WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Evonik Degussa GmbH v. Victrex plc
Case No. D2012-1999
1. The Parties
The Complainant is Evonik Degussa GmbH of Marl, Germany, represented by Gleiss Lutz Rechtsanwälte, Germany.
The Respondent is Victrex plc of Seoul, Republic of Korea.
2. The Domain Name And Registrar
The disputed domain name <vestapeek.com> is registered with Inames Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2012. On October 11, 2012, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2012, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 15, 2012, the Center transmitted an email in both English and Korean to the parties regarding the language of the proceeding. The Center notified the parties that the language of the Registration Agreement is Korean. Furthermore, the Center instructed the Complainant to provide by October 18, 2012:
“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 informed 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 October 20, 2012.”
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 [October 20, 2012], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On October 18, 2012, the Complainant requested that “the language of proceedings be English instead of Korean”, and referred to its supporting arguments in the Complaint. The Respondent did not provide any response to the Center’s transmission of October 15, 2012.
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 (again in both English and Korean) the Respondent of the Complaint, and the proceeding commenced on October 31, 2012. The Center directed that under paragraph 5 of the Rules, the due date for the Response was November 20, 2012. Regarding the language of the proceeding, the Center stated:
“The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied.
Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Korean;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment).”
On November 16, 2012, the Complainant filed a request for suspension of the proceeding for a period of 30 days so that the parties may try to reach a settlement. On November 19, 2012, the Center confirmed that the proceeding would be suspended until December 19, 2012, and further stated, “Upon the expiry of this date, the proceedings may be deemed automatically terminated, unless the Center receives a signed request (copied to the Respondent) from the Complainant (via email …) to re-institute the proceedings.” On December 14, 2012, the Center reminded the parties that the suspension was set to expire on December 19, 2012, and repeated its instruction from its email dated November 19, 2012. On December 17, 2012, the Complainant sent an email to the Center, copied to the Respondent, requesting reinstitution of the proceeding. On December 18, 2012, the Center confirmed to the parties that the proceeding was reinstituted, and also informed that the new deadline for the Response was December 20, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 21, 2012. The referenced Center’s email transmissions to the parties dated November 19, December 14, December 18, and December 21, 2012 were in both English and Korean.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on January 7, 2013. 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 January 16, 2013, the Center received an email from Julie Clarey, “Senior Legal Counsel” of the Respondent, which stated in text:
“I am a lawyer employed by Victrex plc, the Respondent in this case. I have been in communication with the Complainant’s authorized representative and I believe that these proceedings may have been re-instituted.
iNames have told Victrex that they have not received a copy of any signed request which I believe should have been copied to the Respondent from the Complainant (via e-mail … to re-institute the proceedings. The email below from WIPO [the Center’s November 19, 2013 message to the parties stating that the proceeding would be suspended] is last communication we received, notifying us that the proceedings had been suspended.
I would be very grateful if you could please let us know the current status of the proceedings. I have asked the Complainant’s respresentative [sic] for a copy of the request to re-instiute [sic] the proceedings but they have not yet responded.
I look forward to hearing from you and thank you for your assistance.”
On January 16, 2013, in an email to Ms. Clarey, with copies to the Complainant, the Respondent, and the Registrar, the Center acknowledged receipt of the above message, and:
informed that the Center had previously transmitted five separate emails to the Respondent, on December 14, December 18, December 21 (two emails), 2012, and January 7, 2013;
noted that one of the emails (on December 14, 2012) reminded the parties of the-then upcoming expiration of the suspension of the proceeding, and another (on December 18, 2012) notified the parties of the reinstitution of the proceeding with a new date for the Response;
noted that the emails dated December 14 and December 18, 2012 were copied to the Registrar;
attached copies of the aforementioned five emails; and
stated, “The Center further notes that in all communications, the Respondent has been copied, and it appears that the Center has not received any bounce-back or undeliverable message from the Respondent.”
The Center did not receive from the Respondent or Ms. Clarey any response to the Center’s January 16, 2013 email.
On January 30, 2013, the Center transmitted to the Complainant, the Respondent, Ms. Clarey, and the Registrar, Administrative Panel Procedural Order No. 1, in which the Panel ordered:
“Out of an abundance of caution, the Panel hereby grants the Respondent ten (10) calendar days from the date of this Administrative Panel Order No. 1 to file its Response. While the Panel notes that the Administrative Panel Order is typically issued only via email, in order to avoid any potential non-notification issue, this Panel Order is also issued to the Respondent via postal-mail addresses (including the Respondent’s Korean and UK locations appearing in the website under the disputed domain name) in addition to its email addresses.
