WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sven Beichler v. Yang Kyung Won, Lee Sujin

Case No. D2011-0535

1. The Parties

Complainant is Sven Beichler of Wermatswil, Switzerland, represented by Bernasconi & Bernasconi Attorneys-at-Law, Switzerland.

Respondents are Yang Kyung Won of Seongnam Si, Republic of Korea and Lee Sujin of Seoul, Republic of Korea (the “Respondent”), appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <myswisschocolate.com> (“Domain Name”) is registered with Gabia, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2011. On March 24, 2011, the Center transmitted by email to Gabia, Inc. a request for registrar verification in connection with the Domain Name. On March 25, 2011, Gabia, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 25, 2011, providing the registrant and contact information disclosed by Gabia, Inc. and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 6, 2011.

On March 25, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. Respondent submitted a request that Korean be the language of the proceedings and Complainant submitted a request that English be the language of the proceeding on March 30 and 31, 2011 respectively. On April 6, 2011, 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 the administrative panel (when appointed) would have the authority to determine the language of the proceeding

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” 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 Respondent of the Complaint, and the proceedings commenced on April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. Respondent sent an informal email Response with attachments on April 25, 2011.

The Center appointed Andrew J. Park as the sole panelist in this matter on May 4, 2011. 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 is Mr. Sven Beichler of Switzerland. Complaint is the holder of several trademark registrations for the mark MY SWISS CHOCOLATE.CH, including in Switzerland, the European Community, and the United States of America, and is used in connection with his business as a chocolates manufacturer. The earliest registration date of the MY SWISS CHOCOLATE.CH mark is February 9, 2010. Complainant’s business is operated through its website “www.myswisschocolate.ch” and is claimed to be very popular, with approximately 16,422 facebook users as of March 22, 2011.

Respondent Yang Kyung Won and Lee Sujin are individuals of the Republic of Korea. Neither Respondent appears to own any registered trademarks in MY SWISS CHOCOLATE. At the time of the Complaint, the Domain Name <myswisschocolate.com> directed Internet users to a German language website that is directed towards chocolates, the same business as Complainant.

5. Parties’ Contentions

A. Complainant

Complainant’s main arguments are the following:

1. Identical or Confusingly Similar

Complainant contends that the Domain Name is identical to its MY SWISS CHOCOLATE.CH trademark registered in Switzerland, the European Community, and the United States, as well as to its <myswisschocolate.ch> domain name registration. Accordingly, Complainant argues that the Domain Name is identical and/or confusingly similar to a trademark in which it has rights.

2. Rights or Legitimate Interests

Complainant contends that Respondent does not have any trademark registrations or trade names corresponding to the Domain Name. Further, Complainant claims that Respondent does not appear to be commonly known by the Domain Name. Finally, Complainant contends that Respondent’s website under the Domain Name is directed towards a “landing site” relating to chocolates, which is identical to Complainant’s business, and thus, all of the foregoing show that Respondent is aware that the Domain Name corresponds to Complainant’s trademark and was also aware of this fact at the time it obtained registration of the Domain Name.

3. Registered and Used in Bad Faith

Complainant contends that its trademark registrations predate the transfer date of the Domain Name between the two Respondents and that had Respondent conducted an appropriate search prior to the acquisition of the Domain Name, they would have discovered Complainant’s trademark rights to the Domain Name. As a result, Complainant alleges that Respondent must have known of Complainant’s trademark rights.

Complainant also contends that it’s MY SWISS CHOCOLATES.CH mark is a well-known trademark in connection with chocolates and that it contacted Respondent in an effort to seek the voluntary transfer of the Domain Name. Complainant claims, however, that Respondent first informed that it intended to use the Domain Name in connection with a business that it planned to start, and that shortly thereafter, Respondent offered to sell the Domain Name to Complainant for the amount of USD 6,600.

Complainant further contends that Respondent is making unfair commercial use of the Domain Name and is using it in bad faith based on the claim that Respondent is seeking to attract and is diverting, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.

B. Respondent

In response to the Complaint, Respondent Yang advised Complainant that he no longer owns the Domain Name. He did not, however, formally respond to the substantive issues raised by the Complaint.

Respondent Lee provided an informal one-page email response claiming that she had purchased the Domain Name with the intention of using it in connection with a Swiss chocolate business. She claims that when she first discovered the Domain Name, she tried to contact the owner to acquire it but was unsuccessful in reaching the owner. However, she claims to have learned that the Domain Name had been registered to a new party, namely Respondent Yang and that upon learning this information, she contacted him and purchased the Domain Name.

She further claims that she does not understand why she must forfeit the Domain Name when she has a legitimate business plan to use same. As a result, she claims that she must protect her ownership right to the Domain Name, and in order to do so, she wants to receive a copy of the Complaint in the Korean language because her English language skills are not good.

6. Discussion and Findings

6.1 Language of the Proceedings

Although the language of the registration agreement, and accordingly the default language of the proceedings is Korean, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293).

Complainant submitted that English should be the language of the proceedings on the grounds that Respondent has familiarity with the English language and that Complainant is not able to communicate in Korean.

