mornay.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IPGM Institution Mixte de Prévoyance du Groupe Mornay v. Sooyong Kim

Case No. D2007-1513

1. The Parties

Complainant is IPGM Institution Mixte de Prevoyance du Groupe Mornay, France, represented by Cabinet Aelegis, France.

Respondent is Sooyong Kim, Republic of Korea, represented by Dongsuh Law Offices, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <mornay.com> (the “Domain Name”) is currently registered with CyDentity Inc. (the “Registrar”), which has a business address in the Republic of Korea.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2007. The Complaint was submitted in the English language and stated that the registrar of the Domain Name was OnlineNIC, Inc. On October 17, 2007, the Center transmitted by email to Online NIC, Inc. a request for registrar verification in connection with the domain name at issue. On October 23, 2007, Online NIC, Inc. informed the Center that the domain name was not registered with it but CyDentity Inc. On the same day, the Center transmitted by email to CyDentity Inc. a request for registrar verification concerning the disputed domain name, and on October 24, 2008, CyDentity Inc. transmitted its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Registrar also informed that the language of the Registration Agreement was Korean. In reply to a communication from the Center, Complainant subsequently submitted an Amendment to the Complaint to reflect the change in registrar to CyDentity Inc. Complainant requested that the proceeding be conducted in the English language because when the Complaint was filed, the domain name was registered with OnlineNIC, which has an English-language Registration Agreement.

The Center verified that the Complaint, as amended, 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 Respondent of the Complaint and the proceedings officially commenced on November 1, 2007. The Center’s formal notification was written in both English and Korean. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2007. The Center noted the dispute as to the language of proceedings and that it had decided to accept the Complaint in English and to accept a Response in either English or Korean. The Center also notified the parties that the Panel had discretion to determine the language of the proceeding and, if necessary, to request a translation of any of either party’s submissions.

Respondent filed his Response with the Center in the Korean language on November 19, 2007. In addition to making arguments on the merits, Respondent requested that the proceeding be conducted in Korean. Respondent also requested that French-language attachments to the Complaint be translated into English if the proceeding was conducted in English.

The Center appointed Sang Jo Jang and Christian-André Le Stanc as Co-panelists on December 7, 2007, and Grant L. Kim as the presiding panelist on January 3, 2008. The Panel finds that it was properly constituted. The Panelists have 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 January 23, 2008, the Panel issued Procedural Order No. 1. The Panel concluded that the proceeding should be conducted in the English language because the Domain Name was registered with OnlineNIC, which has an English-language Registration Agreement, when the Complaint was filed on October 15, 2007. The Panel based this conclusion in part on a printout from OnlineNIC’s WHOIS database that was made by the Center as of October 15, 2007, and was provided to the parties with Procedural Order No. 1. The Panel noted that Rule 11(a) of the Rules provides that the language of the proceeding shall be that of the registration agreement, unless the Panel determines otherwise. The Panel interpreted Rule 11(a) as referring to the language of the registration agreement as of the date that the complaint is filed with the Center, even if the registrar was changed after the complaint was filed and before formal notice of commencement of the proceeding was provided. Otherwise, a respondent could change the language of proceedings by simply transferring the domain name to a different registrar after the complaint had been filed.

The Panel further noted that its conclusion that a change in registrar after the filing of the complaint should not affect the language of the proceeding is supported by Paragraph 8 of the Policy, which prohibits transfer of a domain name registration to a different owner (Paragraph 8(a)) or registrar (Paragraph 8(b)) during a pending administrative proceeding. Paragraph 8(a) has been interpreted as prohibiting transfer to a different owner at any time after the complaint is filed, and not just after official commencement of the proceeding, based on the following rationale:

To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification of the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon of cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.

British Broadcasting Corp. v. Data Art Corp., WIPO Case No. D2000-0683.

Based on the above reasons, the Panel concluded that the proceeding should be conducted in the English language and rejected Respondent’s request that the Complaint be translated into Korean. At the same time, the Panel granted Respondent’s request that the Complainant be required to translate the French language attachments to its Complaint into English, and requested Complainant to submit English translations by February 6, 2008. The Panel also noted that Respondent had argued that Complainant lacked sufficient rights in the MORNAY mark to satisfy the first element of the Policy, and requested Complainant to provide further comments on this subject.

