The Complainant is Samsung Electronics Co., Ltd, of Republic of Korea, represented by You Me Patent & Law Firm of Republic of Korea.
The Respondent is Goldname.Com of Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <zipel.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2006 by email and on January 4, 2007, by courier. On December 27, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On December 27, 2006 and on January 5, 2007, Dotster. Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a request for registrant clarification by the Center, the Complainant clarified the registrant on January 11, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2007.
On January 17, 2007, the Center received an e-mail from “Seokjun Kim” in response to the Center’s notification of January 12, 2007 requesting the proceedings be in Korean. On that date, the Center replied to the e-mail indicating that the language of the registration agreement has been confirmed by the Registrar as Korean, and suggesting that the Respondent may wish to contact the Complainant Regarding agreement to proceed in Korean.
On January 22, 2007, the Complainant submitted a supplemental filing, the receipt of which was acknowledged by the Center on January 23, 2007.
The Center appointed Moonchul Chang as the Sole Panelist
in this matter on February 9, 2007. 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 February 14, 2007, the Center forwarded the supplemental filing
to the Panel, as requested by the Panel on February 13, 2007.
4. Factual Background
The Complainant, Samsung Electronics Co., Ltd. is an internationally well known company in the area of manufacturing and selling a variety of domestic electronic products including refrigerators. Since the Complainant launched the side-by-side door refrigerator referred to as “Zipel” in 1997, it registered the trademark ZIPEL in many countries including the Republic of Korea. With the expansion of the Complainant’s sales of the refrigerator Zipel in international markets, ZIPEL branded products are now widely known in many countries including Republic of Korea. The Complainant currently uses the domain name <zipel.co.kr> to operate its official website.
The Respondent registered the disputed domain name
<zipel.com> on July 1, 2001. At present the Respondent does not use its
own website by the disputed domain name.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name <zipel.com> is identical or confusingly similar to the Complainant’s trademarks ZIPEL and domain name <zipel.co.kr>.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name because he is neither affiliated with the Complainant nor authorized to use and register the mark of ZIPEL.
The Complainant further contends that the Respondent registered and is using the domain name in bad faith. The Respondent was presumably aware of the trademark ZIPEL because the ZIPEL was already a huge success in Republic of Korea at the time when the Respondent registered the disputed domain name. Thus, the Respondent wanted to take advantage of the Complainant’s goodwill and its reputation of ZIPEL. In addition, the Complainant contends that the Respondent registered the domain name hoping that he could sell it to the Complainant or to other in higher price.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise.
Here, the language of the registration agreement is English and the complaint was submitted in English. Although the Respondent requested that the administrative proceedings in the Korean language, he failed to provide any evidence of any agreement between parties regarding the language, and no further communications were received from the Respondent.
Therefore, the Panel hereby decides, under paragraph 11 of the Rules, that English as the language of the registration agreement shall be the language of administrative proceeding in this case.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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. Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules, as it considers appropriate.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.
C. Identical or Confusingly Similar
The domain name at issue is <zipel.com>. In the present case, the main part of the disputed domain name is “zipel” which is identical to the Complainant’s trademark.
Therefore, the Panel concludes, that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark.
Accordingly, the first element under paragraph 4(a) of the Policy has been met by the Complainant.
D. Rights or Legitimate Interests
The Panel considers that under paragraph 4(a)(ii) of the Rules, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie evidence that the Respondent has no rights or legitimate interests, the burden shifts to the Respondent.
First, the Panel considers that in the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could be reasonably claimed. Such is the case here, inasmuch as the Complainant did not give any license or other permission to the Respondent to use the mark ZIPEL.
Secondly, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services at present.
Finally, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The name “zipel” has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use which in appropriate circumstances may include the passive use of it. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and that other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the trademark ZIPEL is widely known in many countries, including the Republic of Korea, it is considered that the Respondent registered the disputed domain name with notice of the Complainant’s trademark registration. Since the Complainant launched the refrigerator ZIPEL in April 1997, the ZIPEL has become successful and popular in the Korean market at the time when the Respondent registered the disputed domain name on July 1, 2001. Therefore, the Panel is considers that the Respondent was in all likelihood aware of the Complainant’s trademark registration and presumably wanted to take advantage of the good reputation of the mark ZIPEL. The Panel notes that it is also likely to have been apparent to the Respondent that registering the domain name <zipel.com> may have the effect of preventing the Complainant from registering it's ZIPEL mark in a corresponding domain name.
In addition the Panel notes that the disputed domain name is for sale in the Dotster’s website with which the domain name was registered.
Under the circumstances, the Panel considers that the Respondent is likely to have registered the domain name in the expectation of selling it for a higher price or otherwise benefiting from the reputation and likely confusion with the Complainant’s ZIPEL mark.
Based on the foregoing, the Panel is satisfied that
bad faith registration and use have been sufficiently established with respect
to the domain name <zipel.com> in accordance with paragraph 4(b) of the
Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <zipel.com> be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Dated: February 16, 2007
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