WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RESTAR Real Estate GmbH v. Kyoung S Park
Case No. D2020-3543
1. The Parties
Complainant is RESTAR Real Estate GmbH, Germany, represented by BRANDIT GmbH, Switzerland.
Respondent is Kyoung S Park, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names and <immomaxx.com> and <immomaxx.net> are registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 25, 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.
4. Factual Background
Complainant is exclusive licensee from Ms. Barbara Vieth (hereinafter the “Licensor”) of rights to use the trademark IMMOMAXX, with the express authority to pursue this proceeding. 1 Licensor is the owner of registrations of the word, and word and device trademark, IMMOMAXX on the trademark register of the German Patent and Trademark Office, including word and device registration number 30156266, registration dated November 16, 2001, in international classes (ICs) 35, 36 and 41, covering franchising with respect to real estate and related financing; word and device mark, registration number 30156262, registration dated November 23, 2001, in ICs 35, 36 and 41, and; word mark, registration number 302019005536, registration dated June 25, 2019, in ICs 35, 36 and 41.
Complainant as licensee operates a franchising system through which franchisees operate real estate brokerage offices using the trademark and know-how of Complainant. In 2008, a predecessor of Complainant had 22 licensees and revenues of EUR 230,135. In 2019 Complainant operated through 16 franchisees in Germany (and franchisee offices six other countries), all using the IMMOMAXX trademark, with revenues of EUR 236,175. Complainant operates a commercial website using various domain names incorporating the IMMOMAXX trademark, including <immomaxx.de>, <immomaxx.at> and, <immomaxx.org>. According to Complainant, it registered the disputed domain names <immomaxx.com> and <immomaxx.net> in 2002, but “the disputed domain names were accidentally lost at the time of renewal in June 2008. Both domain names were immediately after registered by the Respondent in July 2008.” (Complaint)
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. Although the Registrar’s verification does not include the creation date of the records of registration for the disputed domain names with the current Registrar, a whois.internic.net report shows the creation date for these records as July 22, 2008 for <immomaxx.com> and July 20, 2008 for <immomax.net>.
Respondent has not associated the disputed domain names with an active website. Complainant asserts that one of the disputed domain names is associated with an MX record, from which it infers that the disputed domain name may be used in an email address. Complainant has not provided any evidence of such use.
Complainant has provided evidence that Respondent has registered a substantial number of domain names that incorporate the well-known trademarks of third parties, including the marks of APPLE, EBAY, NORDEA BANK, SUZUKI, as well as names of well-known individuals, including Ariana-Grande. Complainant has provided evidence that Respondent has registered a number of domain names that incorporate the business names of German enterprises. Complainant has provided evidence that Respondent has registered several thousand domain names. Respondent has previously been the subject of a finding of abusive domain name registration and use that involved offering for sale a domain name incorporating the trademark of a third party. See Omega Pharma Innovation & Development NV v. Kyoung S Park, WIPO Case No. D2020-0849.
Complainant contacted Respondent by email dated July 6, 2020 regarding the possible purchase of the disputed domain name <immomaxx.com>. Respondent replied on July 6:
Thanks you for your email.
We do not sell. Please tell me your maximum budget.
Then we will consider.
“It’s hard to say as It’s for a startup.
Respondent replied on July 9:
Thanks you for your emails.
We consulted internally about your offer.
If you agree,
If you agree, it seems that we can send you about the transfer process.
In September 2020, Complainant transmitted a cease-and-desist and transfer demand to Respondent by email, to which Respondent did not reply.
Thereafter Complainant initiated this UDRP proceeding.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it owns rights (by way of license) in the trademark IMMOMAXX and that the disputed domain names are identical to that trademark.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) the disputed domain names were registered many years after registration of the subject trademark; (2) Respondent has not been known by the disputed domain names or any corresponding registered trademark; (3) Respondent has not been using or made preparations to use the disputed domain names in connection with a bona fide offering of goods or services; (4) passive holding of the disputed domain names does not establish rights or legitimate interests; (5) the disputed domain names incorporating directly the subject trademark reflect Respondent’s intention to create an association with Complainant and its trademark; (6) Respondent registered and used the disputed domain names for commercial gain by capitalizing on the reputation of Complainant for purposes of selling the disputed domain names, and; (7) Respondent failed to respond to a cease-and-desist letter from Complainant.
