The Complainant is NRG Scandinavia A/S of Ballerup, Denmark, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is RexRotary Inc of New York, New York, United States of America ("US").
The disputed domain name <rexrotary.com> is registered with Inames Co., Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2014. The Complaint filed a Korean translation of the Complaint on May 19, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint.
Also on June 4, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. The Respondent did not submit a language of the proceeding request. The Complainant filed its request for English as the language of the proceeding along with its amended Complaint on June 9, 2014.
The Center verified that the amended 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, and the proceedings commenced on June 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 2, 2014.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 9, 2014. 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 Complainant was incorporated on June 30, 1959. It is a part of the Ricoh Group of companies and specializes in producing, marketing and selling printers and printer accessories under the Ricoh Brand. The Complainant has its REX-ROTARY trademark registrations in many countries. The Complainant, inter alia, owns trademark registration for the mark REX-ROTARY in stylization in the United Kingdom as follows:
|
Trademark |
REX-ROTARY (in stylization) |
|
Registration number |
UK00000840633 |
|
Filing date |
October 19, 1962 |
|
Date of Entry in register |
October 19, 1962 |
|
Publication date |
July 22, 1964 |
|
Class of goods |
16 |
(Annex 4 to Complaint.)
The disputed domain name was registered on October 3, 1995 to RexRotary Inc of the Republic of Korea. On the date of the Complaint filing, the registrant information changed to RexRotary Inc of New York, US.
(i) The disputed domain name is confusingly similar to the Complainant's registered trademark REX-ROTARY in which the Complainant has rights:
(a) the Complainant is the owner of trademark registration in the United Kingdom for the REX-ROTARY mark (Reg. No. UK00000840633, registered on October 19, 1962) and many other trademark registrations of the mark REX-ROTARY in various countries. Annex 4 to Complaint;
(b) the only dominant element of the disputed domain name is identical in all material respects to the Complainant's mark. Given the high level of distinctiveness of the Complainant's trademark, there is a high likelihood of confusion between the disputed domain name and the Complainant's mark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
(a) the Respondent is a sham company. There is no company registered with the name Rexrotary Inc in the Republic of Korea or in the state of New York. Annex 6 to Complaint;
(b) the Respondent Rexrotary Inc does not exist in corporate form, but is a veil for an individual who wishes to purport to have rights by way of company name in "rexrotary".
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent:
(a) the Respondent acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring it to the Complainant or any other party willing to pay a premium, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name;
(b) by an email of April 9, 2014 to the Complainant's legal representatives, an individual, "Jinsoo", purporting to be the "co-founder of Rexrotary Inc" requested that the Complainant pay a minimum of USD 25,000 for the disputed domain name;
(c) the Complainant submitted a screenshot of the disputed domain name for sale at a price of USD 42,500 as Annex 9.
The Respondent did not reply to the Complainant's contentions.
The Panel notes that the Registration Agreement is in Korean, thereby making the language of the proceeding Korean. The Complainant requested that the present proceeding be conducted in English. The Respondent did not submit any objection to the Complainant's request. Pursuant to the Rules, paragraph 11(a), the Panel determines that the language requirement has been satisfied through the Complainant's translated Complaint submission, and, absent a Response from the Respondent, determines that the proceeding shall be conducted in English.
The Complaint named RexRotary Inc of the Republic of Korea ("the prior registrant") as the respondent at the time of filing. The Registrar informed the Center that the registrant information changed from RexRotary Inc of the Republic of Korea to RexRotary Inc of New York, US, apparently within two hours of the Complaint filing before the Registrar could lock the disputed domain name. Following an invitation from the Center, the Complainant amended the Complaint naming RexRotary Inc of New York, US as the Respondent.
The Panel notes that the Complaint was received by the Center at 15:40 on May 13, 2014, Geneva, Switzerland time. According to paragraph 17 of the Complaint, a copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules had been sent or transmitted to the prior registrant by email. It means that on or before 15:40 on May 13, 2014, Geneva time when the Complaint was filed, a copy of the Complaint had been already transmitted by email to the prior registrant. The Registrar verified that the disputed domain name was transferred to the Respondent at 00:03 on May14, 2014, Seoul, Republic of Korea time (17:03 on May13, 2014, Geneva time). As such, the Panel notes that the prior registrant transferred the disputed domain name shortly after its receipt of a copy of the Complaint, i.e., within about one hour and twenty minutes.
