WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DENSO-Holding GmbH & Co. and DEKOTEC GmbH v. John Um/ Gwangil International Ltd.

Case No. D2013-0938

1. The Parties

The Complainants are DENSO-Holding GmbH &Co. and DEKOTEC GmbH, both of Leverkusen, Germany represented by Maxton Langmaack & Partner, Germany.

The Respondent is John Um / Gwangil International Ltd., both of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <dekotec.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2013. On May 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 28, 2013, 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.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2013.

The Center appointed John Swinson as the sole panelist in this matter on June 28, 2013. 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 DENSO-Holding GmbH & Co. is the corporate center of the DENSO Group, which comprises a series of companies and participations in Germany and other European countries. DEKOTEC GmbH, is a wholly owned subsidiary of DENSO-Holding GmbH & Co. These companies develop, produce and distribute products for corrosion protection and road and track construction (these companies will be referred to collectively as the “Complainant”).

DENSO-Holding GmbH & Co. owns the following trade mark registrations for DEKOTEC:

- Community trade mark No. 002 165 579 (registered July 8, 2003); and

- International trade mark No. 978 105 (registered April 4, 2008).

(together, the “Trade Mark”).

DEKOTEC GmbH has approval from DENSO-Holding GmbH & Co. to use the Trade Mark.

The Respondent is John Um / Gwangil International Ltd, a business partner of the Complainant.

The Disputed Domain Name was registered on April 5, 2009. There is no website at the Disputed Domain Name presently (an error message is displayed). There are some statements by the Respondent in correspondence between the parties which indicate that the Respondent may have purchased the Disputed Domain Name after April 5, 2009. The Panel notes that if the Respondent did in fact purchase the Disputed Domain Name at a later date, this will have no impact on the its findings below.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Background

The Respondent has been (and still is) acting as a sales agent for the Complainant. There is no written contract between the parties. Negotiation between the parties concerning mutual business activities in Republic of Korea started in 2009 and was recorded in a letter of intent dated December 3, 2010 (this letter was annexed to the Complaint).

The Respondent also registered the domain names <dekotec.kr> and <dekotec.co.kr>. At the Complainant’s request, these domain names were transferred to the Complainant. The Complainant (through its legal representative) similarly requested the transfer of the Disputed Domain Name on March 19, 2013. The Respondent replied by email on April 5, 2013, refusing to transfer the Disputed Domain Name for free and offering to transfer it for USD 2,000. The Complainant (through its legal representative) replied by email on April 18, 2013, advising that it did not wish to purchase the Disputed Domain Name, and if it was not transferred then these proceedings would be commenced. The Respondent replied by email on April 24, 2013, advising that it plans to use the Disputed Domain Name “for another application”, that it would require compensation if the Disputed Domain Name was transferred and that it purchased the Disputed Domain Name for “more than Euro400.00”.

Identical or Confusingly Similar

The Disputed Domain Name is identical to the Trade Mark.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not commonly known by the Disputed Domain Name;

- the Complainant has not permitted the Respondent to use the Trade Mark (except for the trade of original “dekotec” products in the Republic of Korea) or to register or use any domain name incorporating the Trade Mark;

- a legitimate interest does not arise from the business cooperation between the Complainant and the Respondent. Although a distributor can be making a bona fide offering of goods or services, this would require the Respondent to actually use the Disputed Domain Name for the distribution of the Complainant’s products; and

- the Disputed Domain Name is not being used. (The Respondent has informed the Complainant that it “plans to use this for other application. but it will not have any relationship with dekotec company”.)

Registered and Used in Bad Faith

The Disputed Domain Name has been registered and is being used in bad faith for the following reasons:

- it was registered primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant or to a competitor of the Complainant. It was registered in 2009 when the Complainant and the Respondent were in negotiations, therefore, the Respondent would have known of the Complainant and the Trade Mark at the time of registration;

- the Respondent offered the Disputed Domain Name for sale for more than the price it would have paid for registration; and

- the Respondent is preventing the Complainant from reflecting its Trade Mark in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Matters

Multiple Complainants

The Panel accepts that DENSO-Holding GmbH & Co. and DEKOTEC GmbH have common legal interests in the Trade Mark, as the owner, and as an authorized user of the Trade Mark, respectively. As such, the Panel permits both parties to be joint Complainants in this dispute, but for the purposes of the remedy requested, the Panel will refer to DENSO-Holding GmbH & Co. as the party requesting transfer of the Disputed Domain Name.

