WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bpost NV and bpost bank NV v. Dong Jin Kim
Case No. D2020-2195
1. The Parties
The Complainants are bpost NV and bpost bank NV, Belgium, represented by Janson, Belgium.
The Respondent is Dong Jin Kim, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <bpost.com> is registered with Inames Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2020, 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 August 28, 2020, 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 August 31, 2020, the Complainant requested for English to be the language of the proceeding. On September 2, 2020, 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 September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Respondent requested for an extension of the Response due date on September 18, 25, 30, and October 6, 2020. The Response Respondent due date was extended to October 12, 2020. The Response was filed with the Center on October 12, 2020. The Center appointed Andrew J. Park as the sole panelist in this matter on October 23, 2020. The Panel had submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 4 and 5, 2020, the Parties consented to suspend the proceeding for settlement negotiation purposes. On November 17, 2020, the Panel issued an Administrative Panel Procedural Order through the Center, and the proceeding was suspended from November 17, 2020 to December 1, 2020. On December 17, 2020, the Center received a communication from the Complainant, indicating, “[the Respondent] has not made any concrete proposal and no settlement agreement was reached.”
On December 21, 2020, the Center received an email communication from the Respondent regarding the Panel. On January 7, 2021, the Center informed the Parties of a Recusal and subsequent Notification of Panel Appointment, and Moonchul Chang was appointed as the sole panelist in this matter. 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.
On January 21, 2021, the Panel issued a procedural order (the “Procedural Order”) directing the Parties to provide further information. On February 2 and 4, 2021, the Parties filed submissions and evidence in response to the Procedural Order.
4. Factual Background
The Complainant 1, bpost NV, was founded in 1830 and has used the names De Post (in Dutch) and La Poste (in French) and internationally ‘The Belgian Post or Belgian Post International’. After the Complainant became a public limited company, it used the name “Bpost”. The Bpost business is an international mail and parcel service, and e-commerce logistics services provider.
The Complainant 1 has several trademark registrations, including the following:
- Benelux trademark Registration No. 0537762 for figurative mark LA POSTE/DE POST/Die POST/THE POST, registered on June 1, 1994;
- EU trademark Application No. 001222728 for figurative mark BELGIAN POST INTERNATIONAL, registered on July 10, 2006, expired on June 28, 2009;
- International Trademark Registration No. 1064911 for word mark BPOST registered on August 16, 2010;
- EU Trademark Registration No. 008897811 for BPOST registered on August 12, 2019;
- Benelux trademark Registration No. 0886987 for figurative mark BPOST registered on November 10, 2010;
- Benelux Trademark Registration No. 0927051 for word mark BANK BPOST registered on January 10, 2013.
In addition, the Complainant I, owns the disputed domain name <bpost.be>, which was registered on February 4, 2010, and resolves to the Complainant’s primary website
The Complainant 2, bpost bank NV, was founded in 1995 under the initial name “Bank van de Post” as a joint venture between BNP Paribas Fortis and the Complainant 1. In 2012, the Complainant 2 changed its name from “Bank van de Post” to “bpost bank”. The Complainant 2 owns the Benelux word trademark “BANK van DE POST” (Registration No. 0579757, registered on July 1, 1996) and the Benelux word trademark BPOST BANK (Registration No. 920935, registered on September 10, 2012).
According to the publicly available WhoIs information and confirmed by the Registrar, the Respondent, Dong Jin Kim, registered the disputed domain name <bpost.com> on April 16, 2001.
5. Parties’ Contentions
(1) The Complainants contend that the disputed domain name is identical or confusingly similar to the following trademarks in which the Complainants have rights; LA POSTE/DE POST/Die POST/THE POST (registered on June 1, 1994), BELGIAN POST INTERNATIONAL, (registered on July 10, 2006, expired on June 28, 2009), BANK van DE POST (registered on July 1, 1996), BPOST (registered on August 16, 2010), BANK BPOST (registered on January 10, 2013), BPOST BANK (registered on September 10, 2012). The common element of the Complainants’ trademarks and trade names is “post” which is the most distinctive element in the disputed domain name <bpost.com>. The letter “b” in the disputed domain name is understood as a reference to “Belgium” or “Belgian”.
(2) The Complainants contend that the Respondent has no rights in the disputed domain name. The term “bpost” is not an existing word but fanciful word, which is not in common use and refers to the Complainants. The Respondent is not known under this term and there are no legitimate reasons for the Respondent to use this term. The Complainants have never granted any license or authorization to the Respondent to use its marks in any manner. On the other hand, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services and intended to misleadingly divert and confuse consumers and to take advantage of the notoriety of the Complainants’ trademarks.