In identifying the proper Respondent(s) in the present proceeding, the Panel notes the following:
(a) The prior registrant transferred the disputed domain name in about less than two (2) hours following its receipt of a copy of the Complaint.
(b) The name of the Respondent and the prior registrant are the same, "RexRotary Inc".
(c) According to the company name search reports submitted by the Complainant (Annex 6 to the Complaint), "RexRotary Inc" does not exist in the Republic of Korea or in the New York State, US. Therefore, the name of the Respondent as well as that of the prior registrant appears fictitious.
(d) In the absence of a response, this Panel finds it inconceivable that there can be any bona fide purchaser suddenly available to purchase the disputed domain name from the prior registrant under a normal arm's length transaction.
Given the circumstances above, in this Panel's view, the above facts clearly establish cyberflight by the prior registrant. The transfer of the disputed domain name, in the present case was made upon receipt of filing the Complaint, which is in violation of the Policy, paragraph 8(a).
Under paragraph 8(a) of the Policy, the registrant is expressly prohibited from transferring a disputed domain name during a proceeding. Cyberflight has been found in cases when registrant changes occurred after the complaint was filed but before the registrar's verification of contact information to the service provider. See CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/ SA c/o FP, WIPO Case No. D2008-0687; Rediff.com India Ltd. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0804; PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0916; Imperial Chemical Industries, PCL. v. Oxford University, WIPO Case No. D2001-0292. See also Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688 (finding the cyber flying occurs when the domain name is transferred during a pending proceeding and is in direct violation of the Policy paragraph 8 (a). Although there is no bright line rule regarding what constitutes a "pending proceeding", prior cases have found that process starts from the filing of the complaint rather than from the formal commencement of the proceedings); Canwest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/SA c/o FP, WIPO Case No. D2008-0687; LPG SYSTEMS v. Jerry / Mr. Jeff Yan, WIPO Case No. D2010-0387 (finding "in the circumstances, the transfer of the disputed domain name after the submission of the Complaint by the Complainant to the Center is found to be in violation of both paragraphs 8(a) and 8(b) of the Policy and to constitute cyberflight); BBC v. Data Art Corp./Stoneybrook, WIPO Case No. D2000-0683 (the panel stated that "To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover, such an interpretation would appear to permit, if not encourage the phenomenon of cyberflying, where a registrant of a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding") and again cited by the majority in Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056; L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585.
These circumstances lead this Panel to find that while the prior registrant and the Respondent might be two distinct legal entities, they appear to be connected. Therefore, the Panel finds the conduct of one can be attributed to the other for the purposes of this proceeding, and will treat the conduct of the previous Registrant as constituting that of the Respondent of the disputed domain name.
In light of the above findings on the identity and attributes of the Respondent, the Panel finds that the Respondent deliberately tried to disrupt this proceeding by transferring the disputed domain name into the name of another registrant, after having notice of the original Complaint, and during a pending administrative proceeding within the meaning of paragraphs 8(a) and 8(b) of the Policy. The Panel finds that the Respondent did so in order to frustrate the Complainant by potentially increasing cost, time and inconvenience.
Paragraph 15(a) of the Rules instructs this 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 a 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 has been registered and is being used in bad faith.
In view of the Respondent's failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws 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 Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint).
The Panel finds that the Complainant has provided sufficient evidence showing that it is the owner of the REX-ROTARY trademark registration which predates the Respondent's registration of the disputed domain name. The Complainant contends that it is the owner of trademark registration in the United Kingdom for the REX-ROTARY mark (Reg. No. UK00000840633, registered on October 19, 1962) and many other trademark registrations of the mark REX-ROTARY in various countries. Annex 4 to Complaint.
The Panel finds that the Complainant's registration of the REX-ROTARY in stylization mark in the United Kingdom sufficiently establishes its rights in the mark pursuant to Policy, paragraph 4(a)(i).
