WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude v. NURINET

Case No. D2010-0122

1. The Parties

Complainant is L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude of Paris, France, internally represented.

Respondent is NURINET of Gyeongju-si, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <airliquide.net> is registered with Netpia.com. Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2010. On January 28, 2010, the Center transmitted by email to Netpia.com. Inc. a request for registrar verification in connection with the disputed domain name. On January 29, 2010, Netpia.com. Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. 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”).

On January 29, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. On February 1, 2010, Complainant submitted a request that English be the language of the proceeding. Respondent did not respond to the Center's Language of Proceeding notification. On February 4, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on February 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 26, 2010.

The Center appointed Junghye June Yeum as the sole panelist in this matter on March 11, 2010. 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.

4. Factual Background

Complainant asserted the following facts and submitted evidence in support of these facts. Because of Respondent's failure to respond to the Complaint, the Administrative Panel accepts Complainant's factual assertions as truthful and undisputed.

Complainant, L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude, a French company founded in 1902, is the global provider of industrial and medical gases and related services which supplies oxygen, nitrogen, hydrogen and many other gases to such varied industries as steel and iron, refining, chemicals, glass, electronics, paper pulp, metallurgy, food-processing, healthcare and aerospace. Complainant is present in 75 countries with over 43,000 employees and has subsidiaries all over the world.

Complainant has been active in the Republic of Korea (“Korea”) for more than 40 years where it has a subsidiary, Air Liquide Korea Co., Ltd., located in Seoul, Korea.

Complainant uses the trade name AIR LIQUIDE and owns the following French trademarks registered with the French Patent & Trademark Office called INPI (“Institut National de la Propriété Industrielle”).

Complainant also owns the following trademark registrations in Korea for AL AIR LIQUIDE:

- Reg. No. 298933 registered on September 28, 1994;

- Reg. Nos. 297167, 297168, and 297169 registered on August 29, 1994;

- Reg. No. 296662 registered on August 25, 1994;

- Reg. No. 25717 registered on January 18, 1995;

- Reg. No. 25951 registered on February 4, 1995;

- Reg. No. 26247 registered on February 24, 1995;

- Reg. No. 319315 registered on August 7, 1995.

Complainant owns and operates a website at “www.airliquide.com”. Complainant also owns domain name registrations and uses numerous domain names including the domain name <airliquide.co.kr> registered on January 4, 2002 in the name of Complainant's Korean subsidiary Air Liquide Korea Service.

Respondent is the registrant of the disputed domain name. According to the WhoIs database, Respondent's contact information was listed as: NURINET, Gyenongju-si-Dongcheon-dong, Gyeongsangbuk-do, Korea. The registrar for the disputed domain name is Netpia.com, Inc. located in Korea. The disputed domain name leads to the website “www.sedo.com,” owned by a German company Sedo GmbH which purchases and sells domain names, one of which is the disputed domain name.

5. Parties' Contentions

A. Complainant

Complainant submits the following contentions in support of its request to the Administrative Panel that the disputed domain name be transferred to Complainant:

(1) Complainant submits that it is the world leader in gases for industry, health and the environment.

(2) Complainant submits that it owns registrations for the trademark AIR LIQUIDE in France. Complainant submits copies of the registration and renewal certificates of the French trademarks.

(3) Complainant submits that it owns registrations for the trademarks AIR LIQUIDE and AL+ AIR LIQUIDE in Korea. Complainant submits copies of the registration and renewal certificates of the Korean trademarks.

(4) Complainant contends that AIR LIQUIDE is a famous trademark due to the activities of Complainant. Complainant further contends that AIR LIQUIDE is strongly associated with Complainant.

(5) Complainant contends that the disputed domain name registered by Respondent on March 30, 2009 reproduces the mark AIR LIQUIDE owned by and registered to Complainant.

(6) Complainant contends that the disputed domain name is identical or confusingly similar to the AIR LIQUIDE trademark owned by and registered to Complainant.

(7) Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name.

(8) Complainant contends that Respondent is a Korean company whose activities are unknown. Complainant further contends that the term “Air Liquide” is not a descriptive term in which Respondent may have rights or legitimate interests with respect to the disputed domain name.

(9) Complainant submits that it never consented to Respondent's use of Complainant's trademarks, trade name and corporate name.

(10) Complainant contends that Respondent has not used the disputed domain name since its registration.

(11) Complainant contends that the disputed domain name was registered and is being used in bad faith by Respondent.

(12) Complainant contends that the name “Air Liquide” is commonly associated with Complainant, a famous major company dealing in the industry of air and gases and that Respondent could not have chosen the disputed domain name by mere coincidence.

(13) Complainant contends that the disputed domain name is not used in connection with an active website but rather provides access to a website “www.sedoparking.com” which purchases and sells domain names.

(14) Complainant contends that Respondent registered the disputed domain name for the purpose of selling it for a profit.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant contends that it owns the registrations for the trademark AIR LIQUIDE in France and the trademark AL AIR LIQUIDE in Korea. Complainant submitted copies of the registrations and renewal certificates of these French and Korean trademarks in support of its claim of ownership of these trademarks.

