WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bihr SAS v. Dong Jin Kim

Case No. D2020-2198

1. The Parties

The Complainant is Bihr SAS, France, represented by Friedrich EVA, France.

The Respondent is Dong Jin Kim, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bihr.com> is registered with Inames Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English 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 sent a communication to the Parties, in English and Korean, regarding the language of the proceeding. On August 28, 2020, the Complainant confirmed its request that English be the language of the proceeding. On September 2, 2020, the Respondent requested that Korean 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 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. On September 18, and 25, 2020, the Respondent requested extension of the Response due date. On September 28, 2020, the Complainant commented on the Respondent’s request for extension. On October 1, 2020, the Center informed the Parties that the Response due date was extended until October 6, 2020. On October 5, 2020, the Center received the Complainant’s supplemental filing. On October 6, 2020, the Respondent requested another extension of the Response due date, and the Response due date was further extended to October 12, 2020. On October 11, 2020, the Center received the Complainant’s supplemental filing. The Response was filed with the Center on October 12, 2020.

On October 21, 2020, the Complainant requested for a suspension of the proceeding. The proceeding was suspended until November 20, 2020. On November 16, 2020, the Complainant requested for the reinstitution of the proceeding. On November 25, 2020, the Center received an email from the Respondent. On December 9, 2020, the Complainant requested for a suspension of the proceeding. The proceeding was further suspended until December 20, 2020. On December 21, 2020, the Center received an email from the Respondent. On December 22, 2020, the Complainant filed a supplemental filing. On December 24, 2020, the Respondent filed a supplemental filing. On January 14, 2021, the Complainant provided a reduced sized version of the annexes.

The Center appointed Moonchul Chang as the sole panelist in this matter on January 24, 2021. 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 February 3, 2021, the Panel issued a procedural order (the “Procedural Order”) directing the Parties to provide further information. On February 10, 2021, the Parties filed submissions and evidence in response to the Procedural Order.

4. Factual Background

The Complainant, Bihr SAS, is an affiliated company of BIHR NV and was founded in the 1975. Since the Complainant initially started as a motorcycle repair shop in 1975, it has now grown as one of the largest distributor of motorcycle parts and accessories in Europe. Bihr owns trademarks including the Benelux BIHR word mark of Registration No. 1387756 (application date December 26, 2018; registration date September 3, 2019) and International BIHR figurative mark of Registration No.1119874 (application date November 29, 2011; registration date April 11, 2012). The Complainant is duly entitled to use them as licensee. In addition, the Complainant has used the domain names such as <bihr.pro>.

According to the publicly available WhoIs information and confirmed by the Registrar, the disputed domain name <bihr.com> was registered on January 24, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The disputed domain name is identical or confusingly similar to the Complainant’s unregistered and registered trademarks because it contains the BIHR mark in its entirety. Since 1975, the Complainant has used the name of “Bihr” and since 1981, it has used the name of “BIHR SAS” as the tradename and the company name. At the time of registration of the disputed domain name in 2001, the Complainant was one of the largest motorbike parts distributors in France and the brand name of Bihr was well known as the French motorcycle parts and accessories in French market. Today, the Complainant has become one of the largest wholesalers of motorcycle parts and accessories in Europe and the Bihr mark is internationally well known in the motorcycle sector through its sponsoring of international sports events and competitions. The Complainant owns or is licensed to use the BIHR trademarks such as French BIHR mark of Registration No. 3877793 (registered by Bihr, priority date November 29, 2011) and BIHR International mark of Registration No.1119874 (registered by Bihr SAS, application date November 29, 2011). Bihr NV owns Benelux BIHR mark of Registration No. 1387756 (registered by Bihr NV, application date December 26, 2018). BIHR NV authorized the Complainant to use the BIHR trademarks and claims its right in this proceeding. As such, the Complainant has the registered and unregistered trademark rights on the name of BIHR.

(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has the exclusive right to use the BIHR trademarks. On the contrary, the Respondent neither owns the BIHR trademarks nor has made a legitimate or fair use of the disputed domain name. Further, the Respondent is not commonly known by the disputed domain name.

