WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viterra Energy Services GmbH & Co. KG v. Com & Network
Case No. D2004-0258
1. The Parties
The Complainant is Viterra Energy Services GmbH & Co. KG of Germany, represented by Kümmerlein, Simon & Partner, Germany.
The Respondent is Com & Network, Daegu, Republic of Korea ("Korea").
2. The Domain Name and Registrar
The disputed domain name is <ista.com> registered with Cydentity, Inc. dba Cypack.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2004. On April 7, 2004, the Center transmitted by email to the registrar a request for registrar verification in connection with the domain name at issue. On April 8, 2004 the registrar 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 contacts for the disputed domain name.
On April 13, 2004, the Center notified the Complainant that the Complaint was administratively deficient. Because the language of the registration agreement was Korean, the Complaint was required to be in Korean, in the absence of an agreement between the parties that the proceeding should be in English. The Center requested the Complainant to either provide evidence of such an agreement or file the Complaint in Korean by April 18, 2004. The Complainant filed the Complaint in Korean on April 16, 2004.
On April 14, 2004, apparently in response to the notification sent to the Complainant on April 13, 2004, the Respondent sent an email to the Center, requesting that the Center's April 13, 2004 notification also be translated into Korean. The Respondent then stated (among other things), "I have no many money and I can't translate [this notification by] using money each time you send me D2004-0258 email. Please tell me by korean language. P.S: I spent 50,000 won (about US$50) to I translate your this letter and write this my response. Please,, Please,, tell me by korean language."
On April 19, 2004, the Respondent filed, in English, a request seeking confirmation of the name and contact details of the Complainant. On April 20, 2004, the Complainant confirmed those details, by referring to the relevant pages of its Complaint.
The Center verified that the Complaint, as submitted in English and Korean, 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 April 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2004.
The Respondent filed its response on May 4, 2004. The Response was filed in English. The Response gave no explanation as to why it was filed in English - an explanation which might have been expected, particularly given the Respondent's email to the Center on April 14, 2004.
The Center appointed James A. Barker as the sole panelist in this matter on May 18, 2004. 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. Supplemental Filing
On May 25, 2004, the Complainant filed a further statement with the Center.
The Rules make no provision for supplemental filings by the parties. The Rules, paragraph 12, provide that "[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." (Emphasis added.) The Panel made no such request in this case. For that reason, the Panel did not receive, and so did not consider, the Complainant's supplemental filing. The Panel has not otherwise found it necessary to request or admit further statements from the parties.
5. Language of Proceedings
Paragraph 11(a) of the Rules provides that:
"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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement is Korean. There is no evidence of an explicit agreement by the parties about the language of the proceedings.
However, in accordance with paragraph 11(a) of the Rules, the Panel has determined that these proceedings are properly conducted in English, having regard to the circumstances. The relevant circumstances are that the Complaint was first submitted in English. All communications from the Complainant have been made in English, except only for the translated Complaint filed on April 16, 2004, in response to the Center's request.
All communications from the Respondent have been filed in English. Those communications include, importantly, the Response; filed by the Respondent even after the proceedings were notified to it in Korean. The Panel infers from those communications that the Respondent has agreed for these proceedings to be conducted in English.
6. Factual Background
The Complainant is a multinational corporation incorporated under the laws of Germany, its head office and principal place of business being located in Münster, Germany. The Complainant is the legal successor of the German companies Raab Karcher Energie Service GmbH and of Viterra Energy Services AG.
The Complainant has been using its ISTA trademark since 1957. The Complainant uses its mark in association with energy-related wares, which particularly include energy consumption measurement devices, and services including facility management services. The Complainant's business activities are described on its German language website at <www.ista.de>. The Complaint attached documents - largely, copies of promotional material - evidencing its business activities in countries such as Brazil, Bulgaria, China, France, Hungary, Italy, Latvia, Lithuania, Poland, Russia, Spain, Switzerland and Turkey.