Failure to Respond

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Complainant asserts that it owns the Trade Mark in a number of jurisdictions (including the Republic of Korea), and provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Mark.

The Disputed Domain Name is identical to the Trade Mark. The “.com” at the end of the Disputed Domain Name can be excluded in assessing confusing similarity under the Policy and is thus ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel accepts that the Respondent is not commonly known by the Disputed Domain Name and the Complainant has not expressly permitted the Respondent to register or use any domain name incorporating the Trade Mark.

The question here is whether before any notice to the Respondent of the subject matter of the dispute, the Respondent was making bona fide use of, or demonstrable preparations to use, the Disputed Domain Name in connection with an offering of goods or services (paragraph 4(c)(i)) of the Policy).

The test for bone fide in this context was outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The “minimum” requirements are:

- the respondent must actually be offering the goods of the complainant;

- the respondent must use the website to sell only the trade marked goods of the complainant;

- the website of the respondent must accurately disclose the respondent’s relationship with the trade mark owner; and

- the respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.

Applying these “minimum” requirements here:

- The Respondent was (and remains) a business partner of the Complainant. The arrangement between the parties began in 2009. The Panel assumes that the Respondent is still “offering the goods of the Complainant”.

- The Respondent does not use the website at the Disputed Domain Name to “sell only the trademarked goods”. There is no website at the Disputed Domain Name (an error message is displayed).

- The Respondent does not disclose its relationship with the Complainant anywhere on the website associated with the Dispute Domain Name (as there is no website at the Disputed Domain Name).

- In light of the Respondent’s other registrations of <dekotec.kr> and <dekotec.co.kr> it is possible that the Respondent has attempted to “corner the market”. However, due to the Panel’s findings in respect of the other “minimum” requirements, it does not need to reach a conclusion on this point.

Additionally, the Respondent has expressed an intention to use the Disputed Domain Name for purposes not associated with the Complainant’s goods.

The Respondent fails to satisfy (at least) the second and third requirements to demonstrate bona fide. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name is not being actively used and it does not resolve to any website (an error message is displayed). Therefore, the question is whether the passive holding of the Disputed Domain Name can be considered registration and use in bad faith, taking into account all the circumstances of the present case.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel stated:

“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”

This has been followed by UDRP panels in many subsequent cases (see, for example, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; and Atlas Copco Aktiebolag v. MKC Supply Inc, WIPO Case No. D2011-1844).

Due to the relationship between the parties prior to the registration of the Disputed Domain Name, the Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name, which wholly incorporates the Complainant’s trade mark, was aware that the Complainant was the owner of the Trade Mark. Here, in the absence of any evidence to the contrary from the Respondent, it is reasonable for the Panel to infer that the Respondent sought to make use of the reputation of the Complainant (at some point) and registered the Disputed Domain Name in bad faith.

The Respondent refused the Complainant’s request that it transfer the Disputed Domain Name and has offered to sell it to the Complainant for USD 2,000. In the Respondent’s email to the Complainant of April 24, 2013, the Respondent claims that it purchased the Disputed Domain Name for more than EUR 400. However, as the Respondent has not filed a Response, the Panel has not seen any evidence to support this claim.

Out-of-pocket costs in relation to a domain name include the costs of obtaining, registering, and maintaining the domain name. This issue of "excessive" out-of-pocket costs is considered on a case-by-case basis. In the Panel’s experience, USD 2,000 would exceed the Respondent’s out-of-pocket costs.

The Panel finds that the Respondent’s offer to sell the Disputed Domain Name for an amount in excess of its out-of-pocket costs is evidence of registration and use of the Disputed Domain Name in bad faith.

The Respondent’s statement in its email of April 24, 2013 that it plans to use the Disputed Domain Name “for another application” further indicates bad faith in this Panel’s view. The Panel considers that this type of use would mislead users into thinking the Respondent’s other application was some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent’s activities were approved or endorsed by the Complainant. This potential use of the Disputed Domain Name by the Respondent would also be likely to constitute passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s trade mark rights (see e.g. Audi AG v. Hans Wolf, WIPO Case No. 2001-0148; and ACCOR Societe Anonyme à Directoire et Conseil de Surveillance v. Tigertail Partners, WIPO Case No. 2002-0625).

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

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 Name <dekotec.com> be transferred to the Complainant DENSO-Holding GmbH & Co.

John Swinson
Sole Panelist
Date: July 12, 2013