(3) The disputed domain name was registered and is being used by the Respondent in bad faith. Firstly, the Respondent has no credible explanation for the registration of the disputed domain name. Especially, the Respondent did not provide a credible justification for choosing the disputed domain name while the term “Bihr” is a specific family name originating from France and Germany. Secondly, the Respondent’s passive holding of the disputed domain name is considered to be a proof of bad faith. The Respondent did not use the disputed domain name for almost 17 years. In addition, the lack of response to several contact attempts could suggest incorrect or outdated WhoIs data. Thirdly, it indicates the pattern of abusive registration of the domain names that the Respondent purchased more than 1,500 domain names which are identical to the registered trademarks including <heku.com>, <pegi.com>, <idcentral.com>, and <kriek.com>. Although the Bihr trademark was registered by the Complainant in 2011, the Complainant has already enjoyed the unregistered trademark rights on the name “Bihr” before the Respondent’s registration of the disputed domain name in 2001. This demonstrates that the Respondent’s bad faith registration targeted the Complainant’s BIHR mark. Fourthly, in the circumstances of the Respondent’s abusive registration and bad faith use of the disputed domain name, it is considered that the Respondent prevents the Complainant from reflecting the mark BIHR in a corresponding the domain name. Further, the Respondent has a significant history of UDRP procedures against him (see MPDV Mikrolab GmbH v Dongjin Kim, WIPO Case No. D2008-0065; Volkswagen AG 대김동진, WIPO Case No. D2003-0582)

B. Respondent

The Respondent contends that:

(1) The disputed domain name is not confusingly similar to the unregistered trademarks and the BIHR figurative trademarks on which the Complainant asserts its exclusive rights. The Complainant does not own exclusive rights on the BIHR trademark and uses it as a licensee. Further, there is no evidence demonstrating that Bihr NV authorized the Complainant to file the Complaint. It is likely that the Complainant filed the Complainant without the permission of Bihr NV, a parent company of the Complainant. In addition, it is not considered that the unregistered BIHR trademark was established at the time of registering the disputed domain name in 2001. In the same period of time the Complainant did not use BIHR mark but “BiHRacing” mark (Annex 23) and the Complainant’s company name was “Cyrille Bihr” or “BiHRacing SA” (Annex 18, 21, 23). Thus, although the Complainant requests the disputed domain name to be transferred to the Complainant itself, it has neither the exclusive right on the registered BIHR trademarks nor that of the unregistered trademark.

Secondly, BIHR is not a distinctive identifier for the Complainant. The word “BIHR” is the family name of Bihr NV’s founder and is common name not only in France, Germany, and USA, but also anywhere around world. For example, Manuel Bihr is famous soccer player who was born in Germany and his nationality is Thailand. Many entities use the acronym of BIHR such as British Institute of Human Rights, Bradford Institute for Health Research, and Bangladesh Institute of Human Rights.

(2) The Respondent has rights or legitimate interests in the disputed domain name. The disputed domain name consisting of four letters strings indicating that “BI” means “Business Intelligence” and “HR” means “Human Resources”. This can be bona fide and is not per se illegitimate under the Policy. Further, the Complainant’s evidence does not prove that the Respondent knew or should have known the existence of the Complainant and its exclusive rights on the BIHR mark at the time of registering the disputed domain name. The Respondent has a portfolio of “four-letter” domain names but some of them listed in Annex 3 were owned by different people of the same name. In the same period of time, the Respondent also registered other four-letters domain name such as <bcmh.com>, <qtop.com>, and <rocu.com>. This indicates that the Respondent registered the four-letter strings domain names considering the value of them.

(3) The Respondent contends that the disputed domain name is neither registered nor is being used in bad faith. Firstly, it is not considered that the Respondent registered the disputed domain name <bihr.com> in bad faith because the Respondent registered the disputed domain name much earlier than the Complainant registered the BIHR trademark registration. Secondly, the passive holding of a domain name does not constitute the bad faith use because its mark is neither distinctive nor widely known at the time of registering the disputed domain name. Thirdly, the failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name. Fourthly, unless the Respondent infringes the Complainant’s right in the trademark, its registration and use of the disputed domain name should be allowed (See DSPA B.V. v. Bill Patterson, Reserved Media LLC, WIPO Case No. D2020-1449).

(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 much prior to the Complainant’s filing date of trademark application or the registration date of the BIHR 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 otherwise agreed to by the parties. In the 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 Complainant requests 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 the previous UDRP cases, the Respondent responded to the Complainant in English, which indicates that the Respondent is able to communicate in English. 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. 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 that it is appropriate to render this Decision in English while any other communications between the Center and the Parties continue in a bilingual manner in both English and Korean.

6.2. Substantive issues

Under paragraph 4(a) of the Policy, the Complainant 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

Under the UDRP paragraph 4(a)(i) the term “trademark or service mark” encompasses both registered and unregistered marks. The Complainant asserts that it has both registered and unregistered trademark rights on the BIHR mark.

