WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Segis SPA v. Kwon Tong Wan
Case No. D2013-0725
1. The Parties
The Complainant is Segis SPA of Poggibonsi, Siena, Italy, represented by LGA - Studio Legale Lucchini Gattamorta e Associati, Italy.
The Respondent is Kwon Tong Wan of Busan, Republic of Korea, represented per se.
2. The Domain Name and Registrar
The disputed domain name, <segis.com>, is registered with the Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2013, 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.
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”).
On April 26, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On April 26, 2013, the Complainant submitted a request that English be the language of the proceeding. The Respondent requested Korean to be the language of the proceeding on April 29, 2013.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent, in both Korean and English, of the Complaint, and the proceedings commenced on May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2013. On May 22, 2013, the Respondent sent an email communication to the Center requesting to extend the Response due date to May 31, 2013 due to his illness. On May 23, 2013, the Complainant objected to the Respondent’s extension request. On May 23, 2013, taking into account the Respondent’s provided reasons and in consideration of the Complainant’s objection, the Center granted the extension of Response due date until May 27, 2013. The Response was filed with the Center on May 27, 2013.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 5, 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.
4. Factual Background
The Complainant is an Italian company and a worldwide leader in the design and production of innovative, quality seating products for the contract furniture industry. It owns a large number of registered trademarks that include the term “Segis” alone, and that incorporate the term “Segis” with other elements. The Complainant also owns the following trademark and domain name registrations:
|Mark:||Country:||Reg. No.:||Reg. Date:||
|SEGIS||Italy||801251||March 21, 1997||20|
|SEGIS||International||861669||July 1, 2005||20|
|SEGIS DELIGHT MULTIPLA||China||G929310||May 15, 2007||20|
|SEGIS DELIGHT MULTIPLA||United States of America||3,395,175||March 11, 2008||20|
|SEGIS DELIGHT MULTIPLA||European Community||005573365||August 29, 2008||20|
The Respondent is a college graduate in Republic of Korea.
The disputed domain name was created on August 23, 2005.
5. Parties’ Contentions
The Complainant contends that it owns rights in the SEGIS mark and that the disputed domain name is identical to its mark.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that (i) it has not consented to the use of the SEGIS mark; (ii) it has not authorized the use of the SEGIS mark in a domain name; and (iii) there is no connection between it and the Respondent. The Complainant further contends that the Respondent has not made any use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; is not commonly known by the disputed domain name; and is not making legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith on the grounds that he was presumably aware of the registration of the Complainant’s SEGIS trademark for various reasons. First, because the Complainant’s trademark registration in Italy preceded the initial registration date of the disputed domain name. Second, the Complainant’s International registration covering the Republic of Korea preceded the renewal registration dates of the disputed domain name. Finally, the Complainant contends that the Respondent presumably conducted research in order to come up with the name “segis” because that term is not a common word nor does it have a common meaning.
The Complainant also contends that the Respondent registered and uses the disputed domain name in bad faith on the grounds that the Respondent has not used the disputed domain name to resolve to an active website.
For these reasons, the Complainant requests that the disputed domain name be transferred.
The Respondent claims that the disputed domain name was coined by himself and his friends who were planning to operate a website. Specifically, the Respondent claims that the disputed domain name is an acronym for “Se Eun Geographic Information System.” According to the Respondent, the name “Se Eun” is his girlfriend’s first name.
The Respondent claims that the plan he and his friends had to use the disputed domain name to resolve to a website in connection with their prospective business was delayed for several years due to an extended illness suffered by the Respondent. Recently, however, the Respondent has recommenced plans to start a business using the disputed domain name.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (1) 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.
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. Language of the Proceedings
The Panel has noted communications from the Complainant and the Respondent regarding the language of the proceedings.
According to the Rules, the language of the registration agreement should be the language of the proceedings, unless there is an agreement between the parties for a different language to be the language of the proceedings or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the complainant and the respondent to the effect that the proceedings should be in the language other than that of the registration agreement, translate the Complaint into the language of the registration agreement, or submit a request for the proceedings to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceedings.
In this case, the Panel finds that English should be the language of the proceedings for the following reasons:
- The disputed domain name consists exclusively of a word written in English.
- The Respondent has sufficient knowledge of English to be able to understand the nature of these proceedings. This is evident from (1) the exchange of correspondence in English between the Complainant and the Respondent regarding the possible transfer of the disputed domain name; and (2) the fact that the website under the disputed domain name is in English.
- The Complainant would incur considerable further expense and inconvenience in retaining the services of a translator.
The Panel finds that in the circumstances of this case this amounts to sufficient evidence of the Respondent having command of English necessary to be able to understand the nature of these proceedings. Consequently, the Panel finds that it is appropriate to issue the Decision in English.
B. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has established that the Complainant owns rights in the SEGIS mark.
First, the SEGIS mark was used by the Complainant since at least March 21, 1997, the date on which the said trademark was registered in Italy and the goods claimed by said registration are directly related to its core business.
Second, the Complainant owns various other registrations for the SEGIS mark in multiple jurisdictions throughout the world, including an international registration covering the Republic of Korea.