7. Parties' Contentions
The following contentions are summarised from the Complaint.
Identical or Confusingly Similar
The disputed domain name is identical to the ISTA trademark, service mark and trade name in which the Complainant has rights. The Complainant has rights in the mark as registered in Germany, and registered under the Madrid Agreement and Protocol concerning the international registration of marks. The Complainant has been using its ISTA mark substantially and frequently since market introduction in 1957. By virtue of its international use and the extensive advertising of its corporate brand, the ISTA mark and name is well recognised by consumers. The Complainant has invested significant resources in developing and promoting world-wide its ISTA mark and name.
The disputed domain name led internet users to a website at <forwards.com>. The <forwards.com> website provided a search engine function as well as various links to companies that offer their goods and services. That website also contained a link to a website at <comn.com> at which domain names were offered for sale. The Complainant's searches indicate that the Respondent as well as the <forwards.com> Internet site is well known for cybersquatting.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. On the Complainant's information and belief, the Respondent has no rights in the trademark ISTA either at common law or by registration, and has no present or future intention of conducting any business under the ISTA name. Neither the Complainant, nor any person or entity deriving any rights of use in the ISTA trademark, have granted the Respondent any rights to use it.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain name on November 25, 2001, more than 20 years after the Complainant / its legal predecessors registered the ISTA mark in many countries, and well after its first use in trade.
The Respondent was obviously aware of the Complainant since it linked the disputed domain name to its website at <forwards.com>, even though neither the <forwards.com> website nor any other of the Respondent's business activities show any link to the trademark ISTA. Therefore the only explanation for the Respondent's registration of the disputed domain name can be that the Respondent expected to sell the disputed domain name for valuable consideration to the Complainant. This view is particularly supported by the fact that the Respondent made no business use of the disputed domain name since its registration in 2001.
The Respondent's choice of the disputed domain name indicates that the Respondent has sought to attract, for its commercial benefit, internet users intentionally by creating confusion with the Complainant's mark. The Complainant submits that this indicates bad faith for the purpose of paragraph 4(b)(iv) of the Policy. In addition, the Complainant contends that the Respondent has shown a pattern of bad faith registration, as found in past cases under the Policy.
The following contentions are summarised from the Response.
Identical or Confusingly Similar
The Respondent contends that neither the Policy nor Rules contain express provisions regarding trademark rights. Therefore the Complainant's claim, based on its ownership of the ISTA trademark is unwarranted. The Respondent had no knowledge of the Complainant. Neither the name nor the trademark of the Complainant was known in Korea, where the Respondent resides. The Complainant has no registered trademark rights in Korea.
The Respondent's proposed website does not offer any goods or services similar to those offered by the Complainant. The website has no words or images that are confusingly similar to those in the Complainant's website.
Rights or Legitimate Interests
The Respondent registered the disputed domain name on November 25, 2001.
The Respondent has rights and legitimate interests in the disputed domain name. Since November 2003, the Respondent has been preparing and developing an Internet shopping mall, under the name "ista.com", targeted for its customers and partners in Korea. Its main product line will encompass things such as travel bags, suitcases, jewelry boxes, etc.
To the general public, the acronym ISTA is known to represent, inter alia, the International Sail Training Association, the International Safe Transit Association, or International Seed Testing Association.
Any person who registers a domain name is naturally entitled to sell it, unless their purpose is to sell it for excessive profit.
The Complainant's trademark is used only for products that are sold to a limited number of consumers, and are non-generic products not targeted for the mass market. The products sold by the Complainant are known only by a limited group of professionals, not the general public, and therefore are not globally famous. The Complainant's trademark is neither well-known nor famous in Korea.
At the time it registered the domain name, the Respondent did not know of the Complainant or its mark. The Respondent has been developing a website to be used in connection with the disputed domain name, which is soon to be completed. The Respondent has linked the disputed domain name to the website at <forwards.com> for promotional purposes. Linking is a widely used promotion and marketing method.
