The Complainant is Chooser S.A. of Jodoigne, Belgium, represented by Philip & Partners, Belgium.
The Respondent is Jinsoo Yoon, TradeMark Management of Seoul, Republic of Korea.
The disputed domain name <chooser.com> (“Disputed Domain Name”) is registered with Inames Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2015. On May 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 12, 2015, 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 and confirming that the language of the Registration Agreement for the Disputed Domain Name was Korean. On May 12, 2015, the Center sent a notice to the parties in both English and Korean, inviting the Complainant to submit evidence of an agreement between the Parties that the language of proceeding should be English; or, to submit a Complaint translated into Korean; or, to request that English should be the language of the proceeding. On May 13, 2015 the Complainant filed a request that the language of proceeding be English. On May 13, 2015, the Respondent filed a request that the language of proceeding be Korean.
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 proceeding commenced on May 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2015. The Respondent did not submit any response prior to the June 7, 2015 deadline.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 12, 2015. 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 July 1, 2015, the Respondent submitted a Response to the Center. The Panel finds this filing untimely and will not consider it in rendering this Decision pursuant to paragraph 10 of the Rules.
On July 17, 2015, after having reviewed the case before it, the Panel noted that the Complainant and the Respondent did not provide sufficient evidence regarding the time of the registration of the Disputed Domain Name. Specifically, the Panel noted that (1) the Complainant claimed that it registered the Disputed Domain Name sometime in 1998, but provided no evidence; and (2) the Respondent did not clearly indicate who registered the Disputed Domain Name in 1998. Accordingly, on July 20, 2015 the Panel issued a Panel Order directing the Complainant to provide evidence that it had registered the Disputed Domain Name in 1998, and directing the Respondent to submit its comments within 5 days from receipt of the Complainant’s submission. The due date for the Panel to render its Decision was extended until July 31, 2015.
On July 23, 2015, the Complainant submitted its response and acknowledged that it lacked “formal evidence of a registration made by Complainant’s founder in 1998”. The Respondent submitted documentation from the WhoIs database claiming to have registered the Disputed Domain Name on September 18, 1998, together with the “Certificate of Domain Name Registration” issued by the Registrar. In reply, the Complainant argued that the “Certificate of Domain Name Registration” submitted by the Respondent is “probably a false document”.
Upon reviewing the Parties’ submissions, the Panel notes that the Complainant still has not provided any evidence that it registered the Disputed Domain Name in 1998. Moreover, the Panel notes that the WhoIs.kr.com confirms the information that is being claimed by the Respondent and refutes the Complainant’s claim that the documents are false.
The Disputed Domain Name is <chooser.com>.
The Complainant is Chooser, S.A., a Belgium company incorporated in 1999. The Complainant is in the business of developing online promotion of woodworking activities. The Complainant alleges common law trademark rights in the CHOOSER mark because the mark corresponds to its corporate name and is used to provide services online. The Complainant contends that it “can prove” an extended use of the CHOOSER mark in relation with an offer of services to Belgian clients since 1999.
The Complainant asserts that it registered the <chooser.com> Domain Name sometime in 1998. However, beginning 2010, the Complainant’s IT service provider “omitted to renew the registration of the ‘chooser.com’ domain name. The Complainant noticed the mistake of its IT supplier too late, since the Respondent had already registered the forgotten domain name …” The Complainant provides evidence supporting their prior registration of the Disputed Domain Name from November 2007 until November 2009. The Complainant provides no evidence supporting their general allegation about the IT service provider’s alleged mistake (e.g., no supporting affidavit, no timeline when the mistake was first discovered and when they first sought to remedy the problem, et cetera).
According to the publicly available WhoIs database and confirmation by the Registrar, the Disputed Domain Name <chooser.com> has been registered since September 18, 1998.
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant for the following reasons:
First, the Complainant contends that the Disputed Domain Name is identical or at least confusingly similar to the Complainant’s mark CHOOSER. Specifically, the Complainant contends that it has common law rights in the mark CHOOSER because: (i) the Complainant was incorporated in 1999 under the corporate name Chooser, and (ii) the mark corresponds to the Complainant’s corporate name and is used to provide the Complainant’s services online. The Complainant asserts that it has been “providing services under the ‘chooser’ name for more than 15 years” and “can prove an extended use of the ‘chooser’ sign in relation to an offer of services to Belgium clients, since 1999.” The Complainant contends that the Disputed Domain Name is identical to its CHOOSER mark except for the “.com” suffix.