Finally, the sole word consisting of the disputed domain name “segis” is identical to the SEGIS mark owned by the Complainant.
Accordingly, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s SEGIS mark, and therefore concludes that the Complainant has satisfied is burden of proof under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) The respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
The Respondent did not make any direct claim of a right or legitimate interest in the disputed domain name,. First, the Respondent merely stated how he and his friends came to create the name “segis” in connection with a domain name that was planned to resolve to a website for their future business. However, the Respondent did not provide any evidence on the record that the “segis” name was created under such circumstances. He could have provided, for example, notarized statements from his friends and/or from his girlfriend attesting to the facts he claimed, and yet he did not. He could have explained the activities and undertakings that he and his friends had commenced in order to move forward with starting their prospective business, he could have explained the nature and purpose of the prospective business, he could have explained the significance of the name “Geographic Information System,” etc., and yet he did none of them.
Given these circumstances, there can be no reasonable conclusion but to find that the Respondent was not planning to engage in a bona fide offering of goods/services under the disputed domain name, and was not otherwise planning to engage in legitimate business activities.
Second, as to paragraph 4(c)(ii) of the Policy, the Respondent in his Response to the Complaint does not assert that he is commonly known by the disputed domain name and there is no evidence in the record to indicate such.
Finally, as to paragraph 4(c)(iii) of the Policy, the Complainant has claimed that the disputed domain name does not resolve to an active website, and in fact, the only content in the website is the statement “This domain is renewed every year automatically.” The Respondent did not dispute this claim. Accordingly, this Panel is of the position that the Respondent is not engaged in the activity set forth in this paragraph 4(c)(iii) of the Policy.
For these reasons, the Panel finds that the Respondent is not found to have a right or legitimate interest in the disputed domain name, as this concept is understood to mean pursuant to paragraph 4(c) of the Policy.
D. 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 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 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 Complainant raises a number of previous UDRP decisions to support its arguments that the Respondent registered the disputed domain name in bad faith and that it is being used in bad faith. In the first argument, the Complainant claims that the Respondent had a duty to check and to ensure that its domain name would not infringe upon another’s mark at the time it sought registration and at each time the registration is renewed. Although the Complainant does not affirmatively state that the Respondent failed to meet its duty to check, the Complainant appears to be taking the position that had such check(s) been conducted, the Respondent would have known about the Complainant and its SEGIS mark, and that the registration of the disputed domain name would infringe its mark. Some UDRP panels have indeed found that in certain circumstances there may be an affirmative obligation on registrants more generally to make reasonable good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to a mark held by others, for example, through an Internet search on the domain name through Google or Yahoo!. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0), paragraph 3.4. However, even if we assume arguendo, that the foregoing is the Complainant’s line of argument, the Panel is un-persuaded, largely because there is nothing in the record to support the claim that the Respondent failed to meet its duties/obligations in connection with the proper registration of the disputed domain name, let alone a failure that would rise to the level of bad faith. Further, it must be noted that the term “segis” is a term that is used by others in the public in connection with different subject matters. This is readily confirmed by a cursory check of the Internet. For example, the term “segis” has been found to be widely used as an acronym for “Solar Energy Grid Integration Systems,” in connection with a United States government sponsored solar energy project. Another example is the use of the term “segis” as a trademark for a smart grid inverter. As such, the logic used by the Complainant here, namely that had the Respondent conducted a check, it would have known about the Complainant, is not persuasive, since a check would likely have resulted in finding different uses of the name “segis” by different parties in connection with different subject matters. The Panel also notes that even when some UDRP panels found bad faith registration on the ground that the respondent should have known the complainant’s registered marks, they are less inclined to find it when the complainant’s trademark is less well-known or corresponded to a common word. In this case, the Complainant has not provided enough evidence of showing that its mark was so well-known that the Respondent must have known of the Complainant’s SEGIS mark.
Furthermore, the Complainant did not claim that the Respondent’s prospective business is somehow related to its business, and in fact, there is nothing in the record to suggest same. It is therefore not possible to make any reliable determination as to whether the Respondent must have known that the disputed domain name could be an infringement of the Complainant’s SEGIS mark.
In the Complainant’s second argument – that the Respondent’s passive holding of the disputed domain name can infer bad faith – the Panel notes that while this has been recognized by the panels in other UDRP decisions, such factor is but a single consideration among others, and that an ultimate finding of bad faith involved a finding of a number of cumulative, supporting circumstances. In this case, however, there is no evidence on the record that shows, for example, that the Respondent attempted to sell or to contact the Complainant as the trademark holder; that the Complainant’s SEGIS mark is well-known; that the Respondent failed to respond to the Complaint; or that the Respondent attempted to conceal his identity, all of which factors were outlined in the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as cited by the Complainant in its Complaint.
Further, the record does not support a finding of any circumstances under paragraph 4(b) of the Policy that evidence registration and use of the disputed domain name in bad faith. Specifically, there is no evidence of the existence of any of the four circumstances under 4(b)(i)-(iv) of the Policy, as summarized above.
In conclusion, the Panel finds that the Complainant has not established that the disputed domain name “has been registered and is being used in bad faith” by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Andrew J. Park
Date: June 20, 2013