The Complainant is Abigo Medical AB of Askim, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Otovent Inc of Daegu, Republic of Korea, self-represented.
The disputed domain name <otovent.com> is registered with Inames Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2019. On January 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2019, 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.
On February 4, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 5, 2019, the Complainant requested for English to be the language of the proceeding. On February 8, 2019, the Respondent requested for Korean 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 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. The Response was filed with the Center on March 12, 2019.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 19, 2019. 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, Abigo Medical AB, is a Swedish pharmaceutical company that owns, develops, produces and markets pharmaceutical and medical device products. The Company was established in 1989 and has an international orientation with distribution of products in some 60 countries through its own sales, organizations and partners. The Complainant has several subsidiaries including ABIGO Pharma A/S, ABIGO Medical AS and Sylak AB. The Complainant is the holder of several intellectual property rights related to their products and business, including trademarks, patents and design rights.
The Complainant owns a large number of trademark registrations for OTOVENT, with the earliest registration date in 1990.
|
Registration No. |
Country |
Trademark |
Class |
Registration Date |
|
VR 1991 06120 |
Denmark |
OTOVENT |
10 |
September 20, 1991 |
|
TMA423279 |
Canada |
OTOVENT |
1 |
February 18, 1994 |
|
10825123 |
European Union |
OTOVENT |
10 |
September 19, 2012 |
The disputed domain name <otovent.com> was registered with INAMES Co., Ltd on January 11, 2017.
The Complainant sent a cease and desist letter to the Respondent but did not receive any reply.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <otovent.com> is identical and confusingly similar to the Complainant’s trademarks in which the Complainant has rights. The OTOVENT trademark is a distinctive trademark that the Complainant puts great effort in protecting against infringements and abuse, to ensure that the trademark continues to serve as a reliable indicator of source and quality. The disputed domain name <otovent.com> includes the entirety of the Complainant’s OTOVENT mark, with the addition of “.com”, the generic Top-Level Domain (“gTLD”), which is viewed as a standard registration requirement and may be disregarded when assessing whether a domain name is identical or confusingly similar to the trademark under the first element confusing similarity test.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent does not have any rights to the OTOVENT trademark, nor is the Respondent a licensee of the Complainant. The Complainant has not given the Respondent any authorization to register their OTOVENT mark as a domain name. The Respondent does not operate any business or other organization under the Complainant’s trademark and there is no evidence that the Respondent is commonly known by the disputed domain name.
The disputed domain name does not resolve to any substantive website and has only been used as a link farm with links related to the same/similar products that the Complainant provides under their registered name OTOVENT. The website also displays a message “for sale” which proves that the Respondent does not have any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. In addition, it is obvious that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the intention is to sell the disputed domain name or to realize commercial gain from consumers searching for the OTOVENT trademark.
The Respondent changed the name of the registrant of the disputed domain name from Jinsoo Yoon to Otovent INC after it received the Complainant’s cease and desist letter. This indicates that the Respondent attempted to make it appear like a legitimate business entity.
3) the disputed domain name was registered and is being used in bad faith. The Complainant, founded in 1989, holds a large portfolio of registered rights to the OTOVENT trademark and searches on Google clearly show the Complainant’s substantial and widespread use of the OTOVENT trademark. The Respondent must therefore have been well aware of the Complainant’s business and prior rights to the OTOVENT mark when it registered the disputed domain name. The Respondent registered the disputed domain name in bad faith:
i) in order to prevent the Complainant from reflecting the mark in a corresponding domain name;
ii) with an intent of selling the disputed domain name to the Complainant; and
iii) to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s mark from the fact that the Respondent (a) has not been using the disputed domain name for any legitimate interests, but only as a link farm; (b) has been offering the disputed domain name “for sale” since the registration date; and (c) is associated with over 11,000 domains and has been the respondent in several previous UDRP cases, which reflects a pattern and practice of registering infringing domain names.
The Respondent contends that the Complainant has no trademark rights to OTOVENT in the United States of America, nor internationally. The Respondent also claims that the Complainant does not have trademark rights to the OTOVENT mark in the Republic of Korea, where the Respondent resides and where the Respondent registered the disputed domain name in 2017. The Respondent further contends that its registration date of the disputed domain name predates the Complainant’s trademark registration date. Therefore, the Complainant has no rights or legitimate interests in respect of the disputed domain name.
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 proceeding shall be the language of the registration agreement, i.e., Korean.
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 been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The website which the disputed domain name resolved to contains links which are all in English;
3) The Response has been submitted in Korean;
4) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments.
5) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is Swedish and the Respondent is Korean. Therefore English would not be an unfair language for either Party.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) accept the Response in Korean; and (3) issue a decision in English.
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark OTOVENT and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraphs 4(b)(i), (ii), (iii), and (iv) by registering the disputed domain name in order to prevent the Complainant, the owner of the trademark, from reflecting the mark in a corresponding domain name; to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s mark, and, alternatively, with an intent of selling the disputed domain name to the Complainant; and, lastly, the Respondent has been engaged in several UDRP cases as a respondent, and thus showing a pattern of bad faith registrations of domain name composed of third-party marks.
The Complainant also argues that the Respondent created the disputed domain name which is confusingly similar to the Complainant’s trademark, OTOVENT, with the knowledge of the Complainant’s worldwide famous trademark and its business. In fact, the Complainant’s commencement of its business and its first use of the OTOVENT trademark since at least 1989, far pre-date the registration date of the disputed domain name. The Complainant argues that the website which the disputed domain name resolves to contains links related to the Complainant’s business and products provided under the OTOVENT trademark by the Complainant. This fact may reasonably confuse consumers into believing that there is a business relationship between the owner of the website and the Complainant, or that the Parties are affiliated companies, neither of which is the case.
The Panel finds that the Complainant’s trademarks are well known and that they have been used since at least 1989. Further, the disputed domain name is identical or confusingly similar to the Complainant’s trademarks and the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or that it is commonly known by, has used or has been commonly known under the disputed domain name or the name. Thus, it is clear that the Respondent registered the disputed domain name with the knowledge of the Complainant’s trademarks and its business.
The Respondent raised a claim that it registered the disputed domain name prior to the Complainant’s registrations of its trademarks. The Panel, however, recognizes the fact that the Complainant’s trademark registrations, albeit in jurisdictions other than the Republic of Korea, are significantly prior to the registration date of the Respondent’s disputed domain name in 2017.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks and prevented the Complainant from reflecting the mark in a corresponding domain name in order to sell the disputed domain name to the Complainant for commercial gain.
As the conduct described above falls squarely within paragraphs 4(b)(i),(ii), (iii), and (iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <otovent.com> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: April 2, 2019