WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HusmanHagberg AB v. Hochul Jung
Case No. D2015-2275
1. The Parties
The Complainant is HusmanHagberg AB of Stockholm, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Hochul Jung of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <husmanhagberg.com> (“Disputed Domain Name”) 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 December 15, 2015. On December 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2015 and December 23, 2015, the Center transmitted by email and fax to the Registrar a reminder regarding its request for registrar verification. On December 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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”).
The Complaint was submitted in English. On December 30, 2015, the Center informed the Parties that the Registrar had disclosed Korean as the language of the Registration Agreement. On December 30, 2015, the Complainant submitted a request to proceed in English. On December 31, 2015, the Respondent submitted a request to proceed in Korean.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2016. The Respondent did not submit any further response.
The Center appointed Andrew J. Park as the sole panelist in this matter on February 5, 2016. 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, HusmanHagberg AB, is a limited liability company which is incorporated in Sweden. The Complainant is one of Sweden’s leading real estate brokerage chains with over 80 offices and 320 employees and it also runs the website “www.husmanhagberg.se”. The Complainant registered and owns Swedish service mark HUSMANHAGBERG & device for services in International Classes 35, 36, 42, and 45 under Registration Nos. 403533, 403532, and 510659. The Complainant first obtained service mark protection for HUSMANHAGBERG on May, 8, 2009. The Complainant has owned and operated under the domain name <husmanhagberg.se> from 1997 when the company name Husmanhagberg AB was registered.
The Complainant sent the Respondent a cease-and desist letter on October 6, 2015. The Respondent did not reply.
The Disputed Domain Name was created on April, 12, 2007 and resolves to a website with sponsored links, some of which lead to the Complainant’s competitors.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant because:
1) the Disputed Domain Name is identical to the Complainant’s registered service mark HUSMANHAGBERG. Specifically, the Complainant contends that it has acquired registered service mark rights in the name HUSMANHAGBERG, and has engaged in extensive use of the mark in its advertisements, and in connection with its real estate brokerage, inspections, energy audits, and legal services, and that the Disputed Domain Name contains the Complainant’s service mark in its entirety;
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the HUSMANHAGBERG mark. The Respondent’s website at the Disputed Domain Name contains links that lead to the Complainant’s competitors and other companies in the same business as the Complainant; and
3) the Disputed Domain Name was registered and is being used in bad faith. Specifically, at the time of registration of the Disputed Domain name by the Respondent in 2007, the Complainant was already conducting business under the domain name <husmanhagberg.se> and therefore the Respondent must have been well aware of the Complainant’s business when the Respondent registered the Disputed Domain Name. The Complainant also contends that the Respondent is trying to take advantage of the service mark HUSMANHAGBERG to draw traffic to its website and to thereby commercially profit by misleading consumers who are searching for information on the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
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; (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 the Rules.
A. Language of the Proceedings
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 as filed in English, and a Response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the 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 been submitted in English, and it would cause undue delay and expense if the Complainant were required to translate the Complaint into Korean;
2) The Disputed Domain Name resolves to a website that includes links in English; and
3) The Respondent sent an email in English which shows that the Respondent can understand English.
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 mark and, second, is the Disputed Domain Name identical or confusingly similar to that mark.
The Panel finds that the Complainant has established that it has registered rights to the service mark HUSMANHAGBERG.
The Disputed Domain Name is identical to the Complainant’s service mark HUSMANHAGBERG.
The addition of a generic Top-Level Domain such as “.com” after a domain name is technically required. Thus, it is well established that such element may be typically 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 identical to the Complainant’s service mark.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to at least 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 his 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Respondent registered the Disputed Domain Name on April 12, 2007 — a decade after the Complainant established its business presence, also online, under the HUSMANHAGBERG name. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its HUSMANHAGBERG trademark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that he is commonly known by the Disputed Domain Name or has acquired any rights in the Disputed Domain Name. The Panel finds that the Respondent is improperly using the Disputed Domain Name to create a false impression that the Respondent is affiliated with the Complainant. The Disputed Domain Name includes several sponsored links (presumably pay-per-click) that redirect Internet users to websites relating to the Complainant’s competitors or other companies that are in the same business as the Complainant. This clearly is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
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 Name, and the Respondent has not filed a Response.
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 third-party 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, who has no relationship to the HUSMANHAGBERG service mark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the HUSMANHAGBERG service mark. The only reasonable conclusion to draw is that the Respondent deliberately sought to attract some of the Complainant’s customers to the Respondent’s website, with the hope that at least some of them will click sponsored links for which the Respondent will be paid, and/or that someone would purchase the Disputed Domain Name (presumably the Complainant). This falls squarely within paragraph 4(b)(iv) of the Policy. See, e.g., Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
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 itself 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).
As explained above, the Respondent registered the Disputed Domain Name a decade after the Complainant established its business presence, also online, under the name HUSMANHAGBERG. In such specific circumstances, and having considered paragraph 3.1 of the WIPO Overview 2.0, the Panel can find registration in bad faith, as the Respondent is clearly aware of the Complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the Disputed Domain Name and any potential Complainant’s rights.
Second, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.
The Panel finds that the only credible explanation for the use of the Disputed Domain Name is to take advantage of the similarity between it and the Complainant’s well-known HUSMANHAGBERG service mark, for commercial advantage (e.g., pay-per-click revenue and/or profit from selling the Disputed Domain Name). As mentioned above, the Respondent has no connection whatsoever to the HUSMANHAGBERG service mark. Thus, it is the Panel’s opinion that the Respondent must have been aware of the HUSMANHAGBERG service mark and intentionally attempted to use it for commercial gain.
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 Name 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 Name <husmanhagberg.com> be transferred to the Complainant.
Andrew J. Park
Date: February 18, 2016