WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vidrieras Canarias, S.A. v. Kim Seokjun
Case No. D2018-1516
1. The Parties
The Complainant is Vidrieras Canarias, S.A. of Las Palmas de Gran Canaria, Spain, represented by Herrero & Asociados, S.L., Spain.
The Respondent is Kim Seokjun of Bucheon-si, Gyeonggi-do, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <vicsa.com> 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 July 6, 2018. On July 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2018, 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; and confirming that the language of the registration agreement is Korean.
On July 13, 2018, 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 July 13, 2018, the Complainant requested for English to be the language of the proceeding. On the same date, the Respondent requested for Korean to be the language of the proceeding.
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 in English and Korean of the Complaint, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on August 8, 2018, that it would proceed to appoint the panelist in this proceeding.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on August 24, 2018. 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 following factual information is derived from the Complaint and supporting materials submitted by the Complainant:
The Complainant, Vidrieras Canarias, S.A., is a company that belongs to Verallia Group, a leading global producer of glass packaging for food and beverages. Verallia Group controls 31 percent of the Spanish market and has 27 factories in 12 countries in Latin America, Europe and Morocco. The Complainant has several trademark registrations of or incorporating the word VICSA in Spain, the earliest of which dates back to November 6, 1978 (see registration number m0781736).
The disputed domain name, <vicsa.com>, was registered on May 2, 2004. As of September 6, 2018, the disputed domain name is not accessible and does not seem to contain any contents. On May 28, 2018, the Complainant sent a cease-and-desist letter to the Respondent via postal letter and email notifying it of the Complainant’s trademark rights. The Respondent replied trying to sell the disputed domain name to the Complainant for EUR 49,000.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that (i) the use of the disputed domain name could only happen in bad faith as the trademark VICSA is well known; (ii) the Respondent has registered the disputed domain name being aware of the existence of the Complainant’s trademark; and (iii) the Respondent does not have any legitimate right or legal standing that would justify their use of the trademark VICSA.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent failed to reply to the Complaint. The consensus view of UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.
However, paragraph 14 of the Rules provides in the event of default that a Panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.” “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.” Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850.
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English.
In determining the language of the proceeding in the present case, the Panel considers the following points: (i) it is apparent from the communications between the Parties, the email offering to sell the disputed domain name in particular, that the Respondent understands English; (ii) the Panel is familiar with both languages, capable of reviewing all the documents and materials in both languages and able to give full consideration to the parties’ respective arguments; and (iii) the Respondent did not submit any formal response.
In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.
B. Identical or Confusingly Similar
The disputed domain name <vicsa.com> incorporates the Complainant’s trademark VICSA in its entirety without addition or alteration. Further, there exists well-established consensus that “the applicable Top Level Domain (“TLD”) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
C. Rights or Legitimate Interests
By demonstrating that (i) the Complainant is the registered owner of the trademark VICSA; (ii) the Complainant has neither authorized nor given its consent to the Respondent to register and use domain names containing the trademark, and (iii) the Respondent is not commonly known by the disputed domain name, the Complainant has met its initial burden of making a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. Section 2.1 of WIPO Overview 3.0.
By never responding to the Complainant’s position, the Respondent failed to show any of the circumstances provided in paragraph 4(c) of the Policy that can demonstrate its right or legitimate interests. The Panel notes that the Respondent is not using the disputed domain name in connection with any active website.
Therefore, the Panel finds that the Respondent failed to show its rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that the registration and use of a domain name in bad faith is found when there are circumstances indicating that the Respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
The Complainant showed in the Complaint that the Respondent replied to its cease-and-desist letter by attempting to sell the disputed domain name for EUR 49,000; an amount clearly in excess of its out-of-pocket costs associated with the disputed domain name. In addition, when approached by the Complainant, the Respondent asked the Complainant which domain name it was referring to among the long list of many other similar domain names incorporating the Complainant’s trademark VICSA, such as “www.vicsa.com.ar”, “www.vicsa.net”, “www.vicsa.com.br”, “www.vicsa.pl”,”www.vicsa.mx”, etc. This shows the indication of the pattern of conduct to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is one of the examples of bad faith stipulated under paragraph 4(b)(ii) of the Policy. On the other hand, by not responding to the Complaint, the Respondent failed to refute such indication. See Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391; see also Autodesk, Inc. v. Bayram Fatih Aksoy, WIPO Case No. D2016-2000.
Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <vicsa.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: September 10, 2018