(3) The Complainants further contend that the Respondent has registered and used the disputed domain name in bad faith. Firstly, the Respondent has never made any bona fide use of the disputed domain name and has instead made use of the disputed domain name for inappropriate and malicious content and for scam contents. Secondly, the Respondent has made use of the disputed domain name for displaying PPC (pay-per-click) links referring to competing services, covered by the Complainants’ trademark rights. Thirdly, the Respondent has never replied to the Complainants’ notice letter and simply ceased all activity on the disputed domain name shortly after receiving the notice letter. Fourthly, the Respondent has been held to have registered domain names in bad faith in earlier UDRP decisions (see MPDV Mikrolab GmbH v Dongjin Kim, WIPO Case No. D2008-0065; Volkswagen AG v. Kim Dong-Jin, WIPO Case No. D2003-0582). Finally, at the time of registering the disputed domain name, the Respondent should have been aware of the existence of the Complainants’ rights of trademarks such as LA POSTE/DE POST/THE POST (registered on June 1, 1994), BELGIAN POST INTERNATIONAL, (registered on July 10, 2006, expired on June 28, 2009), BANK van DE POST (registered on July 1, 1996). By registering the disputed domain name <bpost.com> that is confusingly similar to the Complainants’ registered and unregistered rights at the time of registration, the Respondent has acted in bad faith.
(1) The Respondent replies that the disputed domain name is identical to the Complainants’ trademarks BPOST. The disputed domain name was registered almost 9 years earlier than the Complainant’s the registration date of the BPOST trademark. The Complainants do not have the exclusive rights on the word “post” which is a general term.
(2) The Respondent replies that it has legitimate rights in respect of the disputed domain name. The Respondent registered the disputed domain name <bpost.com> on April 16, 2001, considering with its value that “BPOST” means “Be Part of Something”. During the similar period of time in 2001, the Respondent also registered the domain name <4post.com> and <bnow.com>, which comprise the combination of a generic word with a letter. This supports that the Respondent registered the domain names, which do not relate to the Complainants. In addition, the Respondent’s website used a free homepage hosting service to provide marketing information service and did not have the purpose of PPC links.
(3) The Respondent replies that the disputed domain name is neither registered nor is being used in bad faith. Regarding the evidences of the scam site of Annex 27 in the Complaint the Respondent contends that the Complainants fabricated the photos by inserting other images into the photo of the Respondent’s website. Further, regarding the evidences of the malicious content of <remembergirl.com> site, which the Complainants submitted, the Respondent speculates that the Complainants’ computer was possibly infected by a popup ad malware. The failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name because the Respondent did not use a privacy or proxy registration service and WhoIs information discloses the contact data of the Respondent.
(4) The Respondent asserts that the Complaint was brought in bad faith, especially in an attempt at Reverse Domain Name Hijacking. The Complainant knew that it could not succeed since the disputed domain name was registered prior to the Complainant’s filing date of trademark application, the first using date of the BPOST name or the registration date of the BPOST trademark.
6. Discussion and Findings
6.1. Preliminary Issue: Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or is otherwise agreed to by the parties. In this present case, the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean.
However, the Complaint was filed in English. The Complainants request that the language of proceeding be English for the following reasons. The Complainant is unable to communicate in Korean and the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings. In addition, the website in association with the disputed domain name contained links and content that are not in Korean and the Respondent was able to defend himself in English in the earlier UDRP cases. In light of the nationality of the Parties, English is a neutral language, affording to no particular benefit to either Party.
On the other hand, the Respondent requests to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and he does not fully understand English.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding and that the Respondent has been able to communicate in and defend the case. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Decision in English and any other communications between the Center and the Parties in a bilingual manner in both English and Korean.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, the Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.
A. Identical or Confusingly Similar
The disputed domain name <bpost.com> incorporates the term “BPOST” which is identical to the Complainants’ trademark. The Complainants assert that the term “post” is the distinctive element of the disputed domain name and the letter “b” in the disputed domain name is understood as a reference to “Belgium” or “Belgian”. The Panel considers that the dominant and recognizable feature of the disputed domain name is the term “bpost” which the Complainants registered as trademarks in 2010. In cases where a domain name incorporates the entirety of a trademark, the domain name will be considered confusingly similar to that mark for purposes of UDRP standing. In addition, the generic Top-Level Domain suffix “.com” can be disregarded under the confusing similarity test (Section 1.11.1 of WIPO Overview 3.0).
The Panel observes that the disputed domain name was registered on April 16, 2001, predating the Complainant’s trademark, which was registered on August 16, 2010 (filed on February 18, 2010). For purposes of the first element under paragraph 4(a) of the Policy, the “UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights[.] […] Where a domain name has been registered before a Complainant has acquired trademark rights, only in exceptional cases would a Complainant be able to prove a Respondent’s bad faith.” (Section 1.1.3 of WIPO Overview 3.0) This will be discussed further in details under the Section 6.2.C.
