The Complainants are Simbec-Orion Group Limited of Merthyr Tydjil, United Kingdom of Great Britain and Northern Ireland (“UK”), Simbec Research Limited, Slough, UK and Orion Clinical Services Limited of Merthyr Tydjil, UK, internally represented.
The Respondent is James Park of Anyang, Republic of Korea.
The disputed domain names <simbec-orion.com> and <simbecorion.com> are registered with Korea Server Hosting Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 11, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
On July 11, 2014, the Center notified the Parties in both English and Korean regarding the language of the proceeding. On July 12, 2014, the Respondent requested Korean to be the language of the proceeding and on July 14, 2014, the Complainants requested English to be the language of the proceeding.
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, and the proceeding commenced on July 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2014.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on August 26, 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.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel no later than September 9, 2014. However, due to exceptional circumstances experienced by the Panel, the Panel extended the deadline to September 23, 2014.
The Complainant Simbec Research Limited is a specialist contract medical research organization focusing on early stage clinical development. Simbec Research Limited was founded in 1976 and is a leading name in Phase I clinical trials. Simbec Research Limited owns trademark registrations for marks that consist of or incorporate SIMBEC in the UK and Spain.
The Complainant Orion Clinical Services Limited is a specialist contract research organization and is known as a global leader in Phase II and III clinical development research. Orion Clinical Services Limited was founded in 1997 and has bases in the UK, France, Germany, Italy, United States of America and Australia.
The Complainant Simbec-Orion Group Limited is a full-service international contract research organization, created through the merger of Simbec Research Limited and Orion Clinical Services. The intended merger and the creation of Simbec-Orion Group Limited was announced through a press release on June 23, 2014.
The Respondent appears to be a Korean individual with a residence in the Republic of Korea.
The Complainants contend that the disputed domain names are identical or confusingly similar to the marks in which the Complainants have rights. More specifically, the Complainant Simbec Research Limited asserts that it has traded using the name SIMBEC since 1974 and that it has trademark registrations for marks consisting of or incorporating SIMBEC. The Complainant Orion Clinical Services Limited asserts that it has acquired substantial goodwill and reputation in the name ORION since it started using the name in 1997.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names, and confirm that they have not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainants contend that the disputed domain names were registered and used in bad faith. The Complainants note that the Respondent registered the disputed domain names on June 25, 2014, two days after the announcement of the intended merger between Simbec Research Limited and Orion Clinical Services Limited and the creation of Simbec-Orion Group Limited. The Respondent thereafter contacted an employee of Orion Clinical Services Limited via email with an offer to transfer the disputed domain names for an amount well in excess of the out of pocket costs. The Complainants therefore assert that the Respondent’s registration and use of the disputed domain names were made in bad faith, the sole purpose of which was to sell the domain names to the Complainants for valuable consideration in excess of its out-of-pocket-costs.
The Respondent did not reply to the Complainants’ contentions.
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 both parties have had an opportunity to argue their position on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a formal Response.
The Respondent has requested the proceeding to be in Korean, yet has demonstrated through his email communications with the Complainant Orion Clinical Services Limited that he is actually quite proficient in the English language. In fact, email records show that the Respondent directly reached out to Orion Clinical Services Limited and engaged in extended and detailed negotiations in English for the sale of the disputed domain names. The Complainants are located in the UK and are not familiar with Korean. In view of the fact that Respondent has not even submitted a response in this proceeding, it appears more reasonable to render this decision in English, the preferred language of the Complainants.
Under these circumstances, the Panel finds it proper and fair to render this decision in English in this case.
The Complainant Simbec Research Limited owns trademark registrations for marks that consist of or incorporate SIMBEC in the UK and Spain. As the disputed domain names include and begin with “simbec”, they are confusingly similar to the Complainant’s trademark. Additionally, given that the disputed domain names consist of the exact two terms in the same order as the name of the new company Simbec-Orion Group Limited, an inference can be made that there would be confusion should the Respondent be allowed to maintain registrations to the disputed domain names. Therefore, though the Complainants have not asserted a registered trademark or service mark for ORION in the proceeding, it is not necessary for a finding of similarity in this case.
For the reasons mentioned above, the Panel finds that the first element has been established.
On the basis of the present record, the Panel finds that the Complainants have made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating his rights or legitimate interests in the disputed domain names. However, the Respondent in this case has chosen to file no response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element has been established.
There is more than enough evidence to support a finding of bad faith in this case. For one, in the absence of opportunistic bad faith, it would be highly unlikely for the Respondent to have registered domain names consisting of these two terms in this exact combination just two days after the announcement of the creation of Simbec-Orion Group Limited. Rather, it seems quite obvious that the Respondent obtained registrations for the disputed domain names with the intended purpose of selling them to the Complainants for a profit. In fact, in negotiations with the Complainant Orion Clinical Services Limited, the Respondent initially demanded 4,000 USD for the disputed domain names, which is well in excess of any out of pocket costs the Respondent may have reasonably incurred. The Respondent went so far as to harass the Complainants and even threatened to raise the demand to 10,000 USD. Further, the Respondent has a history of bad faith registration and use of domain names that incorporate trademarks of newly merged companies. See Coyle Hamilton Ltd., Willis Ltd. v. James Park, WIPO Case No. D2004-0747; Sopra Group and Steria v. JSP, WIPO Case No. D2014-0673.
For the reasons given above, the Panel finds that this third and final element has been established.
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 names <simbec-orion.com> and <simbecorion.com> be transferred to the Complainant Simbec-Orion Group Limited.
Ik-Hyun Seo
Sole Panelist
Dated: September 23, 2014