WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Malthus AS v. Malthus Inc, 윤진수

Case No. D2011-0391

1. The Parties

Complainant is Malthus AS of Stavanger, Norway, represented by Advokatfirmaet Thommessen AS, Norway.

Respondent is Malthus Inc, 윤진수 of Inchon, Republic of Korea, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <malthus.com> (“Domain Name”) is registered with INames corp. (Korea).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 1, 2011, the Center transmitted by email to INames corp. (Korea) a request for registrar verification in connection with the Domain Name. On March 2, 2011, INames corp. (Korea) transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.

On March 2, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceedings and Respondent submitted a request that Korean be the language of the proceeding both on March 2, 2011. On March 10, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the panel when appointed would have the authority to determine the language of the proceeding.

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 March 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Response was filed with the Center on March 30, 2011.

The Center appointed Andrew J. Park as the sole panelist in this matter on April 6, 2011. 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 is Malthus AS, a Norwegian company. It was established in February, 1966 and it has actively used MALTHUS as a trademark since 1974. It engages in the manufacture, distribution, and rental of modular buildings, formwork, lift/access equipment, and weather protection products.

Complainant owns the MALTHUS trademark pursuant to its Norwegian trademark registration number 1995.12.07. The trademark is used in connection with Complainant’s business relating to the manufacture, distribution, and rental of modular buildings, formwork, lift/access equipment, and weather protection products. Complainant has also registered “Malthus” as a domain name under several gTLDs and ccTLDs worldwide.

Respondent is Malthus Inc., 윤진수 of Inchon, Republic of Korea. Respondent does not appear to own any registered trademarks in MALTHUS. The Domain Name <malthus.com> is registered to Respondent and it directs Internet users to an English language website that is directed towards the building business, the same business as Complainant.

5. Parties’ Contentions

A. Complainant

Complainant’s main arguments are the following.

1. Identical or Confusingly Similar

Complainant contends that the Domain Name is identical to its MALTHUS trademark registered in Norway and to its various “Malthus” domain name registrations under gTLDs and ccTLDs worldwide. Accordingly, Complainant argues that the Domain Name is identical and/or confusingly similar to a trademark in which it has rights.

2. Rights or Legitimate Interests

Complainant contends that Respondent does not have any trademark registrations or trade names corresponding to the Domain Name. Complainant also contends that it did not grant Respondent a license nor authorization of any other kind to use the MALTHUS mark and that Respondent is not affiliated with or related to Complainant in any way. Further, Complainant claims that Respondent does not appear to be commonly known by the Domain Name.

Finally, Complainant contends that Respondent’s website under the Domain Name is directed towards the same building business as Complainant, and thus, all of the foregoing shows that Respondent is aware that the Domain Name corresponds to Complainant’s trademark and was also aware of this fact at the time it obtained registration of the Domain Name.

3. Registered and Used in Bad Faith

Complainant contends that its MALTHUS mark is a well-known trademark in connection with the building business and that it attempted to contact Respondent in an effort to seek the voluntary transfer of the Domain Name. According to Complainant, however, Respondent never replied and that these facts are relevant in a finding of bad faith. In addition, Complainant again argues that Respondent’s website is directed towards the building business and therefore Respondent intentionally attempted to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark.

Complainant also claims that Respondent’s website stated “Domain for sale - make an offer.” Complainant contends that this is an indication that Respondent seeks to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark. Finally, Complainant mentions that Respondent included the following disclaimer: “Legal Disclaimer: The existence of this form does not constitute an offer to sell this domain, and the owner of this domain is not otherwise stating any intention to sell the domain. By hereby submitting a request for information and/or an offer you are acting as the sole initiator of a possible transaction between you and the owner of this domain.” Complaint argues that the existence of a disclaimer cannot cure bad faith.

B. Respondent

Respondent first argues that Complainant should have filed the Complaint in the language of its registration agreement, which is Korean, but that because it was filed in English, Respondent could not fully understand the claims raised in the Complaint. Respondent goes on to state that notwithstanding the language issue, Respondent raises four (4) reasons why he has rights or legitimate interests to the Domain Name.

First, Respondent claims that he purchased the Domain Name to use for a financing-related shopping mall and that he is currently in the planning phase of development. Respondent states that the Domain Name is currently parked with Trafficz. Further, and seemingly inconsistent with his previous argument, Respondent claims that the Domain Name states that it is not for sale. In support, Respondent cites to the specific language allegedly set forth in the website, as follows: “Thank you for your interest in my domain. Unfortunately, this domain [is] for my new business and I can’t sell it.”

