imt robot AG v. Microrobot Co. Ltd

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

imt robot AG . v. Hyung Kim / Microrobot Co. LTD. /Domain Co. LTD.

Case No. D2002-0566

1. The Parties

The Complainant is imt robot AG, Sebastian Piecha of Blumenstrasse 47, 70736

Fellbach, Germany, (the "Complainant"). Complainant is represented

by Dr. Axel Funk and Matthias Wenn of C’M’S’ Hasche Sigle in Stuttgart,

Germany.

The Respondents are Hyung Kim/Microrobot Co Ltd / Domain Co. Ltd. of 40-26

Cheong Dam Dong, Kang Nam Ku, Seoul, Republic of Korea, (the "Respondents").

2. The Domain Name and Registrar

The Domain Name at issue is: <imt-robot.com> (the "Domain Name").

The Registrar is: Register.com, 575 8th Avenue, 11th

floor, New York, NY 10018, United States of America (the "Registrar").

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

the initial complaint in electronic and hard copy on June 18, 2002 and June

26, 2002, respectively. The Center requested an amended Complaint to take into

account the changed and expanded identity of the Respondent and this was filed

in electronic and hard copy on June 27, 2002 and July 3, 2002, respectively

("Complaint"). Between the date of the original and amended Complaint

the Center had requested registrar verification as to the identity of the current

registrant of the Domain Name, and undertaken certain related correspondence

with the Complainant concerning the same. On July 4, 2002 the Center determined

that the Complaint met all the formal requirements of the ICANN Uniform Domain

Name Dispute Resolution Policy (the "Policy"), and the URDP Rules

and WIPO Supplemental Rules. On July 5, 2002 the Center notified the Respondent

of the Complaint of the commencement of administrative proceeding. On July 10,

2002 Respondents confirmed receipt of the Complaint, and there was prior and

subsequent correspondence with Respondents as to the issue of the identity of

the current registrant and owner of the Domain Name. On July 28, 2002 the Center

duly and properly notified Respondents’ default under the Rules. On August 2,

2002 the Center transmitted a notification of the appointment of the undersigned

as the sole panelist in this matter, and shortly thereafter transmitted the

file to the Panel.

4. Factual Background

The Complainant is a German corporation engaged in the manufacture of robots.

Complainant was founded in 1985 by Peter Nagler and was previously known under

the name imt Peter Nagler GmbH, but has recently changed its name and corporate

form to that set forth in the caption of this case. On December 31, 1994,

Complainant applied for a German trademark for the mark "imt", and

this mark was registered on August 17, 1995, for trademark classes

7, 9, 35, 36, 37, 41 and 42. Complainant has also, since 1999, registered the

Domain Name <imt-robot.de>. Complainant has been thus identified with

the business name "imt-robot" and uses this designation in its business

relationships.

Respondent Hyung Kim is the President and CEO of Respondent Domain Co. Limited.

Both of these Respondents are involved in the business of registering, and perhaps

offering for sale, domain names. Among their clients is Microrobot Co. Limited,

the third Respondent here. Respondent Hyung Kim, in a June 22, 2002,

e-mail to Complainant’s legal counsel, identified Domain Co. Limited as an "agent

of Microrobot Co. Limited." Respondent Microrobot Co. Limited is a company

involved, inter alia, in the manufacture or distribution of robot kits

or other robot-related materials and electronic components. Microrobot Co. Limited

operates several web sites in connection with its business which include the

word "Microrobot".

Complainant’s lawyers first sent a demand letter to Respondent Domain Co. Limited

on or about October 25, 2001, asking for the release of the Domain

Name complained of here. This release was refused and a certain amount of communication

ensued, some of which is referred to further below.

5. Parties’ Contentions

Complainant essentially contends that the Domain Name registered by or on behalf

of Respondents is identical and/or confusingly similar to its marks and business

name, and intentionally so; that this misleading impression is created due to

the fact that Complainant and Respondent Microrobot Co. Limited operate in the

same fields of business, i.e. robots; that Respondents have no legitimate

rights to a domain name incorporating "imt" in connection with the

word "robot"; and that the registration of the same was and is in

bad faith. Complainant further points out that the confusing pattern of registration,

links to a Microrobot Co. Limited site, withdrawal of the links, and apparent

putting up of the Domain Name for sale during the February to May 2002 period,

are further indicia of the Respondents’ bad faith and improper behavior.

Complainant accordingly asked that the Domain Name be "released",

i.e. transferred, to it. Respondents have defaulted in this proceeding.

However, prior to, and shortly after, the filing of the Complaint, Respondents

submitted a number of arguments or assertions in various e-mails, and these

are considered herein to the extent pertinent and necessary.

6. Discussion and Findings

The Policy, in its paragraph 4 (a), provides that the Complainant must prove

each of the following:

i. That the Respondents’ Domain Name is identical or confusingly similar to

a mark in which the Complainant has rights, and

ii. That Respondents have no rights or legitimate interests in respect of the

Domain Name; and

iii. That the Domain Name has been registered and has been used in bad faith

Furthermore, paragraphs 4 (b) and (c) of the Policy set out non-exclusive,

but illustrative, circumstances which may demonstrate evidence of registration

and use in bad faith or, contrarily, rights and legitimate interests in the

Domain Name.

i. Identical or Confusingly Similar

Complainant has registered the trademark "imt" since 1995 and has

regularly used it in connection with its robot business since at least that

time. This is sufficient to establish a right to such designation within the

meaning of the Policy.

