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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter Closomat AG v. NyunHwa Jung

Case No. D2010-1867

1. The Parties

Complainant is Inter Closomat AG of Zug, Switzerland, represented by E. Blum & Co. AG, Switzerland.

Respondent is NyunHwa Jung, KyungBuk, Republic of Korea.

2. The Domain Name and Registrar

The Disputed Domain Name <closomat.com> is registered with Octopusdomains.net LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2010. On November 4, 2010, the Center transmitted by email to Octopusdomains.net LLC a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2010, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2010.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 8, 2010. 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

Complainant states that it “has been a pioneer in the field of shower toilets since 1956, and its product CLOSOMAT is still considered the ‘original’ shower toilet.” Complainant further states the trademark CLOSOMAT “is established and well-known for (luxury) shower toilets in Switzerland and other countries.” Complainant states that it is the owner of, and has provided copies of relevant trademark registration certificates in support thereof for, trademark registrations for CLOSOMAT in Switzerland, the European Community, Australia, Canada, Hong Kong, Japan, Kuwait, New Zealand, Saudi Arabia, Singapore, South Africa, the United Arab Emirates and the United States.

Complainant states that “its affiliate Closomat AG had… been the registered owner of the disputed domain name <closomat.com> for many years, but inadvertently failed to renew it after reorganization of the company due to insolvency of Closomat AG in 2007 and taking over of its daily business by Closemo AG.”

The Registrar has provided information indicating that the Disputed Domain Name was created on August 21, 2010.

A printout provided by Complainant indicates that the website using the Disputed Domain Name contains a statement that the Disputed Domain Name is for sale, along with a link to a “transactional site” at “www.sedo.de” as well as links to “various unrelated third party websites.” Complainant states that it “[o]n October 20, 2010, the Complainant offered to buy the domain name <closomat.com> for EUR 200 while the Respondent offered to sell it for EUR 5000.”

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is identical or confusingly to the CLOSOMAT trademark because “[a]s the domain name is identical to the Complainant’s trademark, it is obviously confusingly similar.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[t]he Respondent is obviously attempting to profit from grabbing the domain name which consists of an established and well-known trademark. To the best of Complainant’s knowledge, the Respondent has no rights or legitimate interests in respect of the domain name, but intends to sell it for a price clearly above costs of registration.”

- The Disputed Domain Name was registered and is being used in bad faith because “the domain name was registered for the purpose of selling the domain name registration to the owner of the trademark or to third parties, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name” and because “[t]he Respondent’s use of the designation CLOSOMAT, which is a coined term and well-known trademark of the Complainant, is creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the CLOSOMAT trademark, and Respondent does not dispute the validity of the CLOSOMAT trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the CLOSOMAT trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “closomat”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.

As this Panel previously stated in a dispute where the second-level portion of a disputed domain name was identical to the complainant’s trademark, “it is obvious without the need for elaboration that Complainant has proven the first element of the Policy.” Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen, WIPO Case No. D2008-0386. Accordingly, in the instant case, Complainant obviously has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[t]he Respondent is obviously attempting to profit from grabbing the domain name which consists of an established and well-known trademark. To the best of Complainant’s knowledge, the Respondent has no rights or legitimate interests in respect of the domain name, but intends to sell it for a price clearly above costs of registration.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.

Accordingly, as a result of Complainant’s supported allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant appears to argue that bad faith exists pursuant to, inter alia, paragraph 4(b)(i) of the Policy. The Panel agrees. The Registrar in this case appears to be affiliated with the registrar Moniker, which offers “.com” domain name registrations for USD8.99. Accordingly, Respondent’s offer to sell the Disputed Domain Name to Complainant, owner of the corresponding trademark, for EUR5000 (the equivalent of about USD6,500), seems to be for “valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name,” especially given that Respondent has not denied same or otherwise provided any evidence as to its documented out-of-pocket costs directly related to the Disputed Domain Name. See, e.g., BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms, WIPO Case No. D2001-1409 (respondent’s unexplained attempt to sell a domain name containing the complainant’s trademark at auction for USD300 constitutes bad faith).

Further, the Panel finds as, have numerous prior panels, that “[i]t is hard to think of a more opportunistic exercise in cybersquatting” given the longstanding and far-reaching scope of the CLOSOMAT trademark and the prior registration of the Disputed Domain Name by Complainant’s affiliate. BAA plc v. Spektrum Media Inc., WIPO Case No. D2000-1179. Here, as there, “[t]the Respondent took advantage of the Complainant’s failure to renew a domain name that must have been known by the Respondent to refer to [complainant’s services]… with which he had no connection.”

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.

7. Decision

For all 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 <closomat.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Dated: December 20, 2010

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