12, 2016
1 For example, the Response, mostly in Korean, includes the following English excerpts:
“Squirrels LLC v. Giorgio Uzonian WIPO Case No. D2014-1434 이 분쟁에서 패널은 ‘this common dictionary term preceded its own trademark rights.’ 와 ‘it consistently used the domain name for its value as a common dictionary word and not for its value as a trademark, the offer by a respondent to sell such a domain name is not by itself evidence of bad faith use.’ 라고 하였습니다.”
“Florim Ceramiche S.p.A. v. Domain Hostmaster, Customer ID: 24391572426632, Whois Privacy Services Pty LTD / Domain Administrator, Vertical Axis Inc. WIPO Case No. D2015-2085 이 소송에서 패널은 ‘the Complainant’s trademark does not seem to be well-known and is only designated for some European countries, but not for the Respondent’s country of domicile, being Australia in the case of the registrar’s privacy service and Barbados in the case of the named Respondent’ 라고 언급합니다.”
2 The email message reads:
“To whom this concerns, I was looking into purchasing a shower door from you and at first I went to euroview.com. The first time I was directed to one of your competitors. The second time visiting my computer ended up with a blue screen on it saying to call a number and download a specific program because my computer was now infected. I think I was able to get out of the site and have my computer unharmed, but I just wanted you to know of the issue since I think you have other customers dunning into the same issue .…”