WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MPDV Mikrolab GmbH v. Dongjin Kim

Case No. D2008-0065

1. The Parties

The Complainant is MPDV Mikrolab GmbH, Mosbach, Germany, represented by Ullrich & Naumann, Germany.

The Respondent is Dongjin Kim, Incheon, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <mpdv.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2008. On January 17, 2008, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On January 18, 2008, Korea Information Certificate Authority Inc. d/b/a DomainCa.com 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 notified the Complainant on January 24, 2008 that the default language of the proceedings is Korean. On January 25, the Complainant submitted its request for English to govern the proceedings. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. The Response due date was extended until March 9, 2008. The Response was filed with the Center on March 9, 2008.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on April 14, 2008. 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. The decision due date was extended until June 17, 2008.

4. Factual Background

The Complainant is a German company that was founded in 1977 and now has more than 150 employees in various offices in Germany, France, Switzerland, Singapore and the United States of America. The Complainant is a leading international system provider that specializes in recording and processing data in the areas of production, human resources and quality management.

The Respondent appears to be an individual, and registered the disputed domain name on June 23, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the marks in which the Complainant has rights. More specifically, the Complainant asserted that it owns various trademark registrations for the term MPDV.

The Complainant also contends that the Respondent has no rights or legitimate interest in the disputed domain name. More specifically, the disputed domain name simply displays minimal content stating that the site is under preparation, and such use cannot constitute bona fide and legitimate use. Further, there is nothing to suggest or support the proposition that the Respondent is commonly known by the domain name in question.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. More specifically, Complainant argues that the Respondent must have known of the Complainant’s rights to MPDV when the domain name was registered, was certainly put on notice of such rights when the Respondent was initially contacted in 2003.

B. Respondent

The Respondent argues that he registered the disputed domain name before the Complainant obtained the asserted trademark registrations, and thus the Complainant is not in a position to assert those rights in the subject proceedings.

The Respondent argues that he intended to start a business in relation to “motion picture digital video” (hence “mpdv”) when he registered the disputed domain name, and that he is still in preparations. He also notes that the disputed domain name appears in a Google search, asserting that this demonstrates that he has built up goodwill in the disputed domain name and has a right to it.

The Respondent denies any bad faith in connection with his registration and use of the disputed domain name. As mentioned above, he argues that his intentions were legitimate in connection with a planned business relating to “motion picture digital video”. The Respondent further denies having known of the Complainant or its rights in MPDV.

6. Discussion and Findings

Preliminary Issue: Language of the Proceedings

Paragraph 11(a) of the Rules provides that the language of the proceedings 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 regard, the default language is Korean, as was confirmed by the registrar. However, the initial communication between the parties was in English (including the first communication from the Respondent to the Complainant), with no indication of any problems with the English language by either party. To ensure fairness, both parties were allowed to make submissions in the language of their choice in connection with the subject proceedings, and all submissions were fully considered in the respective languages by the Panel. In light of the nationality of the parties involved, English appears to be the neutral language, affording no particular benefit to either party.

For the above reasons, all submissions have been reviewed and considered as filed in the language of choice by the parties, and the Panel finds that it would be most appropriate and fair to render this decision in English.

A. Identical or Confusingly Similar

The Complainant has submitted evidence of owning trademark registrations for various forms of “MPDV”, namely a registration in Germany, a Community Trademark Registration, an International Registration and a Swiss Trademark Registration. In this regard, it is without question that the disputed domain name is essentially identical to the Complainant’s trademarks.

The Respondent has argued that he registered his domain name (on June 23, 2000) before the Complainant obtained any of the asserted trademark registrations. First, even if this were true, it would not necessarily affect the analysis of this first element. While a trademark registration is useful to easily establish that a trademark right exists for the purposes of this first element, it is not necessarily required. Nor does the registration date of the asserted trademark need to precede the registration date of the disputed domain name. On a related point, the Panel notes that the Complainant was founded in 1977, and appears to have been conducting business and using the subject mark continuously since then.

Second, and turning specifically to the point raised by the Respondent, the Panel notes that Respondent has misunderstood the details of the German registration asserted by the Complainant. The German registration was registered on May 25, 1994 (long before the registration date of the disputed domain name).

For the reasons given above, the Panel finds that the Complainant has established this element and concludes that the subject domain name is identical or confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In reply, the Respondent argues that the subject domain name was intended to be used in connection with a planned business relating to “motion picture digital video”, and further argues that his page appears in the first result page in a Google search for the term “mpdv”.

With regard to the Respondent’s explanation as to his intended use of the disputed domain name, the Panel finds the explanation and lack of supporting evidence insufficient to establish a right or legitimate interest. While it is true that the Respondent makes reference to “motion picture digital video” among the minimal content displayed on the website, it is still nothing more than an “under construction” message, although the Respondent registered the domain name almost eight years ago. There was no evidence or even mention in the Respondent’s reply as to any preparations made toward his stated plan since he first registered it. Under these circumstances, such an “under construction” message, without more, fails to demonstrate a right or legitimate interest in the disputed domain name.

For similar reasons, the fact that this “under construction” page appears in an Internet search is meaningless. No actual goods or services are being offered.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the subject domain name.

C. Registered and Used in Bad Faith

Under the facts of this case, the Panel finds that there is sufficient evidence of bad faith registration and use. First, the Panel notes that the disputed domain name was registered over eight years ago, yet there is nothing but an “under construction” page being displayed. The Respondent has failed to explain this, and certainly has not provided any evidence that demonstrates that his claim to start a business relating to “motion picture digital video” to be genuine.

Second, similar bad faith behavior in the past can be relevant. In this regard, the Panel notes that the Respondent was the losing party in Volkswagen AG v. KIM, Dongjin, WIPO Case No. D2003-0582 (involving <vwag.com> and <vwbank.com>). In that case, the same Respondent argued that <vwag.com> was intended to mean “virtual world architecture guide”, and <vwbank.com> was intended to mean “virtual world bank”, all in connection with allegedly planned businesses. The panel in the Volkswagen case rightly dismissed such arguments, and eventually found bad faith to exist, concluding that the respondent (the same individual in the subject dispute) has a tendency to register and sell domain names that incorporate others’ trademarks.

Likewise, and in view of all the above, the Panel finds that the final element has been established.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mpdv.com> be transferred to the Complainant.

Ik-Hyun Seo
Sole Panelist

Dated: June 17, 2008