Second, the Complainant contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. Specifically, the Complainant contends: (i) the “Respondent never made any use of the ‘chooser.com’ domain name which only forward Internet users to a page of the domainpower.com website where the sale of the ‘chooser.com’ domain name is proposed for 50,000 USD or more”; (ii) the “Respondent is not commonly known under the ‘chooser’ name”; and (iii) “from several UDRP decisions involving the Respondent, this latter seems to develop a business around cybersquatting.”
Third, the Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. Specifically, the Complainant contends that “the disputed domain name was never used by the Respondent which is only trying to sell it for 50,000 USD.” The Complainant contends that a public offer for sale has been considered by UDRP panels as consistent with a cybersquatting business – especially when the sale offering is at a price which is much higher than the cost of the domain name.
The Respondent did not timely reply to the Complainant’s contentions in the Complaint. The Respondent did, however, timely respond to the Panel Order requesting for additional information regarding who registered the Disputed Domain Name in 1998. In response, the Respondent submitted documentation issued by the Registrar that purports to show that the Respondent registered the Disputed Domain Name on September 18, 1998.
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed Domain Name 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
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. Here, 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 the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;
2) The Disputed Domain Name is comprised entirely of an English word – “chooser” and the content of the website is in English;
3) There does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceeding and it is likely that delay to the proceeding would result should the Complainant be required to re-submit the Complaint in Korean.
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.
Because of the Panel’s findings in relation to the bad faith ground below, it is not necessary for the Panel to make findings on this ground.
Because of the Panel’s findings in relation to the bad faith ground below, it is not necessary for the Panel to make findings on this ground.
Based on the available evidence, the Panel finds that the Respondent registered the Disputed Domain Name on September 18, 1998. The earliest date of effect of the Complainant’s mark, as argued by the Complainant, is October 26, 1999 (date of incorporation). The Complainant acknowledges that it has no evidence that it registered the Disputed Domain Name in 1998.
From this, it is evident that the Disputed Domain Name was registered by the Respondent before any trademark rights which the Complainant might establish.
Whether bad faith can be found in these circumstances is addressed in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon a trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. […]
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found …”
Thus, for a finding of bad faith under paragraph 4(a)(iii) of the Policy, there must be some evidence that the Respondent was aware of the Complainant and sought to take advantage of its mark.
Here, it appears from the evidence before the Panel that the Respondent cannot have sought to take advantage of the Complainant’s mark. When the Respondent registered the Disputed Domain Name in 1998, the Complainant had no mark. Neither was there any evidence that, at that time, the Respondent knew or should have known that the Complainant was intending to use or register any potential mark.
Moreover, the Panel notes the following:
First, the Complainant alleged, without evidence, that it registered the Disputed Domain Name sometime in 1998. Yet, according to the WhoIs database, the Disputed Domain Name has been registered to the Respondent since September 18, 1998 – which was more than one year before the Complainant was even incorporated.
Second, even if the evidence established that the Complainant had common law rights created in the mark CHOOSER sometime in 1999, there is no evidence whatsoever that the Respondent know about the Complainant before September 18, 1998. The Complainant failed to explain how it is that a woodworking company using the name “chooser”, which is a generic term, has an entitlement to prevent others from using this term for a domain name related to a website in connection to its descriptive meaning.
Third, even assuming that the Complainant had common law rights in the mark, there is no evidence that the Respondent should have known of the Complainant prior to the Respondent’s registration of the Disputed Domain Name, and that the Respondent was targeting the Complainant. Indeed, it is recognized that there is generally no obligation for domain name registrants to conduct searches for rights in a name in other countries in the world.
Fourth, despite having the burden of proof and being given a second opportunity to submit evidence that it owned the Disputed Domain Name in 1998, the Complainant could not – even acknowledging that it lacked “formal evidence of a registration made by Complainant’s founder in 1998”. The Complainant then proceeded to baselessly attack the veracity of the Respondent’s submission.
For these reasons, the Panel finds on balance that the Complainant has not established that the Disputed Domain Name was registered in bad faith. It follows that the Complainant has not established its case under paragraph 4(a)(iii) of the Policy. It also follows that the Complainant cannot succeed, because it cannot establish all three elements under paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Date: July 31, 2015