The Complainant is Nsense Group of Copenhagen, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is noorinet of Gyeongju-si, Republic of Korea (“Korea”), represented by Andrew Choi, Korea.
The disputed domain name <nsense.com> is registered with HANGANG Systems Inc. dba Doregi.com. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2011, 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 November 4, 2011, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On November 8, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent requested Korean to be the language of the proceeding on November 9, 2011.
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 in both English and Korean, and the proceedings commenced on November 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 30, 2011.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on December 8, 2011. 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.
On December 21, 2011, the Panel issued the Administrative Panel Procedural Order No.1 (the “Panel Order”) informing the parties of the Panel’s decision that the language of the proceedings in this case is English. In the Panel Order, the Panel also asked the Complainant to submit English translations of all of the relevant parts of the exhibits and to submit evidence of trademark rights by December 30, 2011 and asked the Respondent to submit a reply in English by January 10, 2012.
Subsequently, upon the Complainant’s request to extend the deadline to submit English translations of all of the relevant parts of the exhibits and evidence of trademark right, the deadlines were adjusted as follows:
- Deadline for the submission of the Complainant’s supplemental filing: January 5, 2012
- Deadline for the submission of the Respondent’s reply: January 15, 2012
- Deadline for the Decision: January 26, 2012
On January 3, 2012, the Complainant filed its submission pursuant to the Panel Order. On January 16, 2012, the Respondent submitted its reply in English.
The Complainant is a Danish limited liability company which is engaged in the business of penetration testing, vulnerability assessment, security consulting and training. The Complainant was founded in 2003. The Complainant has used the trade name Nsense in connection with the advertising and promotion of its services since 2003.
The Respondent registered the disputed domain name on July 13, 2004.
The Complainant contends that:
- The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
Although the Respondent did not submit a formal Response within the due date for Response, it submitted a reply to the Complainant’s supplemental filing within the due date set in the Panel Order.
The Respondent contends that:
- The trademark application for a design mark N-SENSE with Korean characters filed by the Respondent’s business partner was published on March 2, 2001 in Korea, and thus the name “Nsense” has not been used solely by the Complainant. A third party, the Respondent’s business partner has run a shopping mall using the domain name <nsense.co.kr> since 2004. The Google search result hits for each of the disputed domain name and the third party’s domain name <nsense.co.kr> are much more than those of the Complainant’s relevant domain names <nsense.dk> and <nsense.net>.
- As such, the Complainant’s allegation on the reputation of the Complainant is incorrect. Also, the website resolved by the disputed domain name does not have any links to the Complainant’s websites although it is linked to banking and trading websites.
- The Complainant firstly showed interests in purchasing the disputed domain name and agreed to pay by a credit card and suddenly filed the Complaint. This is bad faith of the Complainant.
The Panel notes that the Complaint was filed in English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and the Complainant submitted a request for English to be the language of the administrative proceedings because English is the language which the Complainant uses on all the websites which the disputed domain name <nsense.com> is used for. The Complainant refers to Suspa Holding GmbH v. Noorinet, WIPO Case No. D2011-0975 and VKR Holding A/S v. Noorinet, WIPO Case No. D2011-1360 filed against the same Respondent in which English was accepted as the language of the proceedings. The Respondent contended that Korean should be the language of the proceeding as it alleged that it could not command English well.
Given the circumstances above and the fact that the Complainant is based in Denmark and the Respondent is based in Korea, English does not appear to be the mother language of either party. It is of the Panel’s view that English appears to be the fairest language for proceeding with this case. Therefore, the Panel has decided that English is the language of the proceeding.
The Complainant appeared to try to establish common law or unregistered rights on the mark NSENSE by simply submitting evidence of the commencement of use of the mark and by citing a relevant provision of the Danish Trademark Act. However, a conclusory allegation of common law or unregistered rights (even if undisputed) does not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate is required. As such, it was ordered by the Panel Order that the Complainant submit evidence of common law or unregistered rights in the mark NSENSE to show that the mark had become a distinctive identifier associated with the Complainant or its goods or services especially prior to the registration date of the disputed domain name <nsense.com>.
The consensus view of the panels on the question of what needs to be shown for the complainant to successfully assert common law or unregistered trademark rights according to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7 is that:
“[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
Here, the only evidence presented is the bald claim that the mark has been used since 2003, and in response to the Panel Order, the Complainant submitted additional evidence showing that Complainant used the term “Nsense” on its homepage to identify its services, the press releases from 2010 and onwards, a print from the Danish company Betware’s website where they mentioned cooperation with “Nsense” referring to the Nsense services, and another press release from 2005 about the Complainant and its Nsense services. In the absence of more relevant evidence e.g., amount of sales under the trademark, the nature and extent of advertising, and/or consumer surveys and media recognition, etc., the Panels finds that the evidence of common law or unregistered rights is inadequate to prove any enforceable rights in the mark in this case. (Refer to Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083).
Although it is not necessary to resolve the remaining factual disputes on the other elements, the Panel further notes that even if such rights were to be established at present, there is no evidence to lead the Panel into belief that the Respondent registered the disputed domain name in awareness of the existence of the Complainant’s mark NSENSE, and thus it would be hard for the Panel to recognize the Complainant’s allegation that the Respondent registered the disputed domain name in bad faith when it registered the disputed domain name on July 13, 2004.
For the foregoing reasons, the Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a) of the Policy. Therefore, the Complaint is denied.
Ho-Hyun Nahm
Sole Panelist
Dated: January 25, 2012