The Complainant is Stephen Uther, Director Shalex industries Pty Ltd and Trustee of the SKU Family Trust, Australia, internally represented.
The Respondent is Yang Kyung Won, Republic of Korea.
The disputed domain name <shalex.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2021, 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 July 15, 2021, 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 July 16, 2021, the Complainant requested for English to be the language of the proceeding. On July 19, 2021, 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 of the Complaint, and the proceedings commenced on July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Response was filed in Korean with the Center on August 13, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 28, 2021. 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, Shalex industries is a specialist manufacturer of clear masonry sealers, waterproofing compounds/membranes, and architectural coatings. Shalex industries started in Australia in 1974 with a focus on restoration and waterproofing of roofs and masonry facades in period buildings. Through years of experience with a wide range of masonry substrates, the business of manufacturing sealers and adhesives has been carried on under the Shalex brand continuously since its inception in 1974 to today. With dedicated manufacturing facilities to control product quality, Shalex products are manufactured in Australia and distributed throughout Australia and internationally.
The Complainant conducts business in manufacturing sealers and adhesives under the registered Australian company name of Shalex industries Pty Ltd (registered on February 24, 2014) and all marketing and communications use the Shalex brand. The Complainant owns the trademark registration for SHALEX and the domain name <shalex.com.au>.
|
Jurisdiction |
Trademark |
Registration Date |
Registration Number |
Class |
|
Australia |
SHALEX |
12-Jun-2017 |
1851256 |
1 |
The Complainant requested English to be the language of proceedings on July 16, 2021.
On August 13, 2021, the Respondent filed a Response in Korean.
The disputed domain name <shalex.com> was registered by the Respondent on March 31, 2011.
1) The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing four main reasons.
(a) English is one of the most widely spoken languages in the world and it is an official working language of the Center.
(b) The disputed domain name is in Latin letters, not in Korean characters, and the extension of the disputed domain name “.com” is typically domiciled in the U.S. where English is the default language.
(c) The current content on the website to which the disputed domain name resolves is in English, which is clear evidence that the Respondent is able to understand proceedings in English.
(d) Proceeding in Korean and requiring the Complainant to translate the Complaint and all other supporting documents into Korean would be unfair, imposing a burden on the Complainant and delaying the proceedings.
2) The Complainant contends that the disputed domain name should be transferred to the Complainant because:
(a) the disputed domain name <shalex.com> is identical to the Complainant’s trademark SHALEX in which the Complainant has rights. The Complainant has registered the trademark SHALEX and has been manufacturing and selling a range of products all bearing the registered trademark “SHALEX” on product documentation and labeling. The Complainant’s registered trademark SHALEX was created and first used in 1974 by the owner of the Shalex business, John Moss. It was derived from the names of his two sons, Shane and Alex Moss. The business of manufacturing sealers and adhesives has continually been carried on under the trademark SHALEX since its inception date in 1974 to the current date, which demonstrates the Complainant’s intensive use of its trademark.
(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not, and has never been an authorized reseller, service provider, licensee or distributor of the Complainant. Further, the Complainant contends that the Respondent is not a bona fide provider of goods or services under the disputed domain name and is not making any legitimate noncommercial use or fair use of the Complainant’s trademark. Also, the Respondent is not commonly known by the disputed domain name and does not currently utilize the disputed domain name.
(c) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the owner of the trademark or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name by showing a domain auction website where the disputed domain name had been listed for sale with a current asking price of USD 65,737.05. Further, the Complainant insists that the Respondent 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, and is engaged in a pattern of such conduct. The Complainant contends that the Respondent currently has registered 5,915 domains which indicates that the Respondent has an intention to profit from domain squatting rather than developing legitimate businesses for the domains registered.
1) The Respondent requested that the language of proceedings be Korean.
2) The Respondent contends that the Complaint should be denied because:
(a) the Respondent registered the disputed domain name on March 31, 2011, which is much earlier than the Complainant’s trademark registration date. Also, the Complainant’s trademark was registered only in Australia in 2017, and the Complainant is an unknown company from a global perspective and including in the Republic of Korea. Finally, the Respondent argues that the Complainant’s trademark is not registered in Korea.
(b) the Respondent is currently operating a blog that advertises and consults on the subject of shared houses and shared offices, and only uses the disputed domain name to conveniently connect Internet users to the blog site. The Respondent contends that such purpose is legal.