The Complainant contends that the only dominant element of the disputed domain name is identical in all material respects to the Complainant's mark. It further contends that given the high level of distinctiveness of the Complainant's trademark, there is a high likelihood of confusion between the disputed domain name and the Complainant's mark. The Panel notes that the disputed domain name reproduces the Complainant's trademark in its entirety omitting the hyphen. The Panel also notes that the stylization of the Complainant's mark is irrelevant to the finding of confusing similarity to the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark especially in that it incorporates the Complainant's mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 finding "the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark." The Panel holds that the omission of the hyphen of the Complainant's mark in its disputed domain name does not distinguish the disputed domain name from the Complainant's mark under Policy, paragraph 4(a)(i).
The Panel also finds that the ".com" is a descriptive suffix commonly used as a generic Top-Level Domain ("gTLD"), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant's mark. Therefore, the addition of the gTLD suffix ".com" in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding "the use of the added descriptive word does not change the overall impression of the domain name."
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's mark.
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden of production shifts to the Respondent to demonstrate it does have rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Complainant contends that the Respondent is a sham company by submitting company search reports that there is no company registered with the name Rexrotary Inc in the Republic of Korea within which the address of the former registrant of the disputed domain name was or in the states of New York where the address of the Respondent is. The Complainant submits that the Respondent Rexrotary Inc does not exist in corporate form, but is a veil for an individual who wishes to purport to have rights by way of company name in "rexrotary". In light of the cyberflight, the Panel agrees with the Complainant's submission. As such, the Respondent is not commonly known by the name "RexRotary Inc."
Under the circumstance that the Respondent did not reply and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4(a) has been established. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
The panel in Wal-Mart Stores Inc. v. James Cann and Save Family Business Panel, WIPO Case No. D2000-0830, held that a transfer of the domain name during a proceeding, even if the registrar remained the same, if contrary to paragraph 8(a) of the Policy, is a bad faith transfer. In that proceeding, even though the transferor and the transferee of the domain name were considered to be different persons, the panel found that where (a) "there is substantial reason to doubt that the second Respondent [the transferee] took the disputed domain name as part of a bona fide transaction" and (b) "there is no meaningful evidence on the record … that the [transferee] has a legitimate interest in the disputed domain name", this was sufficient to establish registration and use in bad faith. See L'Oreal S.A. v. MUNHYUNJA, supra.
In this proceeding there is substantial reason to doubt the transfer occurred as part of a bona fide transaction. The Panel finds that the Respondent took it in order to disrupt this proceeding and to frustrate the Complainant. Also in this proceeding, there is no meaningful evidence that the Respondent has a legitimate interest in the disputed domain name. The Panel concludes that this is sufficient to establish registration and use in bad faith.
The Complainant contends that the Respondent acquired the disputed domain name for the sole purpose of selling, renting, or otherwise transferring it to the Complainant or any other party willing to pay a premium, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. The Respondent demanded that the Complainant pay a minimum of USD 25,000 for the disputed domain name and offers the disputed domain name for sale for USD 42,500.
The Panel agrees that the Respondent's offer to sell the disputed domain name at the above price in excess of its documented out-of-pocket costs directly related to the disputed domain name demonstrates the Respondent's bad faith acquisition and use of the disputed domain name. See DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520 (finding it is reasonable to believe that respondent was aware of the fact that the domain name registrations incorporate complainant's well-known DHL mark and that he did in fact, if not register himself, at least acquire the domain names, in bad faith and primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain names). See also Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275.
There is no meaningful evidence that the Respondent has any rights or legitimate interests in the disputed domain name. Further, in light of the change in the registrant information after the Complaint filing, the Panel finds that the Respondent attempted to disrupt or frustrate this proceeding. The Panel concludes that this is sufficient to establish registration and use in bad faith.
In this respect, the Panel is satisfied that the circumstances surrounding the Respondent's conduct are indicative of registration and use of the disputed domain name in bad faith according to paragraph 4(b)(i) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rexrotary.com> be transferred to the Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: July 23, 2014