The Complainant is Pac Fill, Inc. of Los Angeles, California, United States of America represented by Davis Wright Tremaine LLP, United States of America
The Respondent is Choi Sungyeon, an individual residing in Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <abali.com> is registered with Korea Information Certificate Authority, Inc. dba DomainCA.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2009. On February 25, 2009, the Center transmitted by email to Korea Information Certificate Authority, Inc. dba DomainCA.com a request for registrar verification in connection with the disputed domain name. On February 26, 2009, Korea Information Certificate Authority, Inc. dba DomainCA.com 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 26, 2009, the Center notified the Parties of the procedural rules relevant to the language of the proceeding.
On March 3, 2009, the Complainant has submitted a request that English be the language of the proceeding, to which the Respondent has submitted a request that Korean be the language of the proceeding. On March 9, 2009, the Center notified the Parties of its preliminary decision to accept the Complaint in English and proceed with the case both in Korean and English.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 9, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2009
The Center appointed Young Hill Liew as the sole panelist in this matter on April 22, 2009. 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 language of the proceeding is found to be English in accordance with the Panel's discretion under paragraph 11 of the Rules and Panel Procedural Order No. 1.
4. Factual Background
Since May 6, 1985, the Complainant has continuously used the ABALI mark in connection with yogurt-based products for consumption. The Complainant is a worldwide distributor of yogurt-based products for consumption under the name ABALI.
The Complainant is the owner of United States Trademark Registration No. 2324232 (the “2324232 Registration”) for the mark ABALI in International Class 29 for goods relating to dairy products, namely, yogurt, yogurt-based drinks, carbonated yogurt-based drinks and cheeses. The registration was applied for on March 12, 1999, and was registered on February 29, 2000.
The Respondent registered the disputed domain name with the Registrar Korea Information Certificate Authority, Inc. dba DomainCA.com, on December 11, 1999.
5. Parties' Contentions
A. Complainant
Due to the Complainant's extensive use of the ABALI mark over the past 24 years, the substantial revenues generated by the sales of goods bearing the ABALI mark, and the substantial acknowledgment and praise received by distributors and contemporaries in the food and yogurt industry, ABALI mark is distinctive and famous in light of the standard set forth in the Lanham Act, §43(c), 15 U.S.C. §1125(c).
The Complainant's 2324232 Registration for the mark ABALI and the Respondent's <abali.com> domain name both contain the sole term “abali.” The simple and non-descriptive part of the term “abali” in the Respondent's domain name is identical to the Complainant's registered trademark. Because the element “.com” should be ignored for the purpose of assessing identity or confusing similarity, the disputed domain name is identical to the ABALI trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It does not have any connection with the Complainant's company or its activity. And neither the Respondent nor its business is commonly known by the name “Abali.” Moreover the disputed domain name is currently inactive and offered for sale. The Respondent registered the disputed domain name with the sole purpose and interest to sell it to the Complainant.
The disputed domain name was registered and is being used in bad faith by the Respondent. The Respondent registered the disputed domain name for the purpose of selling it to the trademark owner (the Complainant) at an inflated price, which does not correspond with the cost of registration.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Selection of Language
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. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the language of the registration agreement for the disputed domain name is Korean. However, the Complainant filed the Complaint in the English language and requested that English should be the language of the proceeding. The Complainant asserted that it is not able to communicate in Korean and therefore, if it were to submit all documents in Korean, the proceeding would be unduly delayed, and it would have to incur substantial expenses for translation.
In reply, the Respondent submitted an objection to the Complainant's request that English be the language of the proceeding, arguing that the language of the proceeding should be in Korean because the disputed domain name was registered in the Republic of Korea.
The Panel notes that the Respondent, although submitted its request that Korean be the language of the proceeding, has not filed a Response. The Panel further notes that the Center has conducted its procedural communications with the Parties in both Korean and English and that the Respondent was given the opportunity to submit a Response in either Korean or English.
In addition, as the content of the disputed domain name is in English, it is apparent, in the Panel's view, that the Respondent either has sufficient ability to communicate in the English language or has the assistance of others who are proficient in English.
Should the Panel now require translation of the Complainant's submissions, this proceeding would be unduly delayed, and the Complainant would have to incur expenses for translation or additional legal costs.
Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case.
B. Transfer of the Domain Name in Dispute
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
B1. Identical or Confusingly Similar
The Panel finds, on the basis of the Complaint, the Complainant has continuously and substantially used the ABALI mark since May 6, 1985 and owns trademarks and rights on the mark ABALI.
The disputed domain name consists of the trademark of the Complainant and “.com”, which should be ignored for the purpose of assessing identity or confusing similarity because it is merely a generic domain suffix (SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131).
The Panel therefore concludes that the Complainant has proven that the disputed domain name is identical to the trademark ABALI in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy.
B2. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating any such mark.
The disputed domain name is currently inactive, and thus not used in connection with a bona fide offering of goods or services. There is no evidence in the present record that the Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name.
The Respondent has merely held the disputed domain name passively. The Respondent's website at the disputed domain name is not operational, and the Panel infers that it never has been. There is no evidence before the Panel in this case that the Respondent has any rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(c) of the Policy.
The Panel draws the inference from the Respondent's failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
B3. Registered and Used in Bad Faith
It cannot reasonably be argued that the Respondent could have been unaware of the Complainant's trademark when registering the disputed domain name because, inter alia, “abali” is an invented word which the Complainant has used in commerce as the name of its product since 1985.
In addition, the Panel notes that the Respondent registered the disputed domain name shortly after there was a publication for opposition of the Complainant's trademark registration and that the Respondent has owned the domain name registration since December 11, 1999 without using it.
It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is evidence that the domain name was registered and is being used in bad faith (paragraph 4(b)(i) of the Policy).
In the present case, the disputed domain name resolves to a website that prominently displays the statement “This domain is for Sale!”. The Respondent's offer to sell the disputed domain name is made to the public. There is no direct evidence that the Respondent offered to sell the domain name specifically to the Complainant or its competitors, or that the sale price would exceed the registration costs. Nevertheless, those requisite elements may be inferred from the circumstances, including the fact that the domain name is identical to the Complainant's highly distinctive mark and the manner in which the domain name has been advertised for sale (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,
WIPO Case No. D2002-0787). Further, it may be inferred from the mere offering for sale that the price to be negotiated would exceed the registration costs (Bayerische Motoren Werke AG v. JMXTRADE.com Selling Premium Domain,
WIPO Case No. D2000-1693). This conclusion is supported by an adverse inference drawn from the Respondent's failure to reply to the Complaint or dispute the Complainant's assertion regarding the primary purpose of the Respondent's registration and use of the disputed domain name.
The Panel therefore concludes that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <abali.com> be transferred to the Complainant.
Young Hill Liew Sole Panelist
Dated: April 29, 2009
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