Second, Respondent argues that when he purchased the Domain Name, he could not have known of Complainant because Complainant was not famous nor well-known. In support, Respondent argues that the search result at “iNeed Brand”, a Korean brand name search engine, only shows three (3) MALTHUS marks, that each is owned by a different party, and that all three of which are now dead. Respondent also argues that a Google search only shows results for a Thomas Malthus or a Thomas Robert Malthus but not Complainant.

Respondent thus states that Complainant may have exclusive rights for the MALTHUS mark in its country, and questions how it can make the same claim of ownership in another country. Respondent argues that he paid for the Domain Name and now Complainant is trying to unfairly take it away.

Third, Respondent argues that Malthus is a famous person’s name based on a Google search. Respondent also argues that a company in Brazil uses the domain name <malthus.com.br> and questions whether Complainant will try to take over that domain name as well.

Finally, Respondent claims that he is not attempting to make a profit from the Domain Name, that he has not attempted to sell it, and that he has not made any advertisements because he is currently preparing to use the Domain Name.

6. Discussion and Findings

6.1 Language of the Proceedings

Although the language of the registration agreement, and accordingly the default language of the proceedings is Korean, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293).

Complainant submitted that English should be the language of the proceedings on the grounds that Respondent has familiarity with the English language, citing to the fact that the website at the Domain Name is in English.

In determining the language of the proceedings, the Panel must balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. The reasoning cited by Complainant is helpful to address the question of whether English should be the language of the proceedings in preference to the default language. In fact, the Panel is persuaded not only by the fact that the website at the Domain Name is written in the English language, but also by the fact that it contained relatively sophisticated disclaimer language written in English.

Accordingly, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.

6.2 Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Domain Name to Complainant. Those requirements are that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

A. Identical or Confusingly Similar

Complainant has established its rights in the mark MALTHUS by virtue of the evidence of its trademark registration in Norway and its registered gTLDs and ccTLDs domain names throughout the world. The Panel is therefore satisfied that MALTHUS is a registered trademark owned by Complainant.

The next question is whether the Domain Name is identical or confusingly similar to the trademark. The answer is that it is.

The Domain Name consists, first of all, of the entirety of Complainant’s MALTHUS trademark. Further, the Domain Name is identical to Complainant’s MALTHUS trademark when the “.com” TLD is discounted.

Secondly, the Domain Name does not have any additional words as part of it that detract from or minimize the effect and dominance of the MALTHUS trademark in the Domain Name.

For the above reasons, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s MALTHUS trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:

(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.

Complainant owns a trademark registration for MALTHUS that is registered in Norway. Complainant also owns several domain names referring to the trademark MALTHUS where it conducts sales and marketing of products under the “Malthus” name. On the other hand, Respondent does not appear to own a registered trademark with the term “Malthus” and does not otherwise appear to trade under the name “Malthus.” Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the term “Malthus” by Respondent or any person operating the website to which the Domain Name directs Internet users. Finally, although Respondent has used the name Malthus, Inc. when registering the Domain Name, Respondent has not provided any convincing evidence that it is commonly known by the Domain Name.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has rights or legitimate interests in respect of the Domain Name. Furthermore, as pointed out by Complainant in its Complaint, the Domain Name directs Internet users to an English language website that concerns the building business.

It is noted that Respondent argued ownership rights pursuant to its purchase of the Domain Name. The mere purchase of the Domain Name, however, does not evidence a right or legitimate interest. Furthermore, there can be no finding of a right or legitimate interest, where, as here, Complainant has shown that Respondent used the Domain Name to direct Internet users to a website concerning the building business, the very industry in which Complainant has established itself since 1966 and has used the MALTHUS trademark since 1974.

For the above reasons, the Panel finds that Respondent does not have rights or legitimate interests with respect to the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The evidence shows that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s MALTHUS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the use of the Domain Name is to take advantage of the similarity between the Domain Name and Complainant’s website to draw Internet users to that site for commercial advantage. No convincing evidence has been presented showing that Respondent has any connection to the name “Malthus” and there is no connection between the MALTHUS mark and the goods and services offered on the Domain Name.

Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered to Respondent, Complainant had already established a world-wide reputation as a leader in the building business under the MALTHUS mark and was the owner of a registered trademark and various domain names that incorporated the mark MALTHUS. Accordingly, the evidence shows that Respondent has been using the Domain Name to direct Internet users who believe that the Domain Name is associated with Complainant. This behavior evidences bad faith.

For the above reasons, the Panel finds that Complainant has shown that the Domain Name has been registered and is being used in bad faith by Respondent.

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 Domain Name <malthus.com> be transferred to Complainant.

Andrew J. Park
Sole Panelist
Dated: April 20, 2011