In determining the language of the proceedings, the Panel must balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. The reasoning cited by Complainant is helpful to address the question of whether English should be the language of the proceedings in preference to the default language. The Panel is, for example, persuaded by the fact that Respondent Yang effectively communicated with Complainant via emails in English.

Accordingly, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.

6.2 Cyberflight

As noted in Paragraph No. 3 above, the Center informed Complainant that Respondent Lee is listed as the registrant of the Domain Name, as disclosed by the registrar Gabia, Inc., and invited Complainant to amend its Complaint. Although Complainant filed an amendment to the Complaint, it took the position that the only true and correct respondent is Respondent Yang, not Respondent Lee, based on the argument of cyberflight.

Specifically, Complainant argues that Respondent Yang transferred the Domain Name to Respondent Lee a mere 9 hours after its Complaint had been filed with the Center and sent to both Respondents, and that since this timeline clearly shows that the transfer occurred after the filing of the Complaint and during the pendency of the administrative proceeding, Respondent Yang’s behavior constitutes cyberflight.

The available information and evidence of record clearly shows that (1) the transfer of the Domain Name from Respondent Yang to Respondent Lee occurred shortly after Complainant ‘s Complaint was filed with the Center and served on Respondents Yang and Lee but before Respondent Yang was contacted by the Center and the Domain Name was locked; (2) the Center, in an effort to inform all known potential parties in interest, notified the Complaint not only to Respondent Yang, the original named Respondent in the Complaint, but also to Respondent Lee, the registrant of the Domain Name as disclosed by the registrar Gabia, Inc.; and (3) neither Respondent filed a formal Response.

In view of these facts, as well as the absence of information to the contrary, it is the decision of this Panel that the change of the registrant information constitutes a form of “cyberflight” designed to frustrate third-party attempts to challenge the validity of the ownership rights to the Domain Name and that it amounts to bad faith. Accordingly, for purposes of this decision, the Panel treats both Respondent Yang and Respondent Lee as one, and will therefore use the term “Respondent” to refer to either or both.

6.3 Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Domain Name to Complainant. Those requirements are that: (i) the Domain Name 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 in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis 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, pursuant to paragraph 15(a) of said Rules.

A. Identical or Confusingly Similar

Complainant has established its rights in the mark MY SWISS CHOCOLATE.CH by virtue of the evidence of its trademark registrations in Switzerland, the European Community, and the United States and its registered domain name <myswisschocolate.ch>. The Panel is therefore satisfied that MY SWISS CHOCOLATE.CH is a registered trademark owned by Complainant.

The next question is whether the Domain Name is identical or confusingly similar to the trademark. The answer is that it is. The Domain Name consists, first of all, of the entirety of Complainant’s MY SWISS CHOCOLATE.CH trademark. Further, the Domain Name is identical to Complainant’s my SWISS CHOCOLATE.CH trademark when the “.com” TLD and the “.ch” ccTLD are discounted.

Secondly, the Domain Name does not have any additional words as part of it that detract from or minimize the effect and dominance of the MY SWISS CHOCOLATE.CH trademark in the Domain Name.

For the above reasons, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s MY SWISS CHOCOLATE.CH trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

Complainant owns a trademark registration for MY SWISS CHOCOLATE.CH that is registered in Switzerland, the European Community, and the United States. Complainant also owns the domain name <myswisschocolate.ch> referring to the trademark MY SWISS CHOCOLATE.CH where it conducts sales and marketing of chocolate products under the “My Swiss Chocolate.ch” name. On the other hand, Respondent does not appear to own a registered trademark with the term “my swiss chocolate” and does not otherwise appear to trade under the name “My Swiss Chocolate.” Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the mark MY SWISS CHOCLATE.CH by Respondent or any person operating the website to which the Domain Name directs Internet users. Finally, Respondent has not provided any evidence that it is commonly known by the Domain Name.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has rights or legitimate interests in respect of the Domain Name. Furthermore, as pointed out by Complainant in its Complaint, the Domain Name directed Internet users to a German language website that concerns chocolates.

For the above reasons, the Panel finds that Respondent does not have rights or legitimate interests with respect to the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

The evidence shows that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s MY SWISS CHOCOLATE.CH trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the use of the Domain Name is to take advantage of the similarity between the Domain Name and Complainant’s website to draw Internet users to that site for commercial advantage. No convincing evidence has been presented showing that Respondent has any connection to the name “My Swiss Chocolate.”

Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered to Respondent, Complainant had already established a reputation as a chocolate manufacturer under the MY SWISS CHOCOLATE.CH mark and was the owner of registered trademarks and a domain name that incorporated the mark MY SWISS CHOCOLATE.CH. Accordingly, the evidence shows that Respondent has been using the Domain Name to direct Internet users who believe that the Domain Name is associated with Complainant. This behavior evidences bad faith.

For the above reasons, the Panel finds that Complainant has shown that the Domain Name has been registered and is being used in bad faith by Respondent.

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 <myswisschocolate.com> be transferred to Complainant.

Andrew J. Park
Sole Panelist
Dated: May 18, 2011