The Policy is silent as to the specific test for determining confusing similarity.

The registered mark "imt" is, of course, a mere combination of letters,

and one could well envisage the use of that combination in a domain name in

a manner that does not create any confusion with Complainant or its rights.

But there is no such unrelated or non-confusing use here. Complainant registered,

and has used, the mark "imt" in connection with technology, and robot

technology and applications in particular. (See German Trademark registration

at Exhibit K1: "Teilen für den Roboterzugriff, … Robotertechnik,

… Robot und Peripheriegeräte", etc.). Respondents’ registration

of the Domain Name with the identical "imt" mark and a hyphen followed

by the word "robot" constitutes precisely the business and sectoral

use which Complainant also makes of its mark. This is, at a minimum, "confusingly

similar" within the meaning of the Policy. (See generally,

Caterpillar Inc. v. Miguel Miyar Jr., NAF Case No. FA0009000095623).

This first leg of Complainant’s burden under Paragraph 4 (a) of the Policy is

satisfied.

ii. Respondents’ Rights or Legitimate Interest in the Domain Name

Respondents in their e-mails of November 22, 2001, state that Respondent Microrobot

Co. Ltd., has been appointed as an authorized company for the developing of

industrial robot remote control systems for "IMT2000", a Korean government

project. From this Respondents imply, but do not actually state, that they have

a legitimate right to use "imt" in the Domain Name. All evidence and

inferences suggest that Respondents’ citation of the IMT2000 project was misleading

and self-serving. First it occurred only after Respondents Kim and Domain Co.

Ltd., had received two demand letters with deadlines from Complainant’s counsel,

together with follow up e-mails. The initial reaction of these Respondents was

to identify their client for the Domain Name as Microrobot Corporation "a

pioneer manufacturing company of robots in Korea". Further, the evidence

submitted shows that the "IMT2000" project is for the purpose of developing

a new generation of mobile telephones (IMT2000 = International Mobile Communications

2000). Respondents use the mark "imt" in the Domain Name solely in

connection with "robot" and do not append "2000". Moreover,

there is no indication on Respondents’ web site, or elsewhere, of their involvement

in the "IMT2000" project or that the letters "imt" are being

used in connection with mobile phones. Assuming that Respondent Microrobot is

indeed involved in the "IMT2000" project, which has not been demonstrated,

it might well have had a right or legitimate interest to use "IMT2000"

or a similar formulation in connection with that business, but not to use "imt-robot"

in connection with its robot business, as it has done here.

Complainant also points out that Respondent Microrobot Co. Limited ceased using

the Domain Name from approximately February 18, 2002, through June 18, 2002,

when the Domain Name was listed for sale. (When this panelist visited the Domain

Name site on August 7, 2002, and August 9, 2002, he was

automatically connected to Microrobot Co. Limited’s robot business related web

site; so the sale venture has apparently ended). While the above is inconsistent

with Respondents’ assertion that it was using the Domain Name in connection

with the "IMT2000" project, or any other legitimate use, it also goes

to the issue of bad faith, discussed below.

iii. Registration and Use in Bad Faith

Respondents registered the Domain Name in the year 2000, when Complainant had

an established business in the field of robotics, a national trademark for "imt",

and had registered the domain name <imt-robot.de>. Respondents’ registration

of the three letters "imt" together with "robot" can hardly

have been serendipitous, given that Microrobot is in the robot business. Respondent

Hyung Kim/Domain Co. Limited’s initial November 1, 2001, e-mail stating

that the Domain Name was registered for Microrobot’s "business" as

a robot manufacturer and that it has "owned lots of associated domain names

besides ‘imt-robot.com’", is further strong inference of bad faith registration,

as it evidences an intent to tie-up various "robot" associated domain

names for a business motive.

The evidence of bad faith "use" of the Domain Name is even more compelling.

Both previously and currently the Domain Name was used to direct Internet users

to Respondent Microrobot Corporations’ own web site (<www.microrobot.com>).

This panel is quite satisfied that Respondent Microrobot Corporation intended

thereby to attract, for commercial gain, users to its own web site by using

the combination of "imt" and "robot" to create a likelihood

of confusion. This bad faith use falls fully within the example given in paragraph

4 (b) (iv) of the Policy, and therefore clearly meets Complainant’s burden on

this point.

It is accordingly not necessary to examine in detail whether the other complained

of behavior of Respondents also satisfies the bad faith "use" requirement.

This behavior includes evidence of the temporary placement of the Domain Name

for sale, and misinformation and evasive tactics on the part of Respondents

once they learned of Complainant’s challenge to the Domain Name. Suffice it

here to say that none of this additional evidence is consistent with any good

faith or legitimate use or behavior on the part of any of the Respondents.

7. Decision

For all the foregoing reasons, the Panel decides that the Complainant has proved

each of the three elements of Paragraph 4 (a) of the Policy. Therefore the Panel,

pursuant to paragraph 4 (i) of the Policy, orders that the Domain Name <imt-robot.com>

be transferred to Complainant, imt robot AG.

Nicolas Ulmer

Sole Panelist

Dated: August 16, 2002