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusion below under the third element.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP Panel must be satisfied that a domain name has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In this proceeding, the Panel needs look no further than the Complaint to determine that the Complainants have not established that the Respondent registered the disputed domain name in bad faith.
Firstly, in this present case, the disputed domain name <bpost.com> was registered on April 16, 2001 prior to the Complainants’ registration of the BPOST trademark on August 16, 2010. Previous UDRP panels’ consensus view is that, absent exceptional circumstances, when a domain name is registered by the respondent before the complainant’s trademark right, the domain name can generally not have been registered in bad faith, as the respondent could obviously not have been aware of the complainant’s trademark as of the time the domain name was registered (Section 3.8.1 of WIPO Overview 3.0). These exceptional circumstances include the limited circumstances where the respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s unregistered mark in anticipation of obtaining trademark rights; for example, (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application (Section 3.8.2 of WIPO Overview 3.0). In this respect, the Complainant fails to prove such exceptional circumstances that the Respondent registered the disputed domain name in bad faith.
Secondly, the Complainants assert that the Respondent has registered over 1,700 domain names and been involved in several UDRP decisions, which ordered to transfer its domain names. On the other hand, the Respondent alleges that he registered many domain names during the year of 2000-2001 to secure them in advance considering its value and possible use for its business. The Respondent has portfolio of many domain names with four or five letters. These domain names demonstrate that the Respondent has the general interest in short acronymic names or the terms of the combination of a dictionary word with a letter. The Respondent’s acquisition of the disputed domain name <bpost.com> is consistent with the Respondent’s portfolio in that regard. In addition, simply owning a number of domain names is not of itself evidence of bad faith. Unless the Respondent infringes on the Complainant’s right on the BPOST mark in a manner to suggest targeting of the same, its registration of the disputed domain name may be allowed. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect a third party trademark(s) and to target the owner(s) of the relevant trademark(s). The Panel considers that the Respondent could neither reflect the non-existing Complainant’s trademark nor target the Complainant at the time of registering the disputed domain name.
Thirdly, while the Complainants assert with evidences of Annex 27 that the Respondent has made use of the disputed domain name for inappropriate and malicious content and for scam contents, the Respondent alleges that the Complainants fabricated the photos by inserting other images into the photo of the Respondent’s website. Further, regarding the evidences of the malicious content of <remembergirl.com> site, the Respondent argues that the Complainants’ computer was possibly infected by a popup ad malware. In order to give the Complainants a fair opportunity to clarify its statement and further supporting evidences to Annex 27, this Panel issued a Panel Order. In the supplemental response, the Complainants explained the authenticity of the evidences of Annex 27, however the Respondent continues to dispute this explanation; in either event, a final determination here it is not relevant to the outcome given the date of the registration of the disputed domain name vis-à-vis the Complainant’s BPOST trademarks.
Fourthly, the Complainants allege that the Respondent has made use of the disputed domain name for displaying PPC links referring to the competing service written in Dutch. The Parties offer differing versions of whether this page went to PPC links or to provide marketing information service; in either event, a final determination here is not necessary given the date of the registration of the disputed domain name vis-à-vis the Complainant’s BPOST trademarks.
Finally, the Complainants argue that even if the Respondent had registered the disputed domain name in good faith, its use of the disputed domain name in bad faith calls into question of his compliance with his representation and warranties under UDRP paragraph 2, which provides a sufficient basis for a finding of registration and use in bad faith (Octogen Pharmacal Company, Inc. v Domains by Proxy, Inc / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009‑0786). In this light, it should be discussed here about the Respondent’s renewal and its duty on the registrant to conduct investigation of third party trademark rights. The Respondent alleges that he has renewed the disputed domain name every year since he registered it in 2001. The UDRP panels have usually found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith. In case where the domain name registration is masked by a privacy or proxy service and the complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the respondent to rebut this (Section 3.9 of WIPO Overview 3.0). However, there is no evidence that the Respondent attempted to conceal its contact details by using a privacy or proxy service. Further, there is no evidence of any later purchase by the Respondent of the disputed domain name than at the original registration date. Thus, the original registration date is the relevant one.
The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Rules provides that, “If after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
In the consideration of the situation that the Complainants might mistake the value of particular evidences when they filed the Complaint, the Panel cannot conclude that the Complainant filed its Complaint in bad faith for the purposes of RDNH and mere lack of success of the Complaint is not in itself sufficient for a finding of RDNH.
The Panel is of the opinion that the Complainant has not filed its Complaint in bad faith as an attempt at RDNH. The Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: February 8, 2021