DEUTSCHE MESSE AG v. Kim Hyungho

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Deutsche

Messe AG v. Kim Hyungho

Case

No. D2003-0679

1. The Parties

The Complainant is Deutsche

Messe AG, Hanover, Germany, represented by Gramm, Lins & Partner, GbR, Germany.

The Respondent is Kim Hyungho,

Gwangju, Republic of Korea.

2. The Domain Name and

Registrar

The domain name in dispute

<cebit.com> is registered with Hangang Systems Inc. dba Doregi.com.

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the “Center”) on August

28, 2003. On August 29, 2003, the Center transmitted by email to Hangang

Systems Inc. dba Doregi.com a request for registrar verification in connection

with the domain name at issue. On September 2, 2003, Hangang Systems Inc.

dba Doregi.com transmitted by email to the Center its verification response

confirming that the Respondent is listed as the registrant and providing the

Respondent’s administrative, billing, and technical contact details. In

response to a notification by the Center that the Complaint was administratively

deficient, the Complainant filed an amendment to the Complaint on September

5, 2003, correcting the deficiency regarding jurisdiction but requested that

the issue of language be decided by the Panel. The Center verified that

the Complaint, together with the amendment thereto, satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 proceedings commenced on September 12, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

October 2, 2003. The Response was filed with the Center on September

29, 2003.

The Center appointed Boh

Young Hwang as the sole panelist in this matter on October 8, 2003.

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.

In response to the request

by the Complainant for permission to submit a Supplemental Filing, the Panel

rendered the Procedural Order No. 1, allowing the Complainant to submit the

Supplemental Filing and allowing both parties to submit any further documents

within 10 days from Center's notification of the Procedural Order No. 1.

The Complainant submitted its Supplemental Filing on October 2, 2003, and other

than that, no further documents have been submitted by either party.

The language of the proceeding

is English but, in accordance with Paragraph 11 of the Rules and Panel Procedural

Order No. 1, the documents submitted by the Respondent in Korean are also accepted.

4. Factual Background

Over the past 25 years,

the Complainant has organized and conducted the trade fair and exhibition in

the area of computer technology in Hanover, Germany, named “CeBIT”.

Many companies from around the world have been participating in the “CeBIT”

exhibition and Korean companies are no exception. For example, between

1997 and 2000, the “CeBIT” exhibition hosted between 30 to 70 exhibitors from

Korea.

The Complainant registered

the trademarks “CEBIT” or “CeBIT” in a number of countries. In Korea,

the wordmark “CeBIT” has been used frequently for decades by the Complainant

to invite Korean companies to the “CeBIT” exhibition through newspaper and

other mass media.

The domain name in dispute

has been registered by the Respondent in December 2000. In February 2001,

the Complainant had filed a UDRP Complaint against the Respondent on the domain

name in dispute, and the case was opened under the WIPO

Case No. D2001-0232. However, the case has been finally closed

in May 2001, due to the Complainant’s failure to reply to the Complaint Deficiency

Notification by the Center. A copy of the Complaint filed in the WIPO

Case No. D2001-0232 above with its Annexes was sent to the Respondent’s

postal address by the Complainant.

The Respondent filed a

trademark application on March 6, 2002, regarding the mark “cebit, 새빛” before

the Korean Intellectual Property Office (“KIPO”) for dust-blocking glasses

and certain other products, and the trademark has been duly registered by the

KIPO on July 31, 2003.

Meanwhile, with the Complainant’s

letter dated April 10, 2003, the parties engaged in negotiations in writing

exploring the possibility of voluntary transfer of the domain name in dispute

by the Respondent. However, the negotiations were not successful due to

the parties’ failure to agree upon the amount of the consideration for such

transfer. The Complainant proposed an amount in the range of US$7,000

to US$15,000, while the Respondent in the range of US$65,000 to US$85,000.

The domain name in dispute

is currently used by the Respondent for a website which contains and displays

certain information about eyes and optical products.

5. Parties’ Contentions

A. Complainant

The domain name in dispute

<cebit.com> is identical or confusingly similar to the trademark

and service mark “CEBIT” and “CeBIT” in which the Complainant has rights.

The Respondent has no rights

or legitimate interests in respect of the domain name in dispute.

Although the Respondent registered a trademark which includes the word “cebit”,

the Respondent filed its trademark application after the Complainant had already

acquired trademark rights regarding its “CeBIT” mark in various countries

around the world, and also after the Respondent became aware of the possible

conflict with the Complainant’s right to use the domain name in dispute because

the Complainant had commenced an arbitration proceeding against Respondent in

the year of 2001.

