WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PAMAS Partikelmess- und Analysesysteme GmbH v. 3v Networks / admin, admin
Case No. D2015-1909
1. The Parties
The Complainant is PAMAS Partikelmess- und Analysesysteme GmbH of Rutesheim, Germany, represented by Rödl Rechtsanwaltsgesellschaft Steuerberatungsgesellschaft mbH, Germany.
The Respondent is 3v Networks / admin, admin of Daegu, Republic of Korea ("Korea").
2. The Domain Name and Registrar
The disputed domain name <pamas.com> (the "Disputed Domain Name") is registered with Gabia, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015. On October 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On October 30, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On November 2, 2015, the Respondent requested for Korean to be the language of the proceeding. On the same day, the Complainant requested for English to be the language of the proceeding.
The Center sent an email communication to the Complainant on November 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 9, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2015. The Response was filed with the Center on December 2, 2015.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 21, 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, a German entity, was founded in 1992. It is focused on high-quality particle measuring systems and is active throughout the world. It has been using the PAMAS trademark on its particle counting and sizing products and software and as a company name since 1992, and therefore it has acquired common law rights to the PAMAS mark. It has also registered and has been using the domain name <pamas.de> since July, 1997.
The Complainant's products are marketed and sold in Korea via its sales company Sam Bo Scientific Co., Ltd. since 1993. The Complainant's "PAMAS" products are regarded as the most reliable and accurate particle measuring instruments in the world and, thus, their "PAMAS" trademark is well-known and has a very high reputation in the market of particle measuring products. Further, due to the Complainant's long standing business activity in Korea and the limited market for particle measuring systems, their "PAMAS" trademark is specifically well-known in Korea.
5. Parties' Contentions
The Complainant alleges that the Respondent attempted to sell the Disputed Domain Name by soliciting, on its website, third parties to contact it if interested in the "above domain." Complainant further alleges that it sought to acquire the Disputed Domain Name from the Respondent in November, 2004. In response, the Respondent offered to sell the Disputed Domain Name for EUR 13,000. The Complainant did not acquire the Disputed Domain Name at that time. However, the Complainant alleges that it re-contacted the Respondent in May, 2013 to again acquire the Disputed Domain Name. At that time, the Respondent offered to sell the Disputed Domain Name for US 25,000.
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant for the following reasons:
First, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's trademark PAMAS and that the extension ".com" can be disregarded in assessing similarity to a mark.
Second, the Complainant contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. Specifically, the Complainant contends that the Respondent is not authorized to use the term PAMAS in his domain name, there is no association between the Complainant and the Respondent, and the term PAMAS is not the Respondent's name nor derived from it.
Finally, the Complainant contends that the Respondent has previously attempted to sell the Disputed Domain Name and has engaged in a pattern of cybersquatting conduct involving other domain names and domain name disputes.
Third, the Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant contends that the Respondent registered the Disputed Domain Name in bad faith because it is implausible that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name. The Complainant contends that the Complainant is well-known throughout the world, including in the Republic of Korea where the Respondent is located. Moreover, the Complainant contends that the fact that the Respondent seems to have engaged in a cybersquatting pattern is also a sign that the Disputed Domain Name has been registered in bad faith.
The Complainant contends that the Respondent is using the Disputed Domain Name in bad faith for a variety of reasons. One, the Respondent acquired the Disputed Domain Name primarily for the purpose of selling it in excess of actual out-of-pocket costs. Two, the Respondent appears to be a cybersquatter that has engaged in a pattern of conduct of registering domain names reproducing famous trademarks. Three, the Respondent is using the Disputed Domain Name in order to divert Internet users, particularly those who are looking for the Complainant's well-known PAMAS products, and leading them to the website of the Complainant's competitor.
The Respondent did not formally reply to the Complainant's contentions. He did, however, respond to the Center's Notification of Complaint and Commencement of Administrative Proceedings by claiming that he had requested a copy of the Complaint in the Korean language but because he did not receive same, he cannot understand the claims in the Complaint.
He further claims, however, that the Complainant should prove three elements in accordance with paragraph 4(a) of the Policy – and he specifically sets forth the three elements in Korean and in English. He contends that the Complainant failed to prove the said three elements.
Finally, the Respondent claims that he had registered the Disputed Domain Name on February 5, 2001 and queries how the Complainant can now (some 15 years after registration) seek to cancel or transfer it. He alleges that such attempt constitutes reverse cybersquatting.