The Respondent should send its submission to the Center by February 9, 2013 (Geneva Time) via email …, with a copy to the Complainant.
The due date for the decision is extended to February 14, 2013 accordingly.”
The Center did not receive any response from the Respondent or Ms. Clarey.
As discussed herein, the language of this proceeding is English.
4. Factual Background
The Complainant produces “specialty chemicals, in particular plastics for use in manufacture.” The Complainant has used the mark, VESTAKEEP, for its various products, and obtained registration of the mark in Germany, on July 8, 2005, for which its application was dated May 12, 2005. The Complainant has also registered various marks with the “Vesta” prefix, including, VESTAMID, VESTAMELT, VESTANAT, VESTAGON, and VESTAMIN. The Complainant uses the domain name <vestakeep.com>, which was registered on May 6, 2005.
The Respondent registered the disputed domain name <vestapeek.com> on June 27, 2005.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to marks 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:
“Complainant’s German VESTAKEEP® trademark is highly distinctive …. [O]n the date of registration of the Disputed Domain Name (June 27, 2005), the Complainant’s series of trademarks beginning with the dominant prefix ‘VESTA’ was well known in the industry”;
“Respondent is a competitor of Complainant. Without authorization from Complainant, Respondent registered the Disputed Domain Name”;
“An Internet user who enters the Disputed Domain Name in a browser is automatically redirected to the domain name ‘victrex.com’”; and
“The website to which the domain name ‘victrex.com’ resolves contains information about the Respondent’s group of companies and products ….”
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may also draw appropriate inferences from the Respondent’s default.
6. Discussion And Findings
Initially, the Panel must address two issues: (i) the extension of time for the Respondent to submit its Response, resulting from the transmission the Center received from Ms. Julie Clarey, the Respondent’s counsel, on January 16, 2013; and (ii) the language of the proceeding.
Extension for the Response
As indicated above, the Center transmitted a number of email messages to the Respondent in the normal course of this administrative proceeding, relating to, for example, notification of the Complaint, the matter of the language of the proceeding, the suspension of the proceeding, the reinstitution of the proceeding, the Respondent’s default, and Administrative Panel Procedural Order No. 1. The email transmissions were directed to the Respondent’s contact addresses that the Registrar had provided to the Center. Throughout the entire proceeding, in directing correspondence to the Respondent, the Center did not experience any bounce-back, nor did it receive any indication that its messages were undeliverable.
The Panel concludes that the Center has been more than diligent to give full and fair notice to the parties of every aspect of this proceeding. The only correspondence that the Center received from the Respondent is the email from Ms. Clarey, dated January 16, 2013. Ultimately, the Panel is left with the view that the Respondent has declined to participate in the proceeding.
Language of the proceeding
Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties. Importantly, the rule also states 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. The Complainant nevertheless requests that English be the language of the proceeding. The Panel agrees.
After receiving the Complaint submitted in English, the Center notified the parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding in English. The Respondent did not respond to the Center’s notification, and then defaulted. With the Respondent declining to take part, and only the Complainant remaining, the Panel determines that English is the language of the proceeding.
In order to prevail, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel concludes that the Complainant has rights in the mark, VESTAKEEP, and that the disputed domain name <vestapeek.com> is confusingly similar to the mark. The disputed domain name begins with the “Vesta” prefix, and merely transposes the letters “k” and “p”, resulting in a second syllable that rhymes with “-keep”.
The first element of paragraph 4(a) of the Policy is present.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Thus, the burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain the slightest evidence that would demonstrate any right or legitimate interest that the Respondent might have 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
With the Respondent’s default, the Complainant’s averment (per an affidavit annexed to the Complaint) that the Respondent and the Complainant are competitors is uncontested. After the Complainant began use of its VESTAKEEP mark (and other marks with the “Vesta-” prefix), the Respondent registered the disputed domain name <vestapeek.com>. As the Complainant contends, Internet users who resort to the disputed domain name are indeed automatically re-directed to a website with the domain name <victrex.com>. Victrex plc is the Respondent here and the registrant of this domain name. To the Panel, these facts taken together plainly indicate the Respondent’s bad faith in registering and using the disputed domain name.
Bad faith can also be shown within the confines of the text of paragraph 4(b)(i)-(iv) of the Policy. The case record indicates that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website …, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv) of the Policy. That the Respondent is a competitor of the Complainant here can only present a stronger case for the Respondent’s bad faith.
The third element is also proven.
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 <vestapeek.com> be transferred to the Complainant.
Date: February 14, 2013