Complainant is Manufacturas Muñoz S.A. Colombia of La Estrella, Antioquia, Colombia, represented by Contexto Intelectual, Colombia.
Respondent is Choi Sungyeon of Seoul, Republic of Korea, represented by Dongsuh Law Offices, Republic of Korea.
The disputed domain name <muma.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2010. On March 1, 2010, 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 Disputed Domain Name. On March 2, 2010, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. 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”).
On March 4, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Respondent submitted a request that Korean be the language of the proceeding on March 4, 2010, and Complainant submitted a request that English be the language of the proceeding on March 5, 2010. On March 9, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on March 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2010. The due date for Response was extended to April 3, 2010 on Respondent's request. The Response was filed with the Center on April 3, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 12, 2010. 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.
Complainant is a Colombian furniture manufacturer and listed owner of the following registered trademarks in Colombia:
a. MUMA, Registration No. 389609 for services of commercial establishments related to import, export, distributorships and commercialization featuring furniture and similar goods;
b. MUMA, Registration No. 389610 for furniture in any material;
c. MUMA, Registration No. 389611 for furniture in any material; and
d. MUMA, Registration No. 389612 for services of research and industrial design especially for furniture and related goods.
Complainant filed applications to register the above referenced trademarks on March 31, 2009. The Disputed Domain Name was registered February 11, 2000, and is currently being advertised for sale. Complainant and Respondent exchanged correspondence at various times before and after the filing of the Complaint regarding a potential sale of the Disputed Domain Name to Complainant. Respondent's asking price for the Disputed Domain Name appears to have ranged from USD 5,000 to USD 25,000.
As to the first required element of the Policy, Complainant relies on its registered MUMA trademarks. As to the second required element, Complainant states that Respondent has no registered trademark, similar or identical to MUMA, and that Respondent's corporate purpose does not contemplate the production or commercialization of furniture, unlike Complainant's corporate purpose. Thus, Complainant concludes that Respondent has no rights or legitimate
interests in respect of the trade name MUMA or of the Disputed Domain Name. Rather, Complainant concludes that Respondent's only interest is to sell the Disputed Domain Name for an extremely high amount.
As to bad faith, Complainant states that it offered to purchase the Disputed Domain Name on a number of occasions, and Respondent stated that the domain's values was in excess of USD 20,000. Complainant states that on January 15, 2010 it contacted Respondent regarding the Disputed Domain Name and Respondent, replied that the value of this domain name was USD 35,000. Complainant asserts that Respondent's actions indicate that Respondent registered the Disputed Domain Name with the only aim of selling, renting or otherwise assigning the domain name to Complainant, who is the lawful owner of the MUMA trademark, or to one of Complainant's competitors, in excess of the normal prices for a domain name.
Respondent states that Complainant's request should be denied because Complainant failed to prove each of the three requirements for bringing a successful UDRP action, and thus failed to meet its burden of proof. As to the similarity of Complainant's trademark and the Disputed Domain Name, Respondent claims that the word “muma” means one of the goddesses of Celtic Polytheism as well as some other defined related meanings and is therefore a “generic” term available for all to use. Respondent further asserts that even though Complainant may have trademark rights in Colombia, it does not have registrations for same in any other countries. According to Respondent, the mere Colombian registration alone cannot be the basis for preventing a third party in another country from using the mark as a domain name. Complainant registered its MUMA mark in Colombia in 2009, while Respondent has owned the Disputed Domain Name since 2003. Thus, Respondent concludes there is no way for it to have known of or copied Complainant's trademark.
Respondent claims it registered the Disputed Domain Name for its business, and therefore, it has a right and legitimate interest in the same. Respondent is involved in the computer hardware installation, software development, maintenance, and repair business, and is currently using the domain name <systempia.com> for its business website. In 2003, Respondent bought the Disputed Domain Name from a third party through an auction with the plan of using it in connection with its business. Respondent did not have any immediate use for the Disputed Domain Name and, since it was easy to pronounce this name and easy to remember, Respondent advertised it for sale on its website. Respondent believes that the foregoing constitutes a right or legitimate interest in the Disputed Domain Name per the Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.
Respondent claims it did not purchase the Disputed Domain Name in bad faith and that Complainant cannot prove bad faith because it cannot show that Respondent knew of Complainant's MUMA trademark or that Respondent used this mark in connection with the same or similar line of business as Complainant. As to the lack of bad faith, Respondent notes the following:
1. Typically a person who resides in the Republic of Korea (“Korea”) is not familiar with the country Colombia. Even if one is indeed familiar with the country, it is almost impossible for a lay person to know of a mark registered only in Colombia.
2. Respondent attempted to confirm Complainant's mark registration in Colombia but it had a hard time to even find the Colombian Patent and Trademark Office's website.
3. Respondent cannot be found to have known of Complainant's mark because Complainant's mark is not used, registered, or well-known worldwide (or at least in Korea).
4. The Complainant's mark is not known at all in Korea. To see how known the Complainant and its mark are in Korea, Respondent searched for the Complainant using Google and the three most used search engines in Korea (Naver, Daum, and Yahoo Korea), but could not find anything of relevance. Thus, Respondent contends it could not have known of the name through the Internet.
5. Respondent learned that the Complainant's mark MUMA was not used at all until December of 2007. According to “www.web.archive.org”, a website that provides information about the history of a given website, the Complainant's website “www.manufacturasmunoz.com” became substantially ready for use around August of 2004 and the mark MUMA was not introduced at the website until December of 2007. Also, the Complainant's mark MUMA was not registered in Colombia until 2009. In contrast, Respondent obtained the Disputed Domain Name registration in 2003. Thus, it is not possible to find that Respondent had Complainant (and its mark) in mind when acquiring this domain name since it could not even have known of the existence of the Complainant and its mark.
