WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Monada Biomichanikon Iatrikon Aerion Kritis Mobiak AE v. Beats

Case No. D2019-2606

1. The Parties

The Complainant is Monada Biomichanikon Iatrikon Aerion Kritis Mobiak AE, Greece, represented by Karpouzaki Panagiota, Greece.

The Respondent is Beats, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <mobiak.com> 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 October 24, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2019, 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 October 31, 2019, 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 November 1, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding 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 in English and Korean of the Complaint, and the proceedings commenced on November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2019.

The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on December 17, 2019. 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 is one of the leading manufacturers and suppliers of firefighting equipment and fire protection systems worldwide. The Complainant is also active in the field of industrial – medical gases and medical-home care equipment. The Complainant is selling its products to many countries including Republic of Korea where the Respondent is located.

The Complainant is the owner of the following, amongst others, trademarks:

- MOBIAK A. E. (combined with a device) in Greece (registration number D172396 registered on October 18, 2005);

- MOBIAK (combined with a device) with European Union Intellectual Property Office (“EUIPO”) (e.g., registration number 7534357 registered on December 3, 2009); in China (e.g., registration number 7310427 registered on August 14, 2010); and in some other jurisdictions.

The Complainant owns the domain name <mobiak.gr> since 2008.

The disputed domain name was registered on January 11, 2011. The disputed domain name resolved to a website which hosts a pay-per-click advertisement. The disputed domain name was offered for sale for up to USD 7,700. The offer was made to the Complainant through a broker on September 13, 2019.

5. Parties’ Contentions

A. Complainant

i) The Complainant has been using its company name incorporating MOBIAK since 1977. The Complainant owns trademark registrations for the mark MOBIAK A.E. (combined with a device) in Greece (registration number D172396 registered on October 18, 2005); for the mark MOBIAK (combined with a device) with EUIPO (e.g., registration number 7534357 registered on December 3, 2009), in China (e.g., registration number 7310427 registered on August 14, 2010) and in some other jurisdictions. The Complainant owns the domain name <mobiak.gr> since 2008. The disputed domain name is identical or confusingly similar to the Complainant’s mark.

ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.The Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s mark MOBIAK. The name of the Respondent does not include the disputed domain name. The Respondent has no trademark rights corresponding to the disputed domain name. The Respondent is not commonly known by the disputed domain name. There is no evidence of use in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website that tries to sell the disputed domain name. The Respondent profits by using the disputed domain name either by advertisements or by selling, renting, or transferring the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket expense directly related to the disputed domain name.

iii) The disputed domain name has been registered and is being used in bad faith. The Respondent registered the disputed domain name with the Complainant’s mark in mind. The Respondent registered the disputed domain name primarily for the purpose of preventing the Complainant from reflecting the mark in a corresponding domain name and for selling, renting, or transferring the disputed domain name to the Complainant or the Complainant’s competitors for valuable consideration in excess of the Respondent’s out-of-pocket expense directly related to the disputed domain name.

The disputed domain name resolved to a website which hosts a pay-per-click advertisement for profit. The disputed domain name was offered for sale for up to USD 7,700. The offer was made to the Complainant through its broker on September 13, 2019.

B. Respondent

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

6. Preliminary Issue: Language of Proceeding

The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. The Complainant has alleged that because the Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under the Rules, paragraph 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding.

The Complainant contends that: i) the disputed domain name resolves to a website in English where it is offered for sale which supports that the Respondent is familiar with the English language; and ii) the procedure in English language will not cause delay and expense to the Parties.

Pursuant to the Rules, paragraph 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of the Response and no objection to the Complainant’s request for the language of proceeding, the Panel decides that the proceeding should be in English. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”). See also SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400 (in determining the language of the proceeding, “account should be taken of the risk that a strict and unbending application of paragraph 11 may result in delay, and considerable and unnecessary expenses of translating documents.”).

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide “a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the respondent 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 domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant asserts rights in the mark MOBIAK combined with a device through its registrations of the mark with the multiple trademark agencies, including EUIPO (e.g., registration number 7534357 registered on December 3, 2009), in China (e.g., registration number 7310427 registered on August 14, 2010) and in some other jurisdictions. Registration of a mark with the multiple trademark agencies around the world, including the EUIPO, is sufficient to demonstrate rights in the mark per paragraph 4(a)(i) of the Policy. Therefore, the Panel finds the Complainant has demonstrated rights in the MOBIAK (combined with a device) mark per paragraph 4(a)(i) of the Policy.

The Panel notes that the disputed domain name <mobiak.com> is identical to the word portion of the Complainant’s MOBIAK mark as it adds the generic Top-Level Domain (“gTLD”) “.com” to the fully incorporated mark. The incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s mark. See Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000. The gTLD suffix “.com” in the disputed domain name is non-distinctive. See Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013.

As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy has been established.

B. Rights or Legitimate Interests

The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under the Policy 4(a)(ii), and then the burden shifts to the Respondent to show it does have rights or legitimate interests. See Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.The Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s mark MOBIAK. The name of the Respondent does not include the disputed domain name. The Respondent has no trademark rights corresponding to the disputed domain name. The Respondent is not commonly known by the disputed domain name. There is no evidence of use in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website that tries to sell the disputed domain name. The Respondent profits by using the disputed domain name either by advertisements or by selling, renting, or transferring the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket expense directly related to the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. 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 the 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 contends that the disputed domain name has been registered and is being used in bad faith: (i) the Respondent registered the disputed domain name with the Complainant’s mark in mind; (ii) the Respondent registered the disputed domain name primarily for the purpose of preventing the Complainant from reflecting the mark in a corresponding domain name; and (iii) the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or transferring the disputed domain name to the Complainant or the Complainant’s competitors for valuable consideration in excess of the Respondent’s out-of-pocket expense directly related to the disputed domain name. The disputed domain name resolved to a website which hosts a pay-per-click advertisement for profit. The disputed domain name was offered for sale for up to USD 7,700. The offer was made to the Complainant through Sedo on September 13, 2019.

Previous panels have found that the mere practice of registering a domain name for subsequent sale (even for profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner. The complainant should point to additional circumstances that demonstrate the existence of bad faith in the registration of the domain name. See section 3.1.1 of WIPO Overview 3.0. Among the circumstances that can indicate bad faith are whether the trademark is wholly incorporated in the domain name, the distinctiveness of the mark, a respondent’s failure to present a credible evidence-backed rationale for registering the domain name, among others.

The Panel notes that the disputed domain name entirely incorporates the Complainant’s trademark and there is no evidence of any rationale behind the registration of the disputed domain name. The Panel finds that the word portion of the Complainant’s mark is sufficiently distinctive. The Panel also notes that the Respondent’s broker reminded the Complainant of the offer of buying the disputed domain name for USD 3,800 via email of October 4, 2018 to the Complainant and it subsequently increased the price to USD 7,700 via email dated September 13, 2019 to the Complainant. This shows the Respondent’s intent to capitalize on the goodwill of the Complainant’s trademark to resell the disputed domain name back to the Complainant for a profit and constitutes the Respondent’s use of the disputed domain name in bad faith. See e.g., Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642.

As the conduct described above falls squarely within paragraph 4(b)(i) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mobiak.com> be transferred to the Complainant.

Ho-Hyun Nahm
Sole Panelist
Date: December 31, 2019