Procedural Order No. 1 also allowed Respondent to submit a Supplemental Response, in English, by February 20, 2008. The Panel noted that it would not require the Response to be translated into English as it had already been submitted and Complainant had not requested a translation. At the same time, the Panel noted that Respondent should include in its Supplemental Response all arguments and evidence that he wished to bring to the attention of all members of the Panel, and that any arguments not presented in English may not be fully considered by the Panel.

Pursuant to this Order, Complainant submitted a Supplemental Statement (titled a “Complementary Report”) and exhibits translated into English on February 4, 2008. Respondent submitted a Supplemental Response in English on February 19, 2008.

4. Factual Background

Complainant IPGM Institution Mixte de Prévoyance du Groupe Mornay is a company registered by French Ministerial decree in 1983, with its principal place of business in Paris, France. Complainant is the registered owner of French trademarks for MORNAY.

The trademark application for MORNAY was registered on June 3, 2002. (Complaint, para. 11) This mark is registered in International Classes 16, 35, 36, and 39, covering “paper, cardboard and other products made of these materials [paper, cardboard], meaning business cards, catalogues, leaflets/fliers, booklets, note pads, brochures, folders, envelopes; printing products; materials for binding; photographs; stationery; teaching and educational materials (with the exception of electronic equipment); block printing; plates” in Class 16; “mercantile business, consulting in efficiency and business management; handling of trade shows with sales or advertising objectives. Operating informational sales and/or advertising sites and/or administrative and/or computer networked accounting, managing computer files” in Class 35; “Insurance, financial, monetary, real estate services. Complementary health, accident, disability and retirement insurance, pension funds, capital management and investment. Savings, management and investment of funds. Operating financial and/or banking and/or monetary and/or real estate and/or tax and or insurance related computer based websites for informational purposes” in Class 36; and “transport, travel organization, newspaper distribution. Operating an informational computer based website dealing with transport, information relating to transport and/or warehousing” in Class 39. (Id.)

Respondent registered the Domain Name <mornay.com> with OnlineNIC on August 30, 2003. As noted above, the Domain Name registration was transferred to CyDentity Inc. shortly after the Complaint was filed on October 15, 2007.

5. The Parties’ Contentions

A. Complainant’s Contentions

Complainant bases its Complaint on the MORNAY mark that was registered in France on June 3, 2002. In its supplementary submission, it also included evidence of its MORNAY SANTÉ mark, which was registered in France on January 5, 2001 for “insurance and financial services” in Class 36 and “scientific and technological services” in Class 42.

Complainant requests a Decision requiring the Registrar to transfer the Domain Name <mornay.com> to Complainant pursuant to paragraph 4(i) of the Policy.

Complainant asserts that Respondent’s use of the <mornay.com> Domain Name satisfies the standard established in paragraph 4(a) of the Policy because (1) the Domain Name is confusingly similar to Complainant’s MORNAY trademark; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.

Complainant asserts that Respondent’s Domain Name <mornay.com> is confusingly similar to Complainant’s MORNAY trademark. Complainant asserts that the Domain Name is strictly identical to its trademark. Furthermore, Complainant asserts that the website at the Domain Name lists products that are covered by the MORNAY trademark, including insurance, retirement, and financial websites.

Complainant further asserts that Respondent has no rights or legitimate interests in the Domain Name. Complainant notes that Respondent is not a licensee of Complainant, and that Respondent is not making any legitimate, noncommercial, or fair use of the Domain Name. (Complaint, para. 11.) Complainant also asserts that Respondent did not make any effort to use the website for commercial purposes in relation with a good faith offer of products or services.

