WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sulon Technologies Inc. v. Yang Kyung Won
Case No. D2015-1529
1. The Parties
The Complainant is Sulon Technologies Inc. of Markham, Ontario, Canada, represented by Bhole IP Law, Canada.
The Respondent is Yang Kyung Won of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <sulon.com> ("Disputed Domain Name") is registered with Megazone Corp., dba HOSTING.KR (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 28, 2015, 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 31, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On September 1, 2015, the Complainant requested for English to be the language of the proceeding. On the same day, 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 of the Complaint, and the proceeding commenced on September 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on September 25, 2015.
The Center appointed Andrew J. Park as the sole panelist in this matter on October 13, 2015. 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, Sulon Technologies Inc., was incorporated on March 21, 2012 in the province of Ontario, Canada. The Complainant is a technology company that sells computer platforms and wearable technology associated with virtual reality and augmented reality under the tradename SULON. The Complainant acquired statutory trademark rights in the name SULON on June 8, 2015 based on European trademark registration no. 013727474, and since 2012 has owned and operated the domain name <sulontechnologies.com> and invested substantial resources in marketing and branding the mark SULON.
According to the WhoIs database, the Disputed Domain Name <sulon.com> was registered on December 28, 2014, to the Respondent, Yang Kyung Won of Seoul, Republic of Korea. The Respondent has not responded to the Complaint.
5. Parties' Contentions
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant because:
1) the Disputed Domain Name is identical and confusingly similar to the Complainant's registered trademark SULON. Specifically, the Complainant contends that it has acquired statutory trademark rights in the name SULON based on European trademark registration no. 013727474, as well as common law rights to the name beginning in 2012 based on its substantial marketing and branding of the mark SULON, use of the mark SULON as a tradename (e.g., "Sulon Technologies Inc.", and use of the mark SULON as a domain name (<sulontechnologies.com>;
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the SULON mark. The Respondent is not currently using or commonly known under, never has used or been commonly known under, and has no bona fide intent to use or be commonly known under the name "SULON". Since December 28, 2014 until about June 15, 2015, the Respondent was using the Disputed Domain Name only to host a parking page with a banner offering the sale of <sulon.com>. The Complainant offered to purchase the Disputed Domain Name on or about June 9, 2015, and the Respondent requested USD 88,900 for the sale of the Disputed Domain Name. Negotiations stopped on June 15, 2015. On about the same day, the Respondent changed the website from a parking service page to a page which now displays automobiles, which the Complainant contends is misleading; and
3) the Disputed Domain Name was registered and is being used in bad faith. Specifically, the Complainant contends that the SULON brand and trademark are well-known and had acquired distinctiveness as shown by the Complainant's global activities, publications, and disclosures, which the Respondent must have been aware of. In January 2014, the Complainant was featured in numerous television appearances and it commenced a world-wide campaign for pre-orders of its product in March 2014. The Complainant had over 40,000 unique visitors to its website per month leading up to the end of 2014. Thus, the Complainant contends that when the Respondent registered the Disputed Domain Name, even a preliminary Google search of the name would have alerted him to the Complainant's existence and rights to the trademark. Further, the Complainant contends that the Respondent's offer to sell the Disputed Domain Name for USD 88,900 is an exorbitant amount and demonstrates bad faith. Finally, the Complainant contends that the Respondent is a well-known cyber squatter and has engaged in a pattern of registering the trademarks of third parties in order to prevent them from registering corresponding domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark 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 Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Language of the Proceedings
The Registration Agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center made a preliminary determination to accept the Complaint filed in English while noting that it would accept a Response filed in either Korean or English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 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 expenses if the Complainant is required to translate the Complaint into Korean;
2) Previous UDRP complaints involving the Respondent have been conducted in English and the respondent was able to actively participate. See., e.g., Mr. Sven Beichler v. Yang Kyung Won, WIPO Case No. D2011-0535 (complaint and response filed in English).
3) There has been pre-communications between the Complainant and the Respondent limited to negotiations for the sale of the Disputed Domain Name. All such email communications, through a third-party agency, have been conducted in English.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.
B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established common law trademark rights to SULON based on its longstanding use of the name in the computer platforms and wearable technology industry. Since the Complainant was founded in 2012, the Complainant demonstrated that it has used the name SULON as a dominant portion of its domain name <sulontechnologies.com>, a dominant portion of its trade name "Sulon Technologies Inc.", and invested significantly in its marketing and branding of the mark SULON. Moreover, the Panel recognizes that the Complainant has statutory rights in the mark SULON since at least June 8, 2015, when the mark was registered (European trademark registration no. 013727474).
The Disputed Domain Name is identical to the Complainant's trademark SULON.
The addition of a Top-Level Domain such as ".com" after a domain name is technically required. Thus, it is well established that such element may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. 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 trademark.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) 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 his rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark. There is nothing in the record to suggest that the Respondent has been commonly known by the Disputed Domain Name. The Panel's view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the Disputed Domain Name and the Complainant's trademark, which is not descriptive or generic, in order to profit by selling the Disputed Domain Name (offered to sell for USD 88,900). The Panel finds that this conduct is evidence of cybersquatting and does not provide a right or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. See, e.g., American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592.
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or been commonly known under, or has a bona fide intent to use or be commonly known under the name "SULON". Indeed, the evidence suggest otherwise. From December 28, 2014 until about June 15, 2015, the Respondent was only using the Disputed Domain Name to host a parking page with a banner offering the sale of <sulon.com>. Such use appears to have been bait and switch to divert Internet customers to its webpage in order to sell the Disputed Domain Name. This clearly is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Indeed, the evidence shows that the Respondent only changed the website from a parking page to a page that now displays automobiles (website redirects users to "www.urecar.com"), once their negotiations with the Complainant ended on or about June 15, 2015.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) 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 conduct is sufficient to support a finding of bad faith:
"(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or 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 reasonably finds that since the Complainant's marks are widely known, especially in the relevant technology community, and arbitrary, it is very unlikely that the Respondent, at the time of registration or purchase of the Disputed Domain Name, was not aware that it was infringing the Complainant's trademark.
Bad faith can be inferred based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto (particularly in view of the Complainant's use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the Disputed Domain Name without having knowledge of the Complainant.
The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the Disputed Domain Name and the Complainant's trademark, in order to profit through selling the Disputed Domain Name. Moreover, the Panel finds that the Respondent's use of the Disputed Domain Name amounts to a "bait and switch" strategy in order to draw in Internet users to access the Complainant's website.
In addition, it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name to the relevant trademark owner for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent's actions satisfy the "intent to sell" requirement of paragraph 4(b)(i) of the Policy. These actions include, for example, the Respondent offering to sell the Disputed Domain Name to the Complainant for USD 88,900, and also advertising the Disputed Domain Name for sale on its website.
The conduct described above falls squarely within paragraph 4(b)(i) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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, <sulon.com>, be transferred to the Complainant.
Andrew J. Park
Date: October 27, 2015