WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genpact Luxembourg S.a.r.l. v. Park Hyungjin
Case No. D2013-0973
1. The Parties
The Complainant is Genpact Luxembourg S.a.r.l. of Luxembourg, Luxembourg, represented by Saikrishna & Associates, India.
The Respondent is Park Hyungjin of Gimhae-si, Gyeongsangnam-do, Republic of Korea.
2. The Domain Name and Registrar
The Disputed Domain Name <genpact.net> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 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.
On June 3, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 5, 2013, the Complainant confirmed its request in the Complaint that English be the language of the proceeding, to which the Respondent has not replied.
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 the Respondent of the Complaint, and the proceedings commenced on June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2013.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 9, 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 Genpact Luxembourg S.a.r.l., a company that offers technology and knowledge services through a network of delivery centers in 17 countries (India, China, the Philippines, Romania, Hungary, Poland, South Africa, the Netherlands, Spain, Morocco, Mexico, Guatemala, the United States of America, Colombia, Brazil, the United Arab Emirates and Japan).
The Complainant (its predecessors in business) adopted the mark GENPACT in 2005 and operates its services under the GENPACT mark. The Complainant has registered trademark ownership of GENPACT in the United States, Singapore, New Zealand, Argentina, India, China, Chile and Brazil.
The Complainant owns several domain names incorporating the mark GENPACT, among them being <genpact.eu>, <genpact.ro>, <genpact.china>, <genpact.cn>, <genpactchina.net>, <genpactchina.china>, <genpactchina.cn>, <genpactchina.com>, <genpact.us>, <genpact.co.uk>, <genpact.org.uk>, <genpact.hu>, <genpact.pl>, <genpact.jp>, <genpact.co.jp>, <genpact.ph>, <genpactindia.co.in>, <genpactindia.in>, and <genpact.com> that was first registered on March 3, 2005.
The Complainant had previously owned the Disputed Domain Name <genpact.net>, but failed to renew. The Respondent subsequently registered it on December 21, 2012.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark/service mark GENPACT. The word “genpact” is a distinctive element of the Disputed Domain Name <genpact.net>. The Complainant is the lawful owner of the mark GENPACT, which forms part of the Complainant’s several websites, connected with its domain names such as <genpact.com>;
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name <genpact.net>. The trademark/service mark GENPACT has the elements of an invented word, a coined and fanciful term having no denotative meaning. The GENPACT mark has acquired substantial goodwill and is a very valuable commercial asset of the Complainant as a source-identifier for the goods and services the Complainant offers and licenses. The Complainant is the registered proprietor of the mark GENPACT in several countries and has used it continuously since 2005. The Respondent has made no effort to use or prepared to use for offering goods or services under the GENPACT name or mark. The Respondent has no obvious use for the Disputed Domain Name besides profit from squatting on it, particularly given that the Disputed Domain Name is currently for sale.
(iii) The Respondent registered and is using the Disputed Domain Name in bad faith. The primary reason the Respondent registered the Disputed Domain Name <genpact.net> was to gain illegitimate consideration from either the Complainant or one of its competitors in exchange for transferal of ownership of the Disputed Domain Name. According to a reverse WhoIs database of the Respondent, there are over 9,000 domain names associated with his email. This is further evidence of the Respondent’s ongoing business of registering domain names incorporating well-known trademarks and then profiting from illegal squatting on the same. In a previous UDRP decision, Lego Juris AS v. Park HyungJin, WIPO Case No. D2012-0310, the panel found against the Respondent on this precise issue with regards to another domain name and directed a transfer of the concerned domain name to the complainant.
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on paragraph 14(b)
of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers to be appropriate.
6. Discussion and Findings
A. Language of the Proceedings
Paragraph 11(a) of the Rules grants the panel authority to determine a language other than the one specified in the registration agreement, having regard to the circumstances of the administrative proceeding. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules. In adopting a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
In this case, the Complainant has requested that the language of the proceedings be English. According to information received from the Registrar, the language of the Registration Agreement for the Disputed Domain Name is Korean. Also, both the Respondent and the Registrar are located in Republic of Korea. However, the Complainant has said that it is not familiar with a language other than English and it would suffer extreme hardship and excessive expenditure to submit all documents in another language. The Complainant asserts that conducting the proceedings in English would not be unfairly burdensome on the Respondent as he was involved in a similar UDRP case in 2012 with the same the Registrar and the panel has allowed English to be the language of the proceedings. In Lego Juris A/S v. Park HyungJin, WIPO Case No. D2012-0310, the panel found that the Respondent Park HyungJin understands English.