Relying on paragraph 4(b)(iv) of the Policy, Complainant contends that Respondent has registered and used the Domain Name in bad faith. Complainant argues that Respondent registered the Domain Name for the purpose of selling it to the owner of the MORNAY trademark. Complainant draws attention to a note on the Domain Name indicating that it is for sale through “http://www.sedoparking.com”

B. Respondent’s Contentions

Respondent argues that Complainant has not demonstrated that MORNAY is registered as a trademark owned by Complainant, and that Complainant has not demonstrated that it is using MORNAY for the pertinent goods and services. Respondent also argues that MORNAY is a generic term, citing multiple dictionary definitions that identify it as a white sauce. In its Supplemental Response, Respondent clarifies that it is not asserting that Complainant’s trademark is invalid, but instead argues that the generic nature of the domain name outside of the insurance context is a crucial factor in judging the existence of bad faith. Respondent asserts that the home page of the “www.mornay.com” website, as submitted by Complainant, shows multiple links related to sauces, and no links related to Complainant or pertaining to services in competition with Complainant.

Respondent further asserts that it was not aware of the existence of Complainant or Complainant’s MORNAY trademark when Respondent registered the Domain Name on August 30, 2003. Relying on printouts from archived web pages, Respondent notes that Complainant’s web site “http://www.groupemornay.com” was not built until October 2003, which was after the Domain Name was registered. Respondent also contends that a search on the WIPO website for international registrations under the Madrid system, the primary international system for facilitating the registrations of trademarks in multiple jurisdictions around the world, does not reveal any marks with the name MORNAY.

Respondent also argues that when a search is conducted from the Republic of Korea for “Mornay” using the search engines at “www.google.co.kr” and “www.google.com”, all results on the first page of each corresponds to sauce or the actress Rebecca De Mornay. Respondent notes that results on “www.google.com” are customized based on the location of the searcher, and thus, Complainant sees references to itself when it searches for MORNAY on “www.google.com” in France, whereas Respondent does not when it searches for MORNAY on “www.google.com” in Korea.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; Final Report of the First WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means by which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, numerous Panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent argues that Complainant has not demonstrated that MORNAY is registered as a trademark owned by Complainant, and that Complainant has not demonstrated that it is using MORNAY for the pertinent goods and services.

The Panel rejects the Respondent’s argument. Complainant has presented sufficient evidence of its registration of MORNAY and its use of MORNAY for the pertinent goods and services. In its Supplemental Report, Complainant notes that it owns subsidiaries including MORNAY SERVICE and MORNAY MUTUELLE, and that it and its subsidiaries offer services including MORNAY SANTE PLUS, MORNAY ENTERPRISE SANTE, MORNAY TNS SANTE, MORNAY TNS PREVOYANCE, MORNAY DEPENDANCE, MORNAY INITIATIVE SANTE, and MORNAY SENIOR ASSISTANCE. Complainant also provides samples of its advertisements using the MORNAY trademark.

The fact that the Complainant’s trademark rights are not registered in the country in which the Respondent resides does not preclude a finding of rights under Paragraph 4(a)(i) of the Policy. Consistent with the international character of the Internet, it has been held in numerous decisions that a complainant can rely on trademark rights in countries other than those of the respondent or registrar. See, e.g,. Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749; Kabushiki Kaisha ASTY and Kabushiki Kaisha F.D.C. PRODUCTS v. LiHai, WIPO Case No. D2003-0963; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. Proof of trademark rights in any country is sufficient for the purposes of Paragraph 4(a)(i) of the Policy. See, e.g.,Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920.

Therefore, the Panel holds that Complainant has proven it has rights in the MORNAY trademark, and that it uses the MORNAY trademark for the pertinent goods and services. Accordingly, the Panel next considers Complainant’s contention that the Domain Name is identical or confusingly similar to Complainant’s MORNAY mark.

Under paragraph 4(a)(i) of the Policy, the question of identity or similarity is evaluated solely based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, WIPO Case No. D2000-0068. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Upon direct comparison, the Panel finds that the Domain Name <mornay.com> is identical or confusingly similar to Complainant’s MORNAY mark. The Domain Name is identical to the MORNAY mark, aside from the legally insignificant addition of the top level domain identifier, “.com.” Lenox Financial Mortgage, LLC, JMH Financial Mortgage, Corp d/b/a Lenox Financial Mortgage, Corp v. Digi Real Estate Foundation, WIPO Case No. D2006-1047 (“[T]he addition of “.com” accomplishes little if anything toward the avoidance of confusing similarly. It should be disregarded for the purpose of the first element of the Policy concerned”). Accordingly, Complainant has met its requirements under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