Complainant contends that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent registered the disputed domain names as part of a pattern of conduct of registering third-party trademarks for purposes of selling them for prices in excess of out-of-pocket costs; (2) Respondent registered the disputed domain names under the famous and popular “.com” and “.net” gTLD extensions, and; (3) passive holding of the disputed domain names does not prevent a finding of bad faith.
Complainant requests that the Panel direct the Registrar to transfer the disputed domain names to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. Express courier delivery of the Complaint was successfully completed. There is no evidence on the record of the proceeding of any difficulty in connection with email transmission. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark IMMOMAXX as the exclusive trademark licensee, including by registration at the German Patent and Trademark Office, and through use in commerce. See Factual Background, supra and section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the IMMOMAXX trademark.
The disputed domain names each directly and fully incorporate Complainant’s distinctive trademark, adding only the “.com” and “.net” gTLD extensions. From the standpoint of the Policy, this is sufficient to establish that the disputed domain names and the trademark are identical.
The Panel determines that Complainant has established rights in the trademark IMMOMAXX and that the disputed domain names each are identical to that trademark within the meaning of the Policy.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s passive holding of the disputed domain names in the circumstances here does not establish rights or legitimate interests in favor of Respondent. Respondent appears to be in the business of registering and warehousing domain names, including a substantial number of domain names incorporating the well-known trademarks of third parties (in addition to that of Complainant). There is nothing inherently wrongful in warehousing domain names, or in selling domain names. These practices may constitute a legitimate business enterprise. However, the warehousing of multiple domain names incorporating well-known third-party trademarks creates a presumption that the registrant, here Respondent, is doing so to take advantage of the rights of the trademark owners. That presumption could be rebutted by evidence of a legitimate purpose, but Respondent has made no suggestion of a legitimate purpose.
Respondent’s passive holding of the disputed domain names does not otherwise appear to constitute fair or other legitimate non-commercial use of the disputed domain names.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c) the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that a disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the 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 or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii)[the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct…”.
Respondent registered the disputed domain names in 2008, long after Complainant registered and was using its trademark in Germany. There is evidence that Respondent registered other domain names incorporating the identifiers of German enterprises. Given that the term “IMMOMAXX” does not have a meaning in the German language, but appears to the Panel instead to embody part of a German term associated with real estate, “immobilien”,2 which is associated with a variation on the English expression “max”, it is unlikely that Respondent selected the disputed domain names without knowledge of Complainant’s trademark. Respondent might have provided an explanation for its registration of the disputed domain names containing IMMOMAXX, but it has not done so.3
Although Complainant made the “first move” to purchase the disputed domain names from Respondent, the fact that Respondent appears to be in the business of warehousing domain names containing third-party trademarks strongly suggests that Respondent is prepared to wait for such first moves before offering to sell at prices substantially in excess of its out-of-pocket costs of registration and renewal. In this case, Respondent offered to sell one of the disputed domain names for EUR 8,000. The only apparent reason why one of the disputed domain names would command such a price is the value of the trademark incorporated in it, of which Respondent must have been aware. The Panel determines that Respondent registered the disputed domain names for purposes of selling them to Complainant or a third party at prices substantially in excess of its out-of-pocket expenses directly related to the disputed domain names.
As noted previously, Respondent has engaged in a pattern of registering the well-known trademarks of third parties in domain names. Here it has prevented Complainant from registering its trademark in the disputed domain names corresponding to its trademark.
The Panel determines that in the totality of the circumstances Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(i) and (ii) 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, <immomaxx.com> and <immomaxx.net>, be transferred to Complainant.
Frederick M. Abbott
Date: March 10, 2021
1 As per Power of Attorney dated October 30, 2020.
2 See, e.g., Cambridge Dictionary German-English translation https://dictionary.cambridge.org/us/dictionary/german-english/immobilien.
3 Complainant indicates in its Complaint that it had initially registered the disputed domain names in 2002, but accidentally failed to renew them, and that Respondent registered the disputed domain names shortly after Complainant’s non-renewal. Complainant did not provide concrete evidence of its initial 2002 registrations or the dates of lapse. While it is plausible that Respondent was monitoring domain name renewal processes and stepped into register Complainant's trademark in the disputed domain names after the lapses of registration, the Panel does not have sufficient evidence to draw a firm conclusion about that.