WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MILIPOL v. Tag Jong Han
Case No. D2015-0506
1. The Parties
The Complainant is MILIPOL of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Tag Jong Han, Gyeonggi-do, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <milipolasia.com>, <milipolshanghai.com> and <themilipol.com> (collectively, the "Disputed Domain Names") are registered with Gabia, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2015. On March 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 25, 2015, 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 March 25, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Names is Korean. On March 26, 2015, the Complainant requested for English to 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 proceeding commenced on March 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 21, 2015.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 28, 2015. 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 a French Economic Interest Group, which organizes international trade shows and exhibitions relating to police equipment, civil and military security and related services for internal state security. For example, the Complainant organized the events Milipol Paris and Milipol Qatar, which are worldwide exhibitions. The Milipol Paris show in 2013 attracted 25,823 visitors (majority of visitors from outside France), while the Milipol Qatar show in 2012 attracted 5,820 visitors and 244 exhibitors from 66 countries.
The Complainant has traded under the name MILIPOL and MP MILIPOL since at least 1995. "MP" stands for Military Police. The Complainant owns trademark registrations for MP MILIPOL dating back to 1995 worldwide. In addition, the Complainant and its predecessor in title owns multiple domain names including <milipol.cm>, <milipolusa.cm>, <milipolusa.org>, <milipol.org>, <milipol.net>, <milipol.mobi>, <milipol.li>, <milipol.ch>, <milipolkorea.cm>, <milipolkorea.net>, <milipolkorea.org>, and <milipolintl.cm>.
The Respondent registered the Disputed Domain Names on January 15, 2015 and February 5, 2015. The Disputed Domain Names do not appear to have been connected to any active website.
5. Parties' Contentions
The Complainant contends (1) that the Disputed Domain Names are confusingly similar to the MP MILIPOL trademark and trade name MILIPOL, (2) the Respondent has no rights or legitimate interests with respect to the Disputed Domain Names, and (3) that the Disputed Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Disputed Domain Names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceedings
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreement for the Disputed Domain Names is Korean.
The Complainant requests that the language of the proceeding should be English. The Complainant contends that (1) the Disputed Domain Names are in the English language; (2) all exhibits of the Complaint are in English and thus, English is the reasonable and appropriate language for the administrative proceeding; (3) the Complainant is not able to communicate in Korean; and (4) if the Complainant were to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 11 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;
2) The Center has sent all the communications to the Parties in both languages;
3) The Respondent has not indicated any language preference; and
4) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceeding and it is likely that delay to the proceeding would result should the Complainant be required to re-submit the Complaint in Korean.
B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established that it has registered rights to the trademark MP MILIPOL. The Panel is also satisfied that the Complainant has unregistered trademark rights to MILIPOL based on its use of the name in the field of internal state security.
The Disputed Domain Names are confusingly similar to Complainant's trademarks MP MILIPOL and MILIPOL. Each of the Disputed Domain Names incorporates the MILIPOL mark in its entirety and without variance in spelling. Prior UDRP panels have found such entire incorporation of another's trademark to be sufficient to establish confusing similarity. See Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
The addition of the words "asia" and "shanghai" to the trademarks as part of the Disputed Domain Names does not negate confusing similarity but rather enhances it in that Asia and Shanghai are geographic terms where the Complainant happens to also have registered trademark rights.
The addition of the definitive article "the" cannot be considered distinctive. As found in FinterBank Zurich v. Shumin Peng, WIPO Case No. D2006-0432, the word "the" does not provide any specification or sufficient distinction from the Complainant or its trademark. In that case, the panel found that the addition of the English word "the" serves to emphasize the respondent's domain name is the website for Finter Bank Zurich which increases the credibility and genuineness of the disputed domain name thereby heightening the confusion of the Internet users. Similarly, in Lernco, Inc. v. Dezider Banga, WIPO Case No. D2010-0290 the panel found that where the disputed domain name incorporates the complainant's trademark in its entirety and the addition of the article "the" and the gneric Top-Level Domain (gTLD) ".com" do not preclude confusion.
The addition of ".com" after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Names. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant alleges that the Respondent has no relationship or economic link with it nor has the Respondent received any license or been permitted to use the MILIPOL trademark. The Respondent has not been commonly known by the Disputed Domain Names and has no legitimate interest in the trademark. Further, the evidence supports that the Complainant has exclusive trademark rights on the term MILIPOL, and the term MILIPOL has no meaning other than the Complainant's trademark right and related business.
Finally, there is no evidence of any active or prior use of the Disputed Domain Names by the Respondent. Specifically, there is no evidence of the Respondent using the Disputed Domain Names for a bona fide offering of goods or services. There is no evidence of demonstrable preparations to use the Disputed Domain Names in this manner. Neither is there any evidence of legitimate noncommercial fair use of the Disputed Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the Disputed Domain Names.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
The Panel will deal with the issue of bad faith registration and use below.
First, the Panel finds that the Respondent has registered the Disputed Domain Names in bad faith.
The fact that the Disputed Domain Names do not appear to be connected to an active website does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of a domain name without any active attempt to sell or to contact the trademark owner does not prevent a finding of bad faith. The panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
Here, the MILPOL trademark was used and registered long before the Disputed Domain Names were registered. The Complainant has a presence on the Internet and is also well-known globally in the field of internal state security. The word "milipol" does not have any ordinary meaning in the English language. The Complainant hosts exhibitions globally. The registration of a domain name that is similar to a distinctive trademark by a respondent, when the respondent has no relationship to that mark may suggest opportunistic bad faith. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319. Given the undisputed facts, the Panel finds it implausible that the Respondent, which has no relationship to the MILIPOL trademark, would have registered the Disputed Domain Names without having knowledge of the Complainant or the MILIPOL trademark. Consequently, the Panel finds that the Respondent has registered the Disputed Domain Names in bad faith.
Second, the Panel finds that the Respondent has used the Disputed Domain Names in bad faith.
The Disputed Domain Names at issue are not used by the Respondent and there is no indication that they have ever been used since their registration. There appears to be no genuine intention on the part of the Respondent to use the Disputed Domain Names for bona fide offerings of goods or services on the Internet. Previous UDRP panel decisions have similarly held that passive holding of a disputed domain name is indicative of registration and use of the domain name in bad faith. Indeed, as discussed above, the Panel finds that the only credible explanation for the Respondent's use of the Disputed Domain Names is to somehow take advantage of the similarity between them and the Complainant's MILIPOL trademark. Thus, it is the Panel's opinion that the Respondent must have been aware of the MILIPOL trademark and is intentionally attempting to use it for commercial gain.
Consequently, in the absence of contrary evidence or explanations from the Respondent, the Panel finds that the MILIPOL trademark, which has acquired a substantial reputation in the field of internal state security, is not one that the Respondent would have adopted other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the Disputed Domain Names. However, the Respondent has chosen not to respond to the Complainant's allegations in the Complaint and this leads the Panel to conclude that the Disputed Domain Names were registered by the Respondent in bad faith with the intent to create an impression of an association with Complainant and its services, and to profit therefrom.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the Disputed Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 Names <milipolasia.com>, <milipolshanghai.com>, and <themilipol.com> be transferred to the Complainant.
Andrew J. Park
Date: May 12, 2015