The Complainant's malicious charge of cybersquatting indicates its deliberate intent to take advantage of the Policy to snatch the domain name. Neither the Complaint, nor any attachment to it, contains any email or other document that shows the Respondent negotiated with the Complainant or its competitors for any sale, rent or transfer of the disputed domain name.
The Respondent did not register the disputed domain name to hinder the business of the Complainant or cause confusion with its mark. The Respondent's proposed website is to be targeted only at Korean consumers.
8. Discussion and Findings
Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to have the disputed domain name transferred to it, the Complainant must prove that:
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent appears to contend that the Complainant has no relevant rights or legitimate interests in the trademark, because the Complainant's mark is not registered in Korea and is not well-known there. But the Complainant does not need to demonstrate such rights for the purpose of paragraph 4(a)(i) of the Policy. A complainant needs only to demonstrate that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to that mark.
The Complainant has produced substantial evidence that it has rights in the trademark "ISTA": comprising evidence of its registered rights, and rights acquired through use of the mark.
The disputed domain name incorporates the Complainant's trade mark entirely, with the addition of the ".com" extension. It is well established under the Policy that the use of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar. (See for example, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.) It is also well established that the domain name extension does not operate to distinguish the domain name for the purposes of paragraph 4(a)(i) of the Policy.
For these reasons, the Panel finds that the disputed domain name is identical to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(a) of the Policy requires the Complainant to make out a prima facie case under paragraph 4(a)(ii) (and also under paragraphs 4(a)(i) and (iii)). Once that case is made out, the burden is on the Respondent to rebut that case.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <ista.com>. The Complainant has done this by providing evidence of its own extensive rights in the mark ISTA. And the Complainant indicates that the Respondent has no rights in that mark. The Complainant gave it none. It also appears to the Panel (although it was not as such argued by the Complainant), that the ISTA mark has no generic or descriptive meaning. At least from the evidence attached to the Complaint, ISTA appears to be a mark that is distinctively associated with the Complainant and its products.
The burden of proof then shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name, despite the evidence put forward by the Complainant. The Respondent must provide concrete evidence in that respect. (For an early statement of this principle, representing the view of the majority of panel decisions, see for example, Do The Hustle, LLC v. Tropic Web WIPO Case No. D2000-0624.
The Respondent rests its rights or legitimate interests on, in effect, the following:
- Before notice to it of the dispute, it was making demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. The Respondent was developing an "internet shopping mall". Such use of a domain name may demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy.
- "ISTA", used as acronym, has meanings not associated with the Complainant: including, for example, the "International Sail Training Association".
- Any person who registers a domain name, like the Respondent, is entitled to sell it.
The last of these contentions is incorrect. It ignores the existence of the Policy.
The Respondent provided no evidence to support the second contention. But even if it were true, it would be irrelevant to demonstrating that the Respondent has rights or legitimate interests in the disputed domain name.
The Respondent did provide concrete evidence for the first contention. Extensive copies of the webpages which the Respondent said it had developed, for use with the domain name, were attached to the Response. Those pages, under the heading "ISTA.com", provided photographs of various items of luggage, with prices and associated information in Korean.
The question is whether this evidence demonstrates that the Respondent has rights or legitimate interests in respect of the disputed domain name <ista.com>. But the Respondent did not answer this question, and so did not rebut the prima facie case established by the Complainant. The Respondent did not explain why it chose the particular domain name <ista.com>. The Respondent did not explain any connection between <ista.com> and its proposed website, other than the fact of registration of the disputed domain name. The Respondent suggested that "ISTA" is known as an acronym used by other entities (e.g. "International Sail Training Association"). But the Respondent did not suggest that the use of "ISTA" has any particular meaning, as an acronym or otherwise, as used by the Respondent.