In order to meet the second element, Complainant should make at least a prima facie showing that Respondent has no rights or legitimate interests in respect of the Domain Name. Once Complainant has made a prima facie case, Respondent should present evidence that he has legitimate rights or interests. Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043, para. 6.9 (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the disputed domain name.”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, para. 6(B) (noting that “the element of possible rights or legitimate interests of the Respondent in the domain name involves . . . matters, which are peculiarly within the knowledge of the Respondent”, and that requiring the Complainant to make more than a prima facie showing would impose “the impossible task of proving the negative”).

Complainant argues that there is no evidence this Domain Name is used for any commercial purpose related to a good faith offering of goods and services, even after Respondent became aware of the dispute, and that Respondent is neither a licensee of Complainant nor authorized to use Complainant’s MORNAY trademark in any form. There is no evidence that Respondent has ever been commonly known by the Domain Name. Based on the foregoing, the Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Pursuant to paragraph 4(c) of the Policy, Respondent may establish rights to or legitimate interests in the Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent’s main argument is that “Mornay” is a generic term.

The Panel finds that whether the second element of the Policy has been met is a fairly close question. On the one hand, Complainant has presented evidence that Respondent does not have any legitimate rights or interests in the Domain Name. On the other hand, Respondent has presented evidence that MORNAY refers to a type of sauce, and also that it was not aware of Complainant’s use of “MORNAY” when Respondent registered the Domain Name in August 2003.

For the reasons set forth below, the Panel has concluded that the third element of the Policy has not been met. Therefore, the Panel finds that it is not necessary to decide whether the second element has been met.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, internet users to its website or other on-line 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 its website or location.

Paragraph 4(b) states that the above list is “in particular but without limitation”; thus, “bad faith” may also be proven by other means. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“[P]aragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances in which such bad faith may be found. Seeid.

Complainant contends that Respondent has registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) because the Domain Name was registered essentially for the purpose of selling the domain name to Complainant. Complainant notes that the Domain Name displays an advertisement stating that it is for sale. Indeed, clicking on this link leads the user to a web page on “www.sedo.com” that states “mornay.com is for sale.” Complainant also argues that the Domain Name is being used in bad faith, as it contains headings referring to advertisements for products relating to eroticism and pornography, which harms the Complainant’s brand image.

Respondent asserts that Complainant has not demonstrated bad faith because (1) Respondent registered the Domain Name because of its generic meaning, evidenced by the numerous headings related to sauces; and (2) Respondent was not even aware of Complainant or Complainant’s MORNAY mark at the time of registration.

The Policy requires Complainant to demonstrate that “the domain name was registered and is being used in bad faith.” (Policy, paras. 4(a)(iii); Rules, para. 3(b)(ix)(3)) (emphasis added); see also River Island Clothing Co. Ltd. v. Name Administration Inc.(BVI), WIPO Case No. D2007-1293 (noting that complainant “must show that the domain was registered in bad faith as well as that it has been used in bad faith”). Complainant has not demonstrated to this Panel’s satisfaction that the domain name was registered in bad faith. A failure of this prong is dispositive, so the Panel finds that it is not necessary to address whether Registrant’s current use is in bad faith.

First, Complainant has presented no evidence that suggests Respondent was aware of Complainant’s existence when Respondent registered <mornay.com>. The Panel observes from “www.archive.org” that Complainant’s website “www.groupemornay.com” appears to have had minimal or no content until October 2003, which was after Respondent registered <mornay.com> in August 2003. Respondent noted this point in its original Response. Complainant’s Supplemental Statement states that Complainant translated the Complaint into the English language, but does not include any rebuttal on this point.

Complainant is not so famous, nor is its MORNAY mark so arbitrary, that the Panel can in the circumstances of this case assume knowledge of Complainant’s name and mark. Although searches conducted in France on “www.google.com” may display Complainant’s name as a top entry, this appears to be limited to searches conducted from France. When the Panel recently conducted a search for MORNAY on “www.google.com” or “www.google.co.kr” from the United States of America¹, there was no reference to Complainant in the first ten pages of results. Respondent has also submitted evidence that a similar search conducted from the Republic of Korea does not return Complainant’s website as a top result. It is even less likely that Complainant’s website would have appeared as a top result in a search conducted before the Domain Name was registered in August 2003, given that Complainant’s website did not have any significant content until August 2003.

