WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adapt IT Holdings Limited v. Yang Kyung Won
Case No. D2016-1173
1. The Parties
The Complainant is Adapt IT Holdings Limited of Durban, KwaZulu-Natal, South Africa, represented by Michalsons Attorneys, South Africa.
The Respondent is Yang Kyung Won of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <adaptit.com> (the “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 June 10, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 2016, 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 13, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name is Korean. On the same date, the Complainant requested for English to be the language of the proceedings. On June 14, 2015, the Respondent requested for Korean to be the language of the proceedings.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2016. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on July 13, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 28, 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.
The Panel, following its review of the Complaint and all exhibits annexed thereto, as well as all other materials and documents that are part of the official record, issued Procedural Order No. 1 on August 31, 2016 and was delivered by the Center to both the Complainant and the Respondent of even date therewith. This Procedural Order requested information from the Complainant concerning certain allegations set forth in its Complaint, and permitted the Respondent to submit a response to the Complainant’s submission. The deadline for the Complainant to respond to the Procedural Order was September 5, 2016.
In response, the Complainant filed its initial response on September 4, 2016. It also filed a secondary response on September 6, 2016, one day after the response deadline. No response was filed by the Respondent.
4. Factual Background
The Complainant, Adapt IT Holdings Limited, is a company registered in South Africa. It provides innovative information technology (IT) services and specialized solutions to some of the most successful manufacturing, financial services, education and energy organizations in over 38 countries worldwide.
The Complainant acquired <adaptit.co.za> in 2007 and has been using it to host its main website.
The Disputed Domain Name was registered on September 11, 2009.
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 trademark ADAPT IT. The trademark relates to the provision of information technology services and specialized solutions. Further, the Complainant uses the trademark in its South African domain name, <adaptit.co.za>, which was registered in the Complainant’s name on September 15, 2007.
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 mark ADAPT IT. The Respondent shows no evidence that it has made use of or intends to make use of the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant mentioned that the Disputed Domain Name resolves to a website displaying what appears to be a community forum or social networking site regarding BMW automobiles. The website content is identical to content that appears on the website at “www.cafe.naver.com/sppo”.
3) the Disputed Domain Name was registered and is being used in bad faith. The Complainant began using the ADAPT IT trademark in 2004 (through its previous subsidiary, Adapt-IT (Pty) Ltd). The Respondent registered the Disputed Domain Name on September 11, 2009, five years after the Complainant began using the trademark, and slightly under two years after the registration of its South African domain name <adaptit.co.za>. The Respondent offered to sell the Disputed Domain Name to the Complainant for USD 75,900, plus escrow fees. The Respondent also offered the Disputed Domain Name for sale to the public.
The Respondent did not formally reply to the Complainant’s contentions. However, it is noted that the Respondent did request that the Complaint be translated into Korean.
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: (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.
6.1. 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 proceedings 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 is comprised of an English phrase, and resolves to a website that includes links in English; and
3) The Respondent corresponded with the Complainant in English prior to these proceedings which shows that the Respondent can understand English.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed in English; and (2) issue a decision in English.
A. 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 Complainant alleges that it has rights to the ADAPT IT trademark and that its use of said mark predates the Respondent’s registration date of the Disputed Domain Name. In support, the Complainant noted that it has a pending South African trademark application for the ADAPT IT trademark that was originally filed in 2014, and a South African domain name <adaptit.co.za> which was registered on September 15, 2007. The Complainant also submitted voluminous documents showing use of the ADAPT IT company name and mark in commerce as early as 2007.
The Panel finds that the Complainant has established that it has established its rights in the ADAPT IT trademark based on the totality of the submitted evidence of use in commerce. Further, the Panel finds that the Disputed Domain Name is identical to the Complainant’s ADAPT IT trademark. 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. D2012-0183).
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 trademark.
B. 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 September 11, 2009, approximately two years after the Complainant established its business presence (in its current form) and began using the ADAPT IT mark. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ADAPT IT mark. 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 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 to the Complainant’s contentions nor to the Panel’s Procedural Order.
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.
C. Registered and Used in Bad Faith
The Panel will address 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 ADAPT IT trademark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the ADAPT IT trademark. 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 of selling the Disputed Domain Name - presumably to the Complainant - for a profit. 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.
As explained above, the Respondent registered the Disputed Domain Name approximately two years after the Complainant had established its business presence in its current form and had secured its domain name <adaptit.co.za> based on its ADAPT IT trademark. Under such circumstances, and having considered paragraph 3.1 of the WIPO Overview 2.0, the Panel finds 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 the Complainant’s mark.
Second, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.
The Panel finds that the Respondent’s use of the Disputed Domain Name takes commercial advantage of the similarity between it and the Complainant’s trademark (e.g., seeking to profit from selling the Disputed Domain Name). In addition, as the Panel noted above, the Respondent not only listed the Disputed Domain Name for sale, but actually offered to sell same to the Complainant for the amount of USD 75,900, plus escrow fees. The Respondent’s selling price is considered excessive relative to the reasonably nominal cost to register the Disputed Domain Name and to maintain it.
Finally, as mentioned above, there is nothing in the record to show that the Respondent has any connection whatsoever to the ADAPT IT mark. Thus, it is the Panel’s opinion that the Respondent must have been aware of the ADAPT IT mark and intentionally attempted to use it for commercial gain.
The conduct described above falls squarely within paragraph 4(a)(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 <adaptit.com> be transferred to the Complainant.
Andrew J. Park
Date: September 16, 2016