Additionally, the Complainant in its Complaint formally requested that the language of the proceeding be
English, to which the Respondent failed to comment on or object despite the Center’s invitation to do so.
In light of the aforementioned circumstances, as well in consideration of the expenses to be borne by the Complainant and possible delays in the proceeding if translations are to be required, the Panel has determined, pursuant to the authority granted by paragraph 11(a) of the Rules, for the appropriate language of the proceeding to be English.
6.2 Analysis of the Complaint
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark GENPACT both by registration and acquired reputation and that the Disputed Domain Name <genpact.net> is confusingly similar to said trademark, the first criterion prescribed by paragraph 4(a)(i) of the Policy.
It is probable that Internet users intending to find one of the many websites registered by the Complainant containing the term “genpact” are misled to believe that the Complainant is the registrant of the Disputed Domain Name or otherwise associated therewith. The Disputed Domain Name <genpact.net> encompasses the Complainant’s trademark GENPACT in its entirety and includes no other word, phrase or symbol. Previous UDRP panels have held that identity or confusing similarity is sufficiently established if “a domain name wholly incorporates a complainant’s registered mark” (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 and Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 with further references). Additionally, it is a well-accepted principle applied in many prior decisions under the Policy that the “.com” or “.net” portion of a domain name may be ignored when assessing the confusing similarity between a trademark and the domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the prerequisite of identity or confusing similarity is satisfied under paragraph 4(a)(i) of the Policy by the Complainant with regards to the Disputed Domain Name.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant show the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. UDRP panels have held that it if the complainant provides prima facie showing that none of the three circumstances in paragraph 4(c) of the Policy establishing legitimate interests or rights applies to the respondent, the burden of production shifts to the respondent to rebut the showing (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also, International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). If the respondent fails to demonstrate rights or legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy, or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA0611000852581).
The Complainant has denied any authorization of the Respondent to use the trademark GENPACT or any other relationship with the Respondent. The record does not show that the Respondent is commonly known by the Disputed Domain Name. The Respondent also does not use and has not made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. At the drafting of this Decision, the only contents of the website connected with the Disputed Domain Name are lists of “Sponsored Listings” and “Related Searches,” which serve the purpose of generating revenue through a pay-per-click advertisement system.
The Respondent has not rebutted the Complainant’s prima facie case and has not described any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, rights or legitimate interests in the Disputed Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Disputed
Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four non-exclusive circumstances for a complainant to show bad faith registration and use of a domain name. Under paragraph 4(b)(iv), use of the Disputed Domain Name to intentionally attempt to attract Internet users to his or her 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 his or her website or location, or that of a product or service on his or her website or location, for the purpose of commercial gain shall be evidence of both registration and use of the Disputed Domain Name in bad faith.
Both under previous UDRP decisions (see Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), it is a well-established principle that when someone registers a domain name, it represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark – registered and in use since 2005 in countries around world – is widely known it is unlikely that the Respondent, at the time of registration of the Disputed Domain Name or thereafter, was not aware of the Complainant’s trademark rights.
Bad faith use of the Disputed Domain Name is evidenced by the Respondent’s use of the Disputed Domain Name to derive income from visitors clicking the listed links and redirection to other sites, as suggested by paragraph 4(b)(iv) of the Policy. “[Use] of another’s trademark to generate revenue from internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy” (see McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353). The Complaint charges that the Respondent attempted to attract Internet users seeking the Complainant’s website by exploiting the Complainant’s trademark GENPACT. This is not refuted by the Respondent.
It does not preclude the Panel’s finding of bad faith that the Respondent is passively holding the Disputed Domain Name, or even whether the Respondent benefits from the sponsored links instead of the host where the Disputed Domain Name is “parked” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Such “passive holding” of a domain name can be evidence of bad faith (see Quanta S.p.A. v. François Kyan, WIPO Case No. D2003-0158; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172).
The Panel also takes note that the Respondent was the respondent in two previous UDRP cases of alleged cybersquatting that resulted in the transfer of a domain name from the Respondent to the complainant in that case (see LEGO Juris A/S v. Park HyungJin, WIPO Case No. D2012-0310; WordPress Foundation v. Park HyungJin, WIPO Case No. D2013-0074).
The Panel finds that the Respondent registered the Disputed Domain Name in bad faith and is using it in bad faith. Paragraph 4(a)(iii) of the Policy has been satisfied.
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 <genpact.net> be transferred to the Complainant.
Thomas P. Pinansky
Date: July 25, 2013