Firstly, the Complainant owns or licenses BIHR trademarks including International BIHR figurative mark of Registration No.1119874 (application date November 29, 2011, registration date April 11, 2012) and the Benelux BIHR word mark of Registration No. 1387756 (application date December 26, 2018, registration date September 3, 2019). However, the Panel observes that the disputed domain name was registered on January 24, 2001, predating the Complainant’s trademark which was registered on April 11, 2012 (application date November 29, 2011). 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) This will be discussed further under the Section 6.2.C.

Secondly, the Complainant alleges that it has used the name of “Bihr” as an affiliated company of Bihr NV since 1975 and also used the name of “Bihr SAS” as the tradename since 1981. Further, the Complainant asserts that the unregistered trademark of the Complainant was established, which the disputed domain name is identical or confusingly similar to. To establish unregistered trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier, which consumers associate with the complainant’s goods and/or services (Section 1.3 of WIPO Overview 3.0). The Respondent contends that the BIHR mark is not a distinctive identifier for the Complainant. This is incorrect, as the Complainant has registered trademarks which in effect presumes status as a distinctive source identifier. Given the fact that the Complainant initially started as a motorcycle repair shop in 1975 and has rapidly grown after becoming a member of the Belgian Alcopa Group in 2011 when the Complainant registered the BIHR “figurative” trademark in the same year, the Panel considers that based on the evidence put before it the BIHR mark was not distinctive and could not have acquired sufficient secondary meaning at the time of registering the disputed domain name in 2001. Based on the evidence in the case file, the Complainant fails to prove that the unregistered BIHR trademark was adequately established at the time of registration of the disputed domain name.

Thirdly, in the UDRP proceedings, a trademark owner’s affiliate such as a subsidiary of a parent company is considered to have rights in a trademark for purposes of standing to file a complaint. However, UDRP panels expect parties to provide relevant evidence of authorization to file a UDRP complaint. In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark license would typically not have standing to file a UDRP complaint. (Section 1.4.1 of WIPO Overview 3.0) Here, in order to give the Complainant a fair opportunity to clarify whether the Bihr NV authorized the Complainant trademark rights and to provide supporting documentation, the Panel issued a Panel Order. In supplemental response to the Panel Order, the Complainant submitted a document stipulating that “the Bihr NV mandates the Complainant to claim its rights in this UDRP proceeding”, which was signed by a director of Bihr NV. The relevant second level portion of the disputed domain name is in all events identical to the Complainant’s / it’s corporate parents trademarks.

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 disputed 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 the present case, the disputed domain name was registered in 2001, prior to the Complainant’s registration of the BIHR trademark in 2011 and prior to recognition of the same as an unregistered trademark - at least based on the evidence provided by the Complainant. 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 disputed domain name can generally not have been registered in bad faith, as the respondent could not have been aware of the complainant’s trademark as of the time the disputed 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 disputed 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 by way of targeting the Complainant’s registered trademark.

Secondly, the Complainant asserts that the Respondent has registered over 1,500 domain names and been involved in several UDRP decisions. On the other hand, the Respondent alleges that he has portfolio of many domain names with four letters including <bitq.com>, <bcms.com>, <bcmh.com>, and <rocu.com>. The Respondent further asserts that he registered the disputed domain name meaning that “BI” means “Business Intelligence” and “HR” means “Human Resources”. The particular claim as to this supposed acronym does not strike the Panel as very plausible (and in fact undermines the Respondent’s credibility somewhat), but in either event, the Respondent’s acquisition of the disputed domain name <bihr.com> is consistent with the Respondent’s portfolio in general terms. In addition, simply owning a number of domain names is not of itself evidence of bad faith. Unless the Respondent somehow infringes on the Complainant’s right on the BIHR mark in a manner to suggest targeting 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). In the light of circumstances that the Complainant’s BIHR mark was neither distinctive nor widely known at the time of registering the disputed domain name, the Panel considers that the Respondent could not have targeted the Complainant and its BIHR trademark; moreover the trademarks to which the other registrations of the Respondent would correspond is not immediately clear.

Finally, the Complainant asserts that the Respondent’s passive holding of the disputed domain name for long period of time constitutes the Respondent’s bad faith registration and that the lack of response to the Complainant’s several contacts attempts is considered as an indication of bad faith. However, in this case, the passive holding of a domain name does not constitute the Respondent’s bad faith registration because at the time of registering the disputed domain name the Respondent could not have targeted the Complainant’s mark, which was not registered nor (based on the evidence submitted) distinctive nor well known. In addition, the failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name in the circumstances that there is no evidence that the Respondent attempted to conceal its contact details by using a privacy or proxy service.

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 consideration of the situation that the Complainant could mistake the value of particular evidences on the unregistered trademark rights, 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 of RDNH.

The Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Moonchul Chang
Sole Panelist
Date: February 15, 2021