WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Holcim Ltd, v. Zoo / UJ0205

Case No. D2014-0718

1. The Parties

The Complainant is Holcim Ltd of Jona, Switzerland, represented by Bovard Ltd, Switzerland.

The Respondent is Zoo of Incheon, Republic of Korea / UJ0205 of Uiwang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <lafargeholcim.com> is registered with HANGANG Systems Inc. dba Doregi.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2014. On May 5 and 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 21, 2014.

On May 20, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On May 21, 2014, the Respondent requested Korean to be the language of the proceeding, and May 23, the Complainants requested for English to be the language of the proceeding.

The Center verified that the Complaint together with the amendment 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 May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Respondent did not submit any formal response.

The Center appointed Andrew J. Park as the sole panelist in this matter on June 27, 2014. 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

The Complainant is Holcim Ltd of Jona, Switzerland. The Complainant was formed by the merger of Lafarge and Holcim Ltd, two of the world’s largest cement and construction materials companies, on April 7, 2014. The merger was announced in a press release on April 7, 2014. According to the press release, the new company would be named LafargeHolcim.

Both companies, LaFarge and Holcim Ltd owned several trademark registrations for the terms LAFARGE and HOLCIM. Prior to the press release, legal counsel for LaFarge and Holcim Ltd reserved the domain names <lafargeholcim.org>, <lafargeholcim.net>, <lafargeholcim.biz>, <lafargeholcim.co>, and the Swiss trademark LafargeHolcim. The domain name <lafargeholcim.com> was already registered to “La Hol” on Friday, April 4, 2014. Legal counsel for LaFarge and Holcim Ltd contacted the registrant who identified himself as Mr. Park and offered him USD 500.00 to transfer the domain name <lafargeholcim.com> to Holcim Ltd. Mr. Park countered with an offer of USD 120,000.00 to sell the domain name. Legal counsel then offered USD 1,500.00. On April 29, 2014, Mr. Park reduced his offer to USD 30,000.00. Mr. Park’s negotiations with the Complainant were in English.

The registrant information of disputed domain name changed several times in one month since its initial registration to the Complaint filing. The disputed domain name <lafargeholcim.com> was initially registered to an individual “La Hol”. Thereafter, the registrant information changed to “Park J-S” and was subsequently transferred to the “Zoo” organization on April 30, 2014. After the filing of the Complaint, the Registrar identified the registrant as “UJ0205”. The website at the disputed domain name redirects users to the website “www.antitrustcampaign.com”. There is no content on the redirected website page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name wholly incorporates the Complainant’s trademarks LAFARGE, HOLCIM, and LAFARGEHOLCIM.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that the Respondent is not affiliated with the Complainant whatsoever and there is no evidence that the Respondent has (a) used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (b) been commonly known by the disputed domain name; or (3) made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

The Complainant further alleges that there is no explicable legitimate reason as to why the Respondent chose to register the disputed domain name only three days before the merger of Lafarge and Holcim Ltd, and that Mr. Park’s offers to sell the disputed domain name for USD 120,000.00 and USD 30,000.00 makes it clear that the disputed domain name was registered for the purpose of exploiting the Complainant for money.

Finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith and with full knowledge of the LAFARGE and HOLCIM trademarks, and the pending merger of Lafarge and Holcim Ltd. Thus, the Complainant submits that the Respondent’s awareness of the merger and an intention to profit from it was the motive behind the registration of the disputed domain name by the Respondent. According to the Complainant, “[a]s the domain was only registered three days before the merger was disclosed about Lafarge and Holcim, somebody has misused insider knowledge, this seems quite obvious for the present case.” The Complainant contends that the selling price of USD 30,000.00 is still far too much, and evidence of the Respondent’s bad faith.

For all these reasons, the Complainant requests that the disputed domain names be transferred.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, it is noted that an individual by the name of Youn Jeong Kwon submitted several emails to the Center stating the following:

1. She is the owner of the disputed domain name. However, she claims that the name of the Respondent on the Complaint is not her, and therefore, she believes that the Complaint should be dismissed.

2. She claims that since she does not understand English, she does not understand the nature of the Complaint and why she has been brought into this case. Thus, she claims that in the interests of fairness, she wants the Complaint translated to Korean.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s 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. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

6.1 Language of the Proceeding

The Panel has noted communications from the Complainant and the Respondent regarding the language of the proceeding.

According to the Rules the language of the registration agreement should be the language of the proceeding, unless there is an agreement between the parties for a different language to be the language of the proceeding or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in the language other than that of the registration agreement, translate the Complaint into the language of the registration agreement, or submit a request for the proceeding to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceeding.

In this case, the Panel finds that English should be the language of the proceeding for the following reasons:

- The disputed domain name consists entirely of ASCII characters. It contains the two words “lafarge” and “holcim”, both being Latin-based and the Complainant’s trademarks. The disputed domain name does not contain any other (e.g., Korean) characters.

- The Respondent or persons associated with the Respondent have knowledge of English sufficient to understand the nature of the present proceeding. This is evident from the correspondence in English received by the Complainant from Mr. Park, who is purportedly associated with the initial registrant and the Respondent, which the Respondent has not disputed, offering to arrange for the transfer of the disputed domain name <lafargeholcim.com> for a substantial fee.

- The website at the disputed domain name redirects users to the web address “www.antitrustcampaign.com”, which is entirely in English.

- The Complainant would incur considerable further expense and inconvenience in retaining the services of a translator to translate its filings into Korean.

