The Complainant is J C Bamford Excavators Limited, Staffordshire, United Kingdom of Great Britain and Northern Ireland, represented by Dickinson Dees, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Hyun-Jun Shin, Gyeongbuk, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <jcbvibromax.com> is registered with Hangang
Systems Inc. d/b/a Doregi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2005. On November 4, 2005, the Center transmitted by email to Hangang Systems Inc. d/b/a Doregi.com a request for registrar verification in connection with the domain name at issue. On November 5, 2005, Hangang Systems Inc. d/b/a Doregi.com 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 notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint, requesting that English be the language of the administrative proceeding on November 11, 2005. The Center verified that the Complaint together with the amendment to 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 November 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2005.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 16, 2005. 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 Panel determines that the language of the proceeding
will be English, as discussed further below.
4. Factual Background
The Complainant, J C Bamford Excavators Limited, commonly known as JCB, is a manufacturer of construction equipment, with plants and subsidiaries in several countries. Its products are sold worldwide, including the Republic of Korea, the residence of the Respondent. The Complainant has registrations of the mark JCB in a number of countries. It registered the domain name <jcb.com> on August 29, 2002. On July 20, 2005, JCB announced that it had acquired Vibromax Bodenverdichtungsmaschinen GmbH (“Vibromax”), also known as Vibromax Compaction Equipment GmbH, a designer and manufacturer of compaction equipment, with distribution worldwide, including the Republic of Korea. The announcement also stated that the new subsidiary company would be known as “JCB Vibromax.” Vibromax had previously obtained registration of the VIBROMAX mark in a number of countries, and on August 21, 2003, registered the domain name <vibromax.de>. JCB asserts that as a result of the corporate acquisition, it is the proprietor of Vibromax’s intellectual property rights, including all trademark and domain name registrations.
The Respondent registered the disputed domain name
<jcbvibromax.com> on July 20, 2005, the same date that JCB announced its
acquisition of Vibromax.
5. Parties’ Contentions
A. Complainant
The Complainant argues that the Respondent’s domain name is identical or confusingly similar with the JCB and VIBROMAX marks in which the Complainant has rights, including specifically, common law rights in the marks; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Rules allow the Panel to decide the dispute based
on the Complaint, and draw appropriate inferences from the Respondent’s
default. (Rules, Paragraphs 5(e), 14(a), 14(b).)
6. Discussion and Findings
The Panel must first address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. The language of the Registration Agreement here is Korean. The same provision of the Rules, however, also states that the determination of the language of the proceeding is “subject to the authority of the Panel . . ., having regard to the circumstances of the administrative proceeding.” Here, correspondence between the parties indicates that the Respondent is proficient in the English language. The Respondent has since declined to participate in the proceeding, and the Complainant requests that English should be the language of the proceeding. In light of the circumstances, the Panel agrees.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to marks in which the Complainant has rights.
The record demonstrates that JCB has rights in the
JCB and VIBROMAX marks. JCB and Vibromax obtained formal registration of the
marks and used them well before the Respondent’s registration of the disputed
domain name on July 20, 2005. The <jcbvibromax.com> domain name is merely
a combination of the JCB and VIBROMAX marks. The likelihood of confusion for
Internet users who see the website is clear. In Neuf Telecom, Cegetel v.
Hyun-Jun Shin, WIPO Case No. 2005-1118 (December
21, 2005), which is factually indistinguishable from the present case, the respondent
(also the Respondent here), had registered the domain name <neufcegetel.com>,
combining NEUF and CEGETEL marks that were previously registered by companies
of the same respective names. The respondent there had registered the domain
name shortly after reports of merger negotiations between the two companies.
In Neuf Telecom, as in the present case, the disputed domain name was
confusingly similar to the complainants’ registered marks, in that the
domain name referred to essentially one entity.
The Panel’s determination is also consistent
with a number of other UDRP decisions where, as here, the disputed domain name
was a combination of trade names or trademarks of two companies that were in
merger negotiations or that had recently merged at the time of the domain name
registration. E.g., Konica Corporation, Minolta Kabushiki Kaisha aka Minolta
Co. Ltd. v. IC, WIPO Case No. D2003-0112
(March 31, 2003).
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), the Respondent may demonstrate rights or legitimate interests in the domain name, by providing evidence of: (i) the Respondent’s use of the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent being commonly known by the domain name; or (iii) the Respondent making a legitimate noncommercial or fair use of the domain name. Importantly, this is not an exhaustive list. Nevertheless, the Panel is at a loss to ascertain any circumstances that would demonstrate the Respondent’s rights or legitimate interests in <jcbvibromax.com>. The record indicates that the Respondent registered the disputed domain name on the very day that the Complainant announced its acquisition of Vibromax. Indeed, according to the Complainant, the Respondent has registered more than thirty domain names that combine the names of two companies in merger negotiations or that have recently merged. (Complaint Annex 24-57.)
C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that bad faith in the registration
and use of a domain name can be demonstrated by, among other circumstances,
registration of a domain name “primarily for the purpose of selling .
. . or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark . . . for valuable consideration in excess
of . . . documented out-of-pocket costs directly related to the domain name.”
This circumstance is seen in the present case. Here, the Respondent first requested
a “reasonable price” for the transfer of the domain name to the
Complainant. The Complainant’s representative offered $50 in exchange
for the transfer, and then later increased the offer to $250, pointing out that
the figures exceed the out of pocket expenses for the domain name registration.
The Respondent countered with a proposal of $30,000. The Panel determines that
there is sufficient evidence of registration and use of the domain name in bad
faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jcbvibromax.com> be transferred to the Complainant.
Ilhyung Lee
Sole Panelist
Dated: December 22, 2005
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