WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mediahuis NV v. Cha Bon Keun
Case No. D2019-2388
1. The Parties
Complainant is Mediahuis NV, Belgium, represented by Gevers Legal NV, Belgium.
Respondent is Cha Bon Keun, Republic of Korea, self-represented.
2. The Domain Names and Registrar
The disputed domain names <mediahuis.com> and <mediahuisgroup.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain names.
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 Respondent of the Complaint, and the proceedings commenced on October 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2019. The Response was filed with the Center on October 22, 2019.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 30, 2019. 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
Complainant is a media company that provides newspaper and magazine publishing, distribution, printing, television, radio, and other online media services. Since Complainant was formally established in January 2014, Complainant has acquired several companies and now owns many well-known brands in Belgium, Ireland, and the Netherlands. Complainant’s news brands reach over 10 million people daily. Complainant owns Benelux trademark registrations for MEDIAHUIS, including Registration No. 0598245, registered on July 1, 1997, and Registration No. 0583953, registered on October 1, 1996. Complainant also owns a registration for MEDIAHUIS with a design, Registration No. 0947900, registered on February 14, 2014.
Respondent registered the disputed domain name <mediahuis.com> on or about August 10, 2017, and the disputed domain name <mediahuisgroup.com> on May 6, 2019. The disputed domain names were offered for sale at a price of USD 1,250,000 for <mediahuis.com> and a price of USD 300,000 <mediahuisgroup.com>.
On August 6, 2019, Complainant, using a false name, offered to purchase the disputed domain name <mediahuis.com> from Respondent for a price of EUR 2,500. Respondent replied that the sale price was USD 1,250,000. Complainant then asked for Respondent’s “lowest and more ‘realistic’ price,” to which Respondent replied that the disputed domain name was worth USD 1,250,000 based on Complainant’s sales and growth.
5. Parties’ Contentions
Complainant alleges that the disputed domain names <mediahuis.com> is identical to Complainant’s MEDIAHUIS trademark. Complainant further alleges that the disputed domain name <mediahuisgroup.com> is confusingly similar to the MEDIAHUIS mark. According to Complainant, the addition of the generic term “group” to Complainant’s mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark.
Complainant argues that Respondent lacks rights or legitimate interests in respect of the disputed domain names. In Complainant’s belief, Respondent does not own any trademark or trade name rights in MEDIAHUIS or MEDIAHUIS GROUP. As far as Complainant is aware, Respondent is not commonly known by the disputed domain names. Additionally, Complainant asserts that Complainant has not licensed or authorized Respondent’s use of MEDIAHUIS in the disputed domain names.
Complainant also asserts that Respondent registered and is using the disputed domain names in bad faith. Complainant believes Respondent owns 1,018 domain names, many of which Respondent offers for sale at prices exceeding Respondent’s expenses for registering the domain names. Regarding the disputed domain names, Complainant argues that Respondent’s offer of the disputed domain names for the respective sale prices demonstrates that Respondent deliberately targeted Complainant with the intention to benefit from the reputation and goodwill of Complainant’s mark. Complainant further argues that Respondent’s registration of the disputed domain name <mediahuisgroup.com> six days after Complainant announced its acquisition of another company suggests Respondent’s opportunistic bad faith.
Respondent acknowledges one of Complainant’s Benelux trademark registrations for MEDIAHUIS and Design, but contends that Respondent has never used the registered design mark. In Respondent’s belief, the design mark and the word MEDIAHUIS completely differ in design. Respondent also asserts Complainant lacks worldwide trademark rights in MEDIAHUIS and that anyone can use the mark.
Regarding bad faith, Respondent asserts that he registered the disputed domain name <mediahuis.com> because he wanted a website to establish a media company. According to Respondent, his preferred company name “media house” was already used in a registered domain name. Eventually, Respondent discovered the Dutch translation for “house” is “huis” and decided to use <mediahuis.com> for his website. Respondent states that he registered the disputed domain name <mediahuis.com> on August 10, 2017, for a fee of USD 19.17. Since the time of registration, Respondent alleges he has received numerous offers to purchase the disputed domain name <mediahuis.com>. Respondent claims to have set the sales price of <mediahuis.com> to USD 1,250,000 to discourage prospective purchases from making offers because Respondent only wanted to use the disputed domain name to establish his media company. Respondent also claims that he registered the disputed domain name <mediahuisgroup.com> on May 6, 2019, for a fee of USD 8.47. With <mediahuisgroup.com>, Respondent’s intent was allegedly to prepare for the growth of his media company. Further, Respondent concedes that the sales prices for its many domain names, submitted by Complainant as evidence, are correct. Respondent notes the prices for most of those domain names are between USD 11,000 and 20,000, which are “realistic price[s]” according to Respondent. By contrast, the disputed domain names are for sale at the “prohibitively expensive” prices of USD 1,250,000 for <mediahuis.com> and USD 300,000 for <mediahuisgroup.com>.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated its rights in the trademark MEDIAHUIS by way of its Benelux trademark registrations. The Panel finds the disputed domain name <mediahuis.com> is identical to Complainant’s mark. The Panel also finds that the disputed domain name <mediahuisgroup.com> is confusingly similar to Complainant’s mark. The word “group” does not negate the confusingly similarity. Société des Produits Nestlé S.A. v. Registration Private, Domains By Proxy, LLC / James Onuoha Doe, WIPO Case No. D2019-1962.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has failed to rebut Complainant’s case. There is no evidence that Respondent is commonly known as “MEDIAHUIS” or “MEDIAHUIS GROUP.” Although Respondent claims that he registered the disputed domain names for his media company, Respondent has produced no evidence that such company either exists or will soon exist. Additionally, Respondent has not shown that he has used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent registered and is using the disputed domain names in bad faith. The Panel finds Respondent’s explanation for how Respondent came to register the disputed domain names not credible for multiple reasons. For example, after Respondent refused Complainant’s offer to purchase the disputed domain name <mediahuis.com> for EUR 2,500, Complainant asked for Respondent’s “lowest and more ‘realistic’ price.” Respondent replied with information about Complainant, demonstrating knowledge of Complainant and the value of Complainant’s MEDIAHUIS mark. Given that “MEDIAHUIS” is comprised of two Dutch words and Respondent is from the Republic of Korea, it is probable that Respondent was aware of Complainant before he registered the disputed domain name <mediahuis.com>. Additionally, Respondent registered the disputed domain name <mediahuisgroup.com> less than one week after Complainant announced its acquisition of another company. It is more likely than not that Respondent registered both of the disputed domain names with knowledge of Complainant’s mark.
Respondent is also using the disputed domain names in bad faith. As Respondent concedes, the disputed domain names are for sale for prices far exceeding the registration costs. Respondent’s defense that he set the price high to ward off offers, is, frankly, disrespectful in view of the record evidence. When Complainant asked for a more realistic price, Respondent answered in an email:
“Mediahuis is the fastes growing media group in Europe.
Mediahuis have over 4,000 employees.
Next year’s sales will exceed one billion euros..
It is a major media group in Belgium, Netherlands and Ireland.
Mediahuis is worth 1.250.000 usd.
This demand is based entirely on the trademark value of Complainant’s mark. It is textbook bad faith use. Complainant has satisfied paragraphs 4(a)(iii) and 4(b)(i) 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 names <mediahuis.com> and <mediahuisgroup.com> be transferred to Complainant.
Lawrence K. Nodine
Date: November 13, 2019