The domain name in dispute

was registered and is being used in bad faith by the Respondent. The Respondent

registered the domain name in dispute for the purpose of selling it to the trademark

owner (the Complainant) for an amount, which does not correspond with the cost

of registration, and in the meantime, is using the domain name with the intention

to attract Internet users to the Respondent’s website to make commercial gains.

B. Respondent

The purpose of registration

of the domain name in dispute by the Respondent is to maintain a website dealing

with various optical products of the Respondent, and the Respondent is currently

operating the website using the domain name in dispute.

The Respondent has obtained

rights and legitimate interests in respect of the domain name in dispute by

registering the trademark “cebit, 새빛” in Korea on July 2003.

The Respondent’s proposed

amount for a voluntary transfer of the domain name, namely US$85,000, is based

on a fair calculation of the total amount invested or expended by the Respondent

during the last 2 years in maintaining the website and related business.

Since the website that

is currently operated by the Respondent using the domain name in dispute is

dealing with optical products, there is no likelihood of confusion among the

general Internet users between the products provided by the Respondent and the

services provided by the Complainant.

6. Discussion and Findings

A. Selection of Language

The Complaint was filed

in the English language. The Respondent asserts that all documents in

the arbitration proceeding should be filed in the Korean language, which is

the language of the registration agreement for the domain name in dispute, whereas

the Complainant asserts that English should be the language of the proceeding.

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 comfortability 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, it

is without question that the registration agreement for the domain name in dispute

was made in the Korean language. However, it is also apparent from the

written communications exchanged between the parties with respect to a possible

voluntary transfer of the domain name in dispute that the Respondent has no

difficulties in communicating in the English language. The English used

by the Respondent in his letters demonstrates his ability to understand and

communicate in English without difficulties.

On the other hand, the

Complainant is not able to communicate in Korean and therefore, if the Complainant

were to submit all documents in Korean, the arbitration proceeding will be unduly

delayed and the Complainant would have to incur substantial expenses for translation.

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 (i) English shall be the language of administrative proceeding in

this case, but on the condition that (ii) the Respondent shall be permitted

to submit any documents or assertions in Korean.

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 domain name in

dispute 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 domain

name in dispute; and

(iii)

the domain name in dispute has been registered and is being used in bad faith.

B1. Identical

or Confusingly Similar

The Complainant has registered

and currently owns trademarks and rights on the marks “CEBIT” and “CeBIT”,

and these registered marks are in fact identical with the domain name in dispute

excluding the part “.com” which merely shows the character of the domain name.

Therefore, the Complainant has established this element.

B2. Rights

or Legitimate Interests

Based on the evidence submitted

before the Panel, it is recognized that the marks “CEBIT” and “CeBIT” owned

by the Complainant were widely known and recognized around the world including

Korea before the domain name in dispute was registered by the Respondent.

It is also clear from the record that the Respondent has registered and currently

owns the trademark “cebit, 새빛” in Korea. Therefore, the central issue

is whether or not the Respondent’s registration of the trademark including

the word “cebit” can be construed to give the Respondent rights or legitimate

interests in the domain name in dispute.

First of all, it should

be stated that the registration of a trademark which is identical with or similar

to the domain name in dispute does not always or automatically provide the registrant

with rights and legitimate interests in respect of the domain name, although

it can be strong evidence of the existence of such rights or legitimate interests.

The existence of any right or legitimate interest on the domain name in dispute

should be determined by taking in consideration all relevant factors, including

without limitation, the registration of a trademark corresponding to the domain

name.

As demonstrated in Paragraph

4(c) of the Policy, the use of a domain name or a name corresponding to the

domain name can be recognized as giving the user rights and legitimate interests

only when such use is made “in good faith”. In the present case, it

is recognized from the evidence submitted by the parties that the Respondent

filed its trademark application after the Complainant’s filing of the complaint

in the WIPO Case No. D2001-0232 case. In

this regard, it seems that the Respondent had or could at least have had an

ample opportunity to notice the Complainant’s desire to file a legal proceeding

for transfer of the domain name in dispute.

Moreover, upon observation

of the Respondent’s website using the domain name in dispute, it is noted that

the website consists only of three web-pages in total, and also that although

the main page of the website shows ten categories of information including the

Company Introduction, Q&A, Eye Info, Company News, Product Introduction,

Guestbook, Eye Times, Eyedaq, Color Vision and Eyewearmall, only two of those

categories, namely Eye Info and Eyewearmall, contain information, which is displayed

only on one simple webpage. The website does not provide any details about

the identity of the entity that operates the website, and no further clicks

are allowed regarding all of the twelve products shown in