- The Respondent failed to file a formal response to the Complaint, and only disputed the language of the proceeding through several emails to the Center requesting a Korean translation of the Complaint which the Panel surmises was a veiled attempt to further frustrate the Complainant and the present proceeding.

Accordingly, the Panel finds that based on the totality of the circumstances of this case, there is sufficient evidence of either the Respondent or persons associated with the Respondent having command of English necessary to understand the nature of the present proceeding. Also, the Panel notes that the Respondent has failed to file a formal response in either English or Korean and the Panel may draw such inferences from this fact as it considers appropriate (paragraph 14(b) of the Rules). Consequently, the Panel finds that the Complaint, as filed in English, is appropriate. The Panel also finds that it is appropriate to issue the Decision in English.

6.2 Discussion

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.

The Panel finds that the disputed domain name <lafargeholcim.com> in its relevant distinguishing part consists entirely of the Complainant’s trademarks LAFARGE, HOLCIM, and LAFARGEHOLCIM, and the Complainant’s company name.

First, it is uncontroverted that the Complainant has established rights in the LAFARGE and HOLCIM trademarks based on both longstanding use as well as its international trademark registrations. Second, the disputed domain name <lafargeholcim.com> consists of the LAFARGE and HOLCIM trademarks in their entirety. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Third, the addition of the generic Top-Level Domain suffix, such as “.com” after a domain name, is technically required. It is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Moreover, prior to the April 7, 2014 press release, legal counsel for LaFarge and Holcim Ltd reserved the domain names <lafargeholcim.org>, <lafargeholcim.net>, <lafargeholcim.biz>, <lafargeholcim.co>, and the Swiss trademark LafargeHolcim. Legal counsel sought to reserve the domain name <lafargeholcim.com>; however, it had already been registered to “La Hol” on Friday, April 4, only one business day before the merger was announced. Thus, the Panel finds that the Complainant was diligent in applying for trademark registration and should not be prejudiced by the Respondent’s rush to register the name of the merged entity. See Shire Biochem Inc., Shire Pharmaceuticals Group plc and Shire International Licensing B.V. v. Syed Hussain, WIPO Case No. D2002-0453 (where the complainant is a new entity resulting from a merger, it is sufficient that the complainant was diligent in applying for trademark registration promptly after the merger); Bancolombia S.A. v. Elpidia Finance Corporation, WIPO Case No. D2000-0545 (delay in obtaining registration once an application has been made should not prejudice the complainant and “cannot represent an advantage for a registrant of a domain name identical to the service mark following its acquiring notice of the ongoing merger”).

Accordingly, the Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy that the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a formal response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the circumstances surrounding the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) The respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights and legitimate interests.

First, there is no evidence that the Respondent has been commonly known by the disputed domain name. Moreover, there is no evidence that the Respondent was authorized or licensed to use the LAFARGE, HOLCIM, or LAFARGEHOLCIM marks within the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490).

Second, there is no evidence that before any notice of the dispute by the Complainant, the Respondent was using or making demonstrable use of the disputed domain name for a bona fide offering of goods and services. According to the documents submitted by the Complainant the disputed domain name simply redirects users to the website “www.antitrustcampaign.com”. There is no content on the website. This, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case.

Third, the Panel notes that the disputed domain name was initially registered on Friday, April 4, 2014 – only one business day before the merger was announced to the public. It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the pending merger and the Complainant’s trademarks.

Fourth, given that Mr. Park offered to sell the disputed domain name to the Complainant for USD 120,000.00 shortly after it was registered makes it clear that the disputed domain name was registered for the purpose of exploiting the Complainant for money. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462.

Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed 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 the 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.”

As already mentioned, the Respondent did not file a formal response to the Complaint other than its objections to the language of the proceeding in English, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

lt 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 cost is evidence that a domain name was registered and being used in bad faith in contravention of paragraph 4(b)(i) (see adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). Here, the undisputed evidence submitted by the Complainant clearly suggests that the Respondent acquired the disputed domain name in bad faith primarily for the purposes of selling the disputed domain name to the Complainant for an excessive fee upon completion of the merger, i.e., the Panel finds that Registrant’s offers of USD 120,000.00 and USD 30,000.00 to transfer the disputed domain name to the Complainant are clearly excessive.

Moreover, the Complainant has asserted with supporting evidence that the disputed domain name was registered on Friday, April 4, 2014, one business day before the merger of Lafarge and Holcim Ltd was announced to the public and thereafter underwent a series of transfers — which the Panel suspects were an attempt by the Respondent to evade the filing of a dispute. In Syed Hussain, supra, it was determined that evidence of the acquisition of a domain name primarily for the purpose of selling it may be found in the fact that the domain name was registered on the same day as the announcement of the merger. Thus, the Panel finds that the registration of the disputed domain name just one business day before the announced merger is indicative of “misused insider knowledge” and constitutes an opportunistic act by the Respondent with a view to making a profit. See also, Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446 (where the panel found that an opportunistic combination of two well-known trademarks made shortly after the announcement of a merger by someone having no connection with either side of the merging companies amounts to registration and use in bad faith).

Finally, bad faith can be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto. The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant and/or merger. The Panel reasonably finds that since the LAFARGE and HOLCIM marks were widely known, it is very unlikely that the Respondent, at the time of registration or purchase of the disputed domain name, was not aware that it was infringing the Complainant’s LAFARGE and HOLCIM marks, much less the LAFARGEHOLCIM mark of the merged company.

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

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lafargeholcim.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: July 14, 2014