Without any such explanations, it appears to the Panel that, at best, the Respondent's selection of that domain name was arbitrary. The Policy does not prevent a finding of a right or legitimate interest in an arbitrary domain name. However, it is unlikely that a respondent could have a right or legitimate interest in an arbitrary domain name that is identical or confusingly similar to a complainant's mark. (For previous panel decisions which accept this principle, see for example, QNX Software Systems Ltd v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921 and other panel decisions cited in that one.)
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant contends that there is evidence of bad faith registration and use under paragraphs 4(b)(i) and (iv) of the Policy, which provide (in part) that there is evidence of the Respondent's bad faith where either:
- the Respondent registered the domain name for the purpose of selling it to the Complainant (paragraph 4(b)(i));
- by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark (paragraph 4(b)(iv)).
The Complainant provided no evidence to support its case under paragraph 4(b)(i) of the Policy. The Complaint merely stated that the website at the disputed domain name referred to another website, <forwards.com>, through which domain names generally were offered for sale. As such, the Complainant did not establish this element of its case.
The Complainant also contends that the type of use contemplated under paragraph 4(b)(iv) of the Policy is the "only conceivable explanation for the Respondent's choice of the disputed domain name."
For the Complainant to establish a case under paragraph 4(b)(iv), the Respondent must have had some knowledge of the Complainant's mark. The Respondent contends that it had no such knowledge when it registered the disputed domain name, and contends that the Complainant's mark is not well known. The Respondent also referred to previous cases under the Policy, which found that the fact a mark is well known in one country does not indicate that it is well known in another (see for example, Craig Media, Inc. v. Kim Hyungho, WIPO Case No. D2004-0091).
The Respondent gave no explanation for why it chose and registered the particular domain name <ista.com>. The Respondent must have chosen <ista.com> for some reason, and for some advantage. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent registered and used the domain name for the purposes described in paragraph 4(b)(iv) of the Policy. This is supported by evidence provided by the Complainant: that the mark "ISTA" is distinctively associated with the Complainant. The Respondent made some assertions, but provided no evidence, to the contrary.
Accordingly, the Panel finds that the disputed domain name was registered, and is being used, in bad faith.
Other Evidence of Bad Faith
Evidence of bad faith is not limited to the circumstances set out in paragraph 4(b) of the Policy. There is other evidence which suggests bad faith registration and use by the Respondent in this case.
Firstly, the Complainant contends that the Respondent has a pattern of conduct in registering domain names in bad faith. In that respect, the Complainant refers to past decisions under the Policy which involved the website at <forwards.com> and/or the respondent "Comn.COM": in particular, VoiceStream Wireless Corporation v. Hanjin Ko, WIPO Case No. D2001-1411; Carfax, Inc. v. COMn.COM, WIPO Case No. D2002-0513; National Association of Securities Dealers, Inc. v. COMn.COM, NAF Claim No. FA0206000114602.
The Complainant did not strongly demonstrate the relationship between the Respondent in this case - Com & Networks - and the Respondent in those cases. But there is some evidence of such a relationship. It is not difficult to speculate that the name "Comn" is an abbreviation of the name "Com & Network". The Respondent in this case has "comn" as a distinctive part of its email address. Also, the Respondent in this case identified Han Jin Ko as its contact. Han Kin Ko was also the respondent in WIPO Case No. D2001-1411 in which the panel ordered the transfer of the domain name then in dispute.
Secondly, the Respondent's conduct of this case suggests bad faith. In particular, by its email dated April 14, 2004 (referred to above under the heading "3. Procedural History") the Respondent requested that this case proceed in Korean, and claimed that it had little money to translate documents into English. Despite those claims, with no explanation and after the Complainant incurred the expense of translating the Complaint into Korean, the Respondent submitted its Response (including many attachments to the Response) in English. This indicates that the Respondent's claims on April 14, 2004, were unreliable - which casts doubt over other claims made by the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ista.com> be transferred to the Complainant.
James A. Barker
Dated: June 1, 2004