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: (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.
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. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 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 it would cause undue delay and expenses if the Complainant is required to translate the Complaint into Korean;
2) The Disputed Domain Name resolves to a website that is in English and that includes links in English;
3) The Disputed Domain Name includes an offer for sale which is in English;
4) The Respondent communicated in writing with the Complainant in English regarding the sale of the Disputed Domain Name.
5) The Respondent stated that the Complainant had failed to prove the three elements set forth in paragraph 4(a) of the Policy, indicating that it understood the contents of the Complaint.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary acceptance of the Complaint as filed in English; and (2) issue a decision in English.
B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has sufficiently established trademark rights in "PAMAS" through its long-standing use of the mark in commerce, and hence its acquired common law rights. Further, it is clear to the Panel that the Disputed Domain Name, consisting of the Complainant's identical trademark in whole, is confusingly similar to the Complainant's trademark.
The addition of a generic Top-Level Domain ("gTLD") such as ".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 Name is confusingly similar to the Complainant's trademark.
C. Rights or Legitimate Interests
Under 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 Name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any formal arguments nor evidence to rebut the Complainant's prima facie case. It has, however, submitted an email letter to the Center which sets forth reasons why it believes the Disputed Domain Name should not be canceled nor transferred.
The Respondent registered the Disputed Domain Name on February 5, 2001 — long after the Complainant had commenced use of the PAMAS trademark and company name and had sold products in Korea. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PAMAS trademark. See Audi AG v. Mike Gillespie, Gillespie Auto Group, WIPO Case No. D2007-1850. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Moreover, the evidence shows that the Disputed Domain Name resolves to a website in which it was offered for sale and provides links to various other websites, including that of the Complainant's direct competitor. This is particularly notable since the business of the Complainant is quite narrow. Linking the Complainant's competitor shows that the Respondent likely knew of the Complainant and its business.
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 Name.
D. Registered and Used in Bad Faith
The Panel will deal with the issue of bad faith registration and bad faith use separately below.
First, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark may suggest 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 highly doubtful that the Respondent, which has no relationship to the PAMAS trademark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the PAMAS trademark. The reasonable conclusion to draw is that the Respondent deliberately sought to attract some of the Complainant's customers to the Respondent's website for commercial gain and/or to disrupt the business of the Complainant, e.g., offering to sell the Disputed Domain Name. In fact, it is clear from the record that the Disputed Domain Name resolves to a website in which it was offered for sale.
Bad faith can also be inferred based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto. Indeed, it has been established that the registration of a domain name incorporating a well-known trademark can in specific circumstances constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of the complainant's well-known NIKE trademark when registering the domain name). Consequently, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
Second, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.
The record shows that the Disputed Domain Name resolves to a website offering it for sale. Accordingly, the Panel finds that the Respondent sought to take advantage of the similarity between the Disputed Domain Name and the Complainant's distinctive and well-known PAMAS trademark, for commercial advantage (e.g., offering to sell the Disputed Domain Name) and/or to disrupt the Complainant's business. As mentioned above, the Respondent has no connection whatsoever to the PAMAS trademark. Thus, it is the Panel's opinion that the Respondent must have been aware of the PAMAS trademark and intentionally attempted to use it for commercial gain and/or to disrupt the business of the Complainant. The Disputed Domain Name not only resolves to a website in which it was offered for sale, but which also provides links to various other websites, including that of the Complainant's direct competitor. This is particularly notable since the business of the Complainant is quite unique and narrow. Linking the Complainant's competitor shows that the Respondent knew of the Complainant and its business.
Finally, the Complainant has provided evidence that the Respondent has been involved in a pattern of abusive registration and cybersquatting. Indeed, an online search shows that the Respondent has registered many domain names that incorporate or are misspellings of famous and distinctive trademarks such as: VISA (<visacash.com>); HARRY POTTER (<herrypotter.com> and <herrypoter.com>). The Panel thus accepts that this constitutes a "pattern of conduct" of both the registration and use of domain names to prevent the owner of those names, trademarks or service marks from reflecting those names or marks in corresponding domain names.
The Panel therefore finds that the Respondent's conduct is evidence of bad faith and that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <pamas.com> be transferred to the Complainant.
Andrew J. Park
Date: January 4, 2016