(c) the Complainant’s assertion that the Respondent is the owner of multiple domains is merely a malicious complaint and is not considered worthy of argument because the Respondent is at liberty to purchase as many domain names as it wishes. Furthermore, the Respondent does not have any intention to sell the disputed domain name.
(d) the Respondent has developed and completed a website using the disputed domain name and that such use strengthens its legal rights to the disputed domain name. Also, the Respondent is applying for trademark rights under the disputed domain name, and the business pursued by the Respondent using the disputed domain name is completely unrelated to the Complainant’s business field. Therefore, the Respondent’s use of the disputed domain name is fair use, and does not mislead consumers nor dilute the Complainant’s trademark or service.
(e) The Respondent additionally claims that the Complainant filed this case in an attempt to engage in reverse domain name hijacking and to take away the Respondent’s disputed domain name. Therefore, the Complainant’s Complaint should be denied.
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) 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 Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments.
3) The disputed domain name is an English word which shows that the Respondent understands English – and the Respondent did in fact submit a substantive Response to the English Complaint.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in both Korean and English; 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 SHALEX trademark, and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The mere addition of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see 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 identical to the Complainant’s trademark.
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 production 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. The Respondent has shown no actual intention to use the disputed domain name since it registered the disputed domain name in 2011. An Internet search of the disputed domain name on Google pulls up the Respondent’s Korean blog site which only includes an advertisement for shared house or shared office space. Moreover, it seems that the disputed domain name was used for a different purpose in 2018. This strongly suggests that the Respondent did not make actual use of the disputed domain name nor has it been in continuous operation by the Respondent for any notable period of time. Rather, it suggests that the current blog was created hastily in a mere effort to give the appearance that the Respondent is engaged in some actual business with the disputed domain name. 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. Since the Complainant has been found to have made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. The Respondent, however, failed to prove so.
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, paragraph 4(b)(i), (ii) by registering the disputed domain name in order to (1) sell the disputed domain name to the Complainant or a third party for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; and (2) prevent the Complainant from reflecting the mark in the corresponding disputed domain name, provided that the Respondent has engaged in a pattern of such conduct.
In this regard, the Panel notes the following facts:
(a) The Complainant registered the trademark SHALEX in 2017 which is 6 years later that the date the Respondent registered the disputed domain name in 2011. While the Complainant is an Australian company that has a history of almost 50 years and has been using its SHALEX brand as its identifiers for its products consistently ever since it started its business in 1974 and owns and is using the domain name <shalex.com.au> which incorporated the trademark SHALEX in its entirety, the Complainant advances no arguments whatsoever why the Respondent would have been aware of the Complainant prior to 2011.
(b) The Respondent claims that he runs a blog that advertises shared houses and shared offices, and provides customer counseling.
The Panel has independently confirmed that the Respondent’s claim of use of the disputed domain name is when an Internet user who searches for the disputed domain name causes its blog site on <blog.naver.com> to appear. As the Respondent admits, the reason for using the disputed domain name therefore is merely to connect to the blog so as to provide ease of access to customers.
Further, the Panel has independently confirmed that the Respondent’s blog makes no mention of the word “shalex” and there is no evidence of record to show that the Respondent is somehow associated with the name “shalex”. Thus, the Respondent’s argument that he was using the disputed domain name to connect Internet users to his blog is not entirely evident because there is no connection between the disputed domain name and the Respondent’s blog.
(c) In addition, despite the Respondent’s claim that it has not sought to sell the disputed domain name, the Panel has independently confirmed that the disputed domain name is currently offered for sale through the website “auctions.godaddy.com” at a price of USD 49,500, which is significantly more than the actual cost to register the disputed domain name.
(d) This Panel also takes note of the Respondent’s registration of more than 5,000 domain names.
While the three latter actions may support a finding of bad faith use, it cannot overcome the fact that the registration date of the disputed domain name predates the Complainant’s registration date of its SHALEX trademark or its <shalex.com.au> domain name (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877) and the very barebones Complaint (a few mere sentences under each element) does not provide a single fact or argument regarding bad faith registration and merely focuses on the disputed domain name being for sale.
Notwithstanding the foregoing, this Panel must take due notice of WIPO Overview 3.0, section 3.8, and previous UDRP decisions which have applied said section, namely that where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. This is a well-established position and though it is subject to limited exceptions (i.e., where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights), the facts of this case do not support the application of such an exception.
Accordingly, the Panel finds that the Complainant has not established that the disputed domain name was registered in bad faith. The Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Date: October 19, 2021