WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berkenhoff GmbH v. Opec Engineering Co., Ltd.
Case No. D2003-0503
1. The Parties
The Complainant is Berkenhoff GmbH, of Heuchelheim, Germany, represented by Wayne J. Carroll, Germany.
The Respondent is Opec Engineering Co., Ltd., of Pyungteak City, Kyung Gi Do., Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bedra.com> is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2003. On June 26, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On July 7, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 11, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 July 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 6, 2003.
The Center appointed Dimitris Oekonomidis as the sole panelist in this matter on August 11, 2003. 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 has enjoyed trademark protection for BEDRA for over two decades. The first trademark registration was made in Germany on April 24, 1982. Further registrations followed in several countries (Brazil 1994, Argentina 2000, Mexico 2001, USA 2001, European Union 2001, Japan 2001, Korea 2002, China 2002, Taiwan 2002, Canada 2002). (Annex III: copies of the trademark registrations for BEDRA).
According to the search results of Whois database, the record for the disputed domain name was created on August 2, 1999, in the name of the Respondent (Annex I: copy of Whois search results).
5. Partiesí Contentions
The Complainant contends that the domain name registered by the Respondent is identical to the trademark for which the Complainant has enjoyed trademark protection for over two decades.
Further the Complainant asserts that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name <bedra.com>, or any other variant of "bedra", because the Complainant has prior intellectual property rights in this name of which the Respondent was fully aware, especially as a direct competitor of the Complainant and that Complainant enjoys trademark protection for the disputed name in the country of organization of the Respondent. According to the Complainant the Respondent has registered the disputed domain name simply in order to cause difficulties for its competitor/the Complainant. As evidence of the latter allegation, the Respondent has never utilized the domain name since registration and merely wanted to block the Complainant from using it.
The Complainant maintains that the registration of the disputed domain name should be considered as having been done in bad faith on account of the reasons mentioned above as well as on account of the Respondent having no legitimate need or purpose for the disputed domain name.
As additional indicia of the improper purpose/bad faith of the Respondent's registration of the domain name identical to the Complainant's trademark, the latter points out that there has been litigation (unrelated to the domain name) between them in the past, though this ended up in a settlement.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances which indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The domain name at issue, is identical to the trademark BEDRA, in which the Complainant has rights.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
Since the adoption and use by the Complainant of the trademark BEDRA predates the first entry of <bedra.com> as domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain name.
A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant.
In this case, the Respondent neither has been authorized by the Complainant nor has independent rights to use the BEDRA trademark or to register the domain name at issue. The Respondent has not made any use of, or entered into any preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent is not making any legitimate non-commercial or fair use of the contested domain name. Actually, the Respondent has never utilized the domain name since registration. The objective of the registration appears to have been to cause difficulties to the Complainant who is a direct competitor of the Respondent and block the Complainant from using it.
The Respondentís lack of a legitimate interest in the domain name at issue is also evident in the fact that the Respondent registered the domain name after the Complainant had registered the trademark BEDRA.
All the above support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
To support bad faith, the Complainant relies on essentially the same facts upon which it relies to establish the other ingredients of its case.
A finding that a Respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a Complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.
The context of the registration and use of the subject domain name by the Respondent, taking into consideration the prior intellectual property rights of the Complainant on the BEDRA mark, the direct competition between the parties, are facts which constitute evidence from which an inference of bad faith may be made. The Respondent has done nothing to displace the inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that the Complainant has established its case.
The Complainant asks that the domain name <bedra.com> be transferred to it. The Panel so orders.
Dated: August 27, 2003