Respondent did not intend to sell the Disputed Domain Name to Complainant or its competitors. Although it is true that Respondent advertised the sale of the Disputed Domain Name on its website and Complainant offered to buy it, Respondent did not know that the offeror was Complainant and therefore did not target Complainant to sell the Disputed Domain Name.
Respondent states it is not interfering with Complainant's business, and that
Complainant could have obtained registration of the domain name <muma.co.co> (Colombia) but did not do so. Rather, according to Respondent, Complainant is attempting to take away someone else's domain which is not specific to Complainant's business territory. Respondent further notes that the domain name <muma.eu> is for sale.
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. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on (1) Respondent's emails in English to Complainant; (2) the English language content of Respondent's website at the Disputed Domain Name; and (3) Respondent's arguments in response to the Complaint written in English, it does not appear Respondent has any difficulty comprehending and communicating in English. If an entity conducts activities in English, it is difficult for that entity to object if someone complains about such activities in English. Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012. Furthermore, the Panel is mindful of the fact that a decision in Korean would not be readily comprehensible by Complainant and would therefore likely require it to expend resources to translate the same. 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.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel concludes that the Disputed Domain Name is confusingly similar to Complainant's MUMA marks for purposes of paragraph 4(a)(i) of the Policy. Complainant has established rights in the MUMA marks, which are registered with the Colombian Patent and Trademark Office. Further, the Disputed Domain Name consists of the MUMA mark in its entirety. The addition of the gTLD “.com” is not significant in determining whether the Disputed Domain Names are identical or confusingly similar to the mark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834. Accordingly, the Panel is satisfied that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in respect of the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
There is nothing in the record to suggest that Complainant has authorized Respondent to register or use the MUMA trademark or any domain name reflecting that trademark. Nothing in the record suggests that Respondent has ever been commonly known by the Disputed Domain Name. Nor is there any evidence that since acquiring the Disputed Domain Name in 2000 Respondent has made any demonstrable preparation to use the domain name prior to notice of this dispute, and Respondent practically concedes this in its response. Respondent has no active web presence now and is merely parking the Disputed Domain Name with the intent to sell this domain name. In this Panel's view, this fails to create rights or legitimate interests in a domain name. Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Accordingly, Respondent's use of the Disputed Domain Name falls outside the scope of paragraph 4(c)(i), (ii) and (iii) of the Policy.
In the Panel's view, this combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has rights or legitimate interests in respect of the Disputed Domain Name. In this case, Respondent has not asserted any rights to or legitimate interests in the Disputed Domain Name and has presented no persuasive evidence in opposition to Complainant's assertions in this regard. In the absence of such evidence, the Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that Complainant, pursuant to paragraph 4(a)(ii) of the Policy, has shown the second element of its claim.
The Panel has considered Respondent's arguments, in particular Respondent's citation to Rollerblade, Inc., supra, for the proposition that Respondent's purchase of the Disputed Domain Name for potential use in connection with Respondent's business constitutes a right and/or legitimate interest in the Disputed Domain Name. However, in the Rollerblade, Inc. dispute, the respondent registered the domain name <rollerblading.com> and operated a web site at that address relating to the sport of in-line skating. In the instant case, Respondent has never operated a website that resolved to the Disputed Domain Name (other than a website that merely advertises the Disputed Domain Name for sale). Thus, Rollerblade Inc. is not on point and therefore not persuasive.
The Panel also considered Respondent's argument regarding genericness of the word “muma”. As other UDPR panels have determined, “if a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant's rights in that word, then it has a legitimate interest.” See Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Allocation Network GmBH v. Steve Gregory, WIPO Case No. D2000-0016; Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005; and Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744). However, in this case, there is no indication that Respondent is currently using the term “muma” in a generic or any other sense to describe its business, and there is no evidence that it ever did do so. Thus, Respondent's genericness argument is not well taken.
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
In the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel noted that the Policy, paragraph 4(a)(iii) contains the conjunction “and” rather than “or” and refers to both the past tense (“has been registered”) and the present tense (“is being used”). At paragraph 7.6 of its decision, the Telstra panel noted “[t]he use of both tenses draws attention to the fact that, in determining whether there is bad faith on the part of the Respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter.” Thus, the requirement in paragraph 4(a)(iii) that the domain name has been registered and is being used in bad faith will be satisfied only if the complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the respondent is continuing to act in bad faith. As noted in Shirmax Retail, Ltd./Detaillants Shirmax Lt'ee v. CES Marketing Group, Inc., AF-0104, “registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose.”
While the Panel finds the amount at which Respondent is offering to sell the Disputed Domain Name somewhat suspicious and disconcerting, because the Disputed Domain Name was registered and acquired nearly six years before Complainant filed for and obtained trademark rights in MUMA, this Panel does not accept the proposition that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to one of its competitors, or to disrupt Complainant's business, or to attract Internet users to Respondent's website, or to sell the Disputed Domain Name to Complainant in excess of Respondent's out-of-pocket costs for the purchase of the Disputed Domain Name. This fact and the absence of evidence that, at the time it acquired the Disputed Domain Name, Respondent was aware of Complainant's existence lead the Panel to the conclusion that its registration and use of the Disputed Domain Name in 2003 was not in bad faith. And while this Panel finds Respondent's asking price for the Disputed Domain Name to be somewhat high, there is no evidence to suggest that Respondent did not pay the same amount itself in originally acquiring the Disputed Domain Name.
In sum, there is no evidence that Respondent has any bad faith intent when acquiring the Disputed Domain Name. Accordingly, this Panel finds that Complainant has failed to establish the requisite third element of its case under the Policy. See Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413.
For all the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Dated: April 26, 2010