WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Furukawa Electric Latam S.A. v. Sohoplus
Case No. D2021-2157
1. The Parties
The Complainant is Furukawa Electric Latam S.A., Brazil, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Sohoplus, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <sohoplus.com> is registered with Whois Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, 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 July 26, 2021, 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 29, 2021, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on 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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 17, 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
The Complainant in this administrative proceeding is Furukawa Electric Latam S.A., a Brazilian closed joint-stock company that is part of the global corporate group Furukawa, founded 120 years ago in Japan. It has transformed into a global corporation that is engaged in diversified activities in metals, light metals, telecommunications, automotive systems, and energy, among others, forming an international network of industries in different countries in Asia, North America, Europe, Africa, and Latin America. There are over 100 affiliated companies and modern development laboratories, prepared to generate new technologies and products.
The Complainant has provided evidence that it registered its earliest SOHOPLUS trademark on December 12, 2017 (Brazil Registration No. 829640398) and registered its earliest domain name <sohoplus.com.br> on July 14, 2008. The Complainant also registered the domain name <sohoplus.net.br> on September 25, 2009.
The Complainant requested English to be the language of proceedings on July 29, 2021.
The Respondent did not submit any formal response.
The disputed domain name <sohoplus.com> was registered by the Respondent on October 11, 2005. The disputed domain name resolves to a website offering the disputed domain name for sale.
5. Parties’ Contentions
1. The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing the following reasons:
(a) The Complainant could not find any professional translators that would be able to translate its complaint and other supporting documents into Korean in time and the translation would cause substantial costs, imposing a burden on the Complainant and delaying the proceedings.
(b) South Korea – where the Respondent lives – has a considerable number of English speakers. Thus, it is likely that the Respondent can proceed with this administrative proceeding in English.
2. The Complainant contends that the disputed domain name should be transferred to the Complainant for the following reasons.
(a) The disputed domain name is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark SOHOPLUS in its entirety, rendering it confusingly similar to the Complainant’s trademark. The Complainant markets several products for electrical and communications support, which are all identified under the trademark SOHOPLUS, and through this consistent and prominent use of the trademark, has acquired significant goodwill and reputation linked to such mark. Also, the addition of the specific generic Top-Level Domain (“gTLD”) such as “.com” does not impact a finding of similarity because it is considered to be standard registration requirements and therefore, can be disregarded.
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any rights or legitimate interests in the disputed domain name because the Complainant does not have any connection to the Respondent, and has not authorized the Respondent to use its trademark SOHOPLUS, and thus there is no legitimate reason for the Respondent to choose the Complainant’s well-known trademark to host a website, unless its intention was precisely to cause confusion with the Complainant’s business. Also, the Respondent is not commonly known under the name “sohoplus”, nor is using the disputed domain name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to attract customers to its own website which is a monetized parking page, and is trying to sell the disputed domain name to any third party for an excessive price, which means again that the Respondent’s actions are clearly commercial.
(c) The disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent registered the disputed domain name long after the Complainant’s domain names were in use. Further, the Complainant claims that its two domain names, <sohoplus.com.br> and <sohoplus.net.br>, were both registered on November 29, 2000, while the disputed domain name was created by the Respondent on October 10, 2005 (however, the Panel takes note that these dates are not supported by the evidence in the Complaint – the dates as found in evidence are included in the Factual Background above). It is clear that the Respondent was aware of the Complainant’s existence and reputation when it registered the disputed domain name. Also, the disputed domain name resolves to a parking page containing only a notice indicating that the disputed domain name is available for purchase, which is not a use with regards to any genuine activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having considered the circumstances of the case including the Parties’ language request as summarized above, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments;
3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in Brazil while the Respondent is located in the Republic of Korea. Therefore, English would be a fair language for both Parties; and
4) The disputed domain name itself is comprised of Roman letters, and it is not a Korean word.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean (had any been received); (2) consider any relevant materials both in Korean and English; and (3) issue a decision in English.
B. Identical or Confusingly Similar
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the SOHOPLUS trademark, and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of the gTLD “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademarks.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The disputed domain name resolved to a parking page which only includes the offer to sell the disputed domain name for USD 20,000. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. The Respondent has not come forward with any relevant evidence of rights or legitimate interests in the disputed domain name.
While certain facts in the record may support a finding that the Respondent has no rights or legitimate interests in the disputed domain name, noting the finding below, regarding a lack of bad faith registration, the Panel need not make a determination under the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i) by registering the disputed domain name in order to sell the disputed domain name to the public or to the Complainant in an amount in excess of the Respondent’s costs related to the disputed domain name.
As stated previously, the Respondent did not file any written response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel notes from the evidence that the Respondent has been offering to sell the disputed domain name through the website to which the disputed domain name resolved for a price that is significantly more than the actual cost to register the disputed domain name.
However, the Panel also finds that the Complainant registered the trademark SOHOPLUS in 2017, which is 12 years later than the date the Respondent registered the disputed domain name in 2005. Although the Complainant argues that it is a global company with a long history, and that it has been using its trademark as identifiers of its products ever since said trademarks were registered, and, further, that it owns and is using many domain names which incorporate the trademark SOHOPLUS in its entirety, the evidence shows that the Complainant registered its earliest trademark in 2017 and registered its earliest domain name in 2008, both of which are much later than the registration date of the disputed domain name. The Complainant has not provided any evidence of use of the trademark SOHOPLUS online or otherwise prior to the registration of the disputed domain name.
While certain facts in the record may support a finding that the Respondent engaged in bad faith use, they cannot overcome the fact that the registration date of the disputed domain name predates the Complainant’s registration date of its trademarks and domain names, and so the Panel need not make a determination on whether the use of the disputed domain name is in bad faith or not. (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877).
In conclusion, this Panel duly notes the discrepancies between the statements of fact in the Complaint and the supporting evidence, including, for example, the trademark registration dates and domain name registration dates. This Panel also notes the lack of clear evidence showing that the Respondent, apparently located in the Republic of Korea, targeted the Complainant. Moreover, this Panel must take due notice of WIPO Overview 3.0, section 3.8, and previous UDRP decisions which have applied said section, namely that where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent. This is a well-established position and though it is subject to limited exceptions (i.e., where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights), the facts of this case do not support the application of such an exception.
Accordingly, the Panel finds that the Complainant has not established that the disputed domain name was registered in bad faith. The Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
Date: October 19, 2021