Second, although Complainant has provided evidence that Respondent is interested in selling the Domain Name, there is no evidence that Complainant registered the Domain Name in order to sell it to the Complainant or a competitor of the Complainant. Indeed, as discussed above, there is no clear evidence that Respondent was even aware of Complainant when it registered the Domain Name.

Third, the record does not show that Respondent registered the Domain Name primarily for the purpose of disrupting Complainant’s business, or that Respondent is attempting to divert persons seeking Complainant’s website by offering similar services that create a likelihood of confusion with Complainant. Complainant is primarily in the business of offering insurance-related services in France. The front page of the ”www.mornay.com” website currently appearing at the disputed Domain Name does not offer any similar services, although it does include a number of references to “sauce” and “sauces”. There is very little if any risk that persons visiting this website will assume that it is associated with Complainant. This case is thus distinguishable from other cases where the respondent’s website provided links to other sites that were likely to be of interest to persons who were seeking the complainant’s website.

Complainant has asserted that certain searches on Respondent’s website lead to links to related services. However, this seems to occur through indirect, attenuated methods only. For example, Respondent’s website includes a link to a general website about jobs in numerous industries; some of these jobs may relate to insurance companies, but that is not the focus of this website. The majority of the links on the Domain Name, even in the screenshots presented by Complainant, are related to foods or sauces, or to topics unrelated to either Complainant’s insurance business or to the Mornay sauce (shopping, MP3s, or flowers).

Other panels have concluded that there is insufficient evidence of bad faith under similar circumstances, e.g., where the domain name is identical to a trademark in which the complainant has rights, but there is no evidence that the respondent knew of the complainant at the time of registration, or registered the domain name in bad faith. For example, in Builder’s Best v. Yoshiki Okada,WIPO Case No. D2004-0748, the domain name at issue was <nnn.com>, and the trademark was NNN. The panel held that the respondent registered domain names with the intent to sell, and had no legitimate interest in the disputed domain name. However, there was no evidence that the complainant’s mark was known in the respondent’s country of residence, or that the respondent had bad faith towards the complainant when registering the domain name. The panel noted that if a transfer was ordered, it would directly benefit the complainant, and thus indirectly constitute a finding against other potential trademark owners of NNN marks who may very well have evidence demonstrating that the respondent registered the domain name in bad faith with respect to them. Because there was no evidence of bad faith towards the complainant at the time of registration, the request for transfer was denied.

River Island Clothing Co. Ltd. v. Name Administration Inc., WIPO Case No. D2007-1293, also presents a similar situation. There, the domain name at issue was <nushu.com>, and the trademark was NUSHU. The respondent registered the domain name two days after the complainant filed its application for the NUSHU mark, so the complainant argued that the respondent must have heard of the application. However, there was no other evidence that the respondent was aware of the complainant’s NUSHU mark or application. The respondent argued that it registered the name as a sound-alike of the generic phrase “new shoe.” The panel noted that NUSHU was not a famous or well-known brand, and there was no other evidence that the respondent had bad faith at the time of registration. The complainant “must show that the domain was registered in bad faith as well as that it has been used in bad faith.”

The Panel in this case notes that Respondent’s conduct of transferring the Domain Name to a Korean-language registrar after Respondent became aware of the Complaint in an apparent attempt to change the language of the proceeding from English to Korean was improper and is suggestive of bad faith with regard to the conduct of these proceedings. However, this conduct is not sufficient, by itself, to show that the Domain Name was registered in bad faith. For the reasons discussed above, the other evidence in the record is also inadequate to show that the Domain Name was registered in bad faith. Accordingly, the Panel finds that Complainant has not met its burden under paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Complainant’s request for transfer of the Domain Name is denied.

Dated: March 4, 2008

¹ Specifically, the Presiding Panelist, on behalf of the Panel.