Veko Lightsystems International B.V. v. Goi Media
Claim Number: FA1304001492699
Complainant is Veko Lightsystems International B.V. (“Complainant”), represented by C.R. Rutte of Van Diepen Van der Kroef Advocaten (law firm), Netherlands. Respondent is Goi Media (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <veko.com>, registered with Megazone Corp. dba HOSTING.KR.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2013; the National Arbitration Forum received payment on April 3, 2013. The Complainant was submitted in both Korean and English.
On April 4, 2013, Megazone Corp. dba HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <veko.com> domain name is registered with Megazone Corp. dba HOSTING.KR and that Respondent is the current registrant of the names. Megazone Corp. dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp. dba HOSTING.KR registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 15, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of May 6, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@veko.com. Also on April 15, 2013, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. The WHOIS information identifies the registrant of the <veko.com> domain name as “Goi Media.”
ii. Respondent’s disputed domain name resolves to a website stating, “THIS PREMIUM DOMAIN NAME MAY BE LISTED FOR SALE, CLICK HERE TO INQUIRE.”
i. Respondent’s attempt to sell the disputed domain name to the generic public and to Complainant for $25,000 is evidence of bad faith registration and use.
ii. Respondent owns 1,450 domain names in addition to the domain name in dispute.
iii. If Respondent would have performed a simple search of the BOIP database, before registering the disputed domain name, it would have disclosed the existence of the VEKO trademark registration of October 31, 1997.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Netherlands company engaged in the lighting and related industries and particularly in switching systems for lighting, lighting systems, lighting installations, and installation and repair in relation to lighting.
2. Complainant is the owner of trademark registrations with the Benelux Office for Intellectual Property (“BOIP”) for the VEKO mark (e.g., Reg. No. 0703059, registered February 20, 2002). Complainant also owns trademark registrations with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) for the VEKO mark (Reg. No. 010913655, registered October 10, 2012).
3. The disputed domain name resolves to a website promoting lighting and other goods and services, is advertised for sale and was offered by Respondent to Complainant for sale for $25,000.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it is the owner of the VEKO mark, which is used for the following goods and services: switching systems for lighting, lighting, lighting systems, lighting installations, and installation and repair in relation to lighting. Complainant argues that it is the owner of trademark registrations with the BOIP for the VEKO mark (e.g., Reg. No. 0703059, registered February 20, 2002). See Complainant’s Annex 1. Complainant also owns trademark registrations with the OHIM for the VEKO mark (Reg. No. 010913655, registered October 10, 2012). See Complainant’s Annex 2. The Panel notes that although Respondent appears to reside in Korea, Policy ¶ 4(a)(i) and UDRP precedent do not require that Complainant registers its mark in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel concludes that Complainant’s registration of the VEKO mark with the BOIP and OHIM sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), established complainant’s rights in its mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the VEKO mark. Complainant argues that Respondent’s <veko.com> domain name is identical to Complainant’s VEKO mark, for it merely adds the gTLD “.com.” The Panel determines that Respondent’s addition of a gTLD to the disputed domain name does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Consequently, the Panel finds that Respondent’s <veko.com> domain name is identical to Complainant’s VEKO mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VEKO trademark and to use it in its domain name, without making any alteration to its spelling, thus giving the false impression that it is an official domain name of Complainant that will lead to an official website of Complainant;
(b) Respondent has then used the domain name to resolve to a website
promoting lighting and other goods and services, advertised it for sale and
offered it to Complainant for sale for $25,000;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant asserts that the WHOIS information identifies the registrant of the <veko.com> domain name as “Goi Media.” See Complainant’s Annex 5. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant contends that the disputed domain name resolves to a website stating, “THIS PREMIUM DOMAIN NAME MAY BE LISTED FOR SALE, CLICK HERE TO INQUIRE.” See Complainant’s Annex 6. Complainant argues that by clicking on the available hyperlink, one is directed to the URL <http://domainnamesales.com/domain/VEKO.com>, on which website it is stated, “VEKO.com may be available for purchase!,” and “Why build a brand when you can buy one?” See Complainant’s Annex 7. Complainant asserts that Respondent has also offered to sell the disputed domain name to Complainant for an excessive amount of $25,000. See Complainant’s Annex 8. Thus, the Panel determines that Respondent’s offer to sell the disputed domain on its resolving webpage is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s attempt to sell the disputed domain name to the generic public and to Complainant for $25,000 is evidence of bad faith registration and use. Complainant contends that Respondent’s disputed domain name resolves to a website stating, “THIS PREMIUM DOMAIN NAME MAY BE LISTED FOR SALE, CLICK HERE TO INQUIRE.” See Complainant’s Annex 6. Complainant argues that by clicking on the available hyperlink, one is directed to the URL <http://domainnamesales.com/domain/VEKO.com>, on which website it is stated, “VEKO.com may be available for purchase!,” and “Why build a brand when you can buy one?” See Complainant’s Annex 7. As the Panel finds that Respondent primarily intended to offer the disputed domain name for sale when it registered the disputed domain name, it also finds that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Secondly, Complainant claims that Respondent owns 1,450 domain names in addition to the domain name in dispute. Complainant asserts that Respondent has a prior history in registering domain names corresponding to the trademarks of others. See Complainant’s Annex 9. Thus, the Panel determines that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer evidences Respondent’s bad faith use and registration of the domain name under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Thirdly, Complainant asserts that if Respondent had performed a simple search of the BOIP database, before registering the disputed domain name, it would have disclosed the existence of the VEKO trademark registration of October 31, 1997. Although UDRP case precedent declines to find bad faith as a result of constructive knowledge, as shown by The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."), the Panel finds on the totality of the evidence that on the balance of probabilities, Respondent had actual knowledge of Complainant’s trademark at the time it registered the disputed domain name, giving rise to registration of the domain name in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the VEKO mark and in view of the conduct that Respondent engaged in when using it, including linking it to a website promoting lighting products, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <veko.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 20, 2013
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