Undoubtedly, the disputed domain name is identical to Complainant's registered trademark. The disputed domain name incorporates Complainant's trademark in its entirety. Numerous UDRP decisions have held that a domain name which wholly incorporates a complainant's registered trademark is sufficient to establish that the domain name and the registered trademark are identical or confusingly similar. LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (March 10, 2010); Farouk Systems, Inc. v. Chen Guoqiang, WIPO Case No. D2010-0005 (March 1, 2010); QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc., WIPO Case No. D2009-0135 (May 6, 2009); British Airways PLC v. Wayne Nicholas / Beroca Holdings B.V.I. Limited, WIPO Case No. D2009-0110 (March 6, 2009); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001);

The only difference between the disputed domain name and Complainant's trademark is the addition of the generic top-level domain (.net) in the disputed domain name. It has been established by numerous UDRP decisions that top level domains can be disregarded when taking into consideration the similarities between a domain name and a trademark. Eurodrive Services and Distribution N.V v. Mehdi Siami,WIPO Case No. D2010-0067 (March 10, 2010); Air System Components, Inc. v. Cristal Enterprises, WIPO Case No. D2009-0064 (March 24, 2009); Research In Motion Limited v. Alon Banay, WIPO Case No. D2009-0151 (March 20, 2009); PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2009-0009 (March 10, 2009); Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003 (February 24, 2009); United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (October 5, 2007); RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 (July 26, 2005).

The Administrative Panel finds the disputed domain name to be identical to Complainant's trademark in satisfaction of the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has submitted evidence showing that the trademark AIR LIQUIDE is registered to Complainant in France and Korea. Complainant has also submitted evidence showing that it uses the trade name “Air Liquide.”

Complainant contends that it has never consented to Respondent's use of its trademarks, trade name and corporate name.

Complainant contends that Respondent has made no active use of the disputed domain name since its registration.

Complainant contends that Respondent is a company in Korea whose activities are not known.

Complainant contends that the term “air liquide” is not a descriptive word in which Respondent may have any legitimate interest.

Complainant contends that Respondent is not commonly known by the disputed domain name and thus cannot claim that it has any rights or legitimate interests in the disputed domain name.

Because Respondent did not respond to the Complaint, based on the unchallenged evidence presented by Complainant it could be inferred that Respondent does not have rights or legitimate interests in the disputed domain name. Freeserve.com plc. V. JKC Information Technology Limited, WIPO Case No. D2001-0180 (May 3, 2001); Xerox Corp. v. Stonybrook Investments, Ltd., WIPO Case No. D2001-0380 (May 22, 2001); British Airways PLC v. Wayne Nicholas/Baroca Holdings B.V.I. Limited, WIPO Case No. D2009-0110 (March 6, 2009); Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case D2002-0806 (October 16, 2002); 1-800-Flowers.com, Inc., Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977 (October 13, 2006); Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (June 27, 2000).

The Administrative Panel finds that Respondent has no rights or legitimate interests in the disputed domain name in satisfaction of the requirements of paragraph 4(a)(ii) and paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Complainant must prove that Respondent registered and used the disputed domain name in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

Complainant is a global provider of industrial and medical gases and related services. Complainant conducts business in Korea where it has a Korean subsidiary. Respondent is a company located in Korea. Respondent could not have been unaware of Complainant considering that Complainant is a major global company that owns the registrations for the trademark AIR LIQUIDE in Korea. It is quite unlikely that Respondent chose a domain name which is identical to Complainant's trademark by mere coincidence. Respondent deliberately chose a domain name which it knew or should have known is identical to Complainant's trademark and is strongly associated with Complainant. Numerous UDRP decisions have held that a finding of bad faith can be made where Respondent knew or should have known of the trademark before registering the domain name. The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113 (March 23, 2009); Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365 (February 18, 2002); Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524 (August 1, 2005); Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517 (August 1, 2005); Sprunk-Jansen A/S v. Chesterton Holdings, WIPO Case No. D2006-1080 (November 17, 2006).

Respondent has not shown that it is preparing to make use of the domain name in connection with a bona fide offering of Respondent's goods or services. The disputed domain name does not link to an active website but to a parking website. Such “inaction” can constitute registration and use in bad faith, a holding established by the panel in Telstra Corporation Limited, supra, and which has since been adopted by numerous UDRP panels. Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 (March 15, 2001).

The disputed domain name directs Internet users to a website called “sedo.com,” a website wherein domain names, including the disputed domain name, are offered for sale. Such offer for sale of the disputed domain name by Respondent constitutes registration and use of the domain name in bad faith. Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551 (February 4, 2001).

Furthermore, the disputed domain name directs Internet users to a parking website which features advertising links to third party websites. Numerous UDRP decisions have held that such revenue-generating use of another's trademark can constitute registration and use of the domain name in bad faith. McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353 (November 14, 2007); Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254 (October 23, 2007); Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 (April 26, 2007); Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 (December 14, 2007).

The Administrative Panel finds that Respondent has registered and used the disputed domain name in bad faith in satisfaction of the requirements of paragraph 4(a)(iii) and paragraph 4(b) 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 <airliquide.net> be transferred to Complainant.

Junghye June Yeum
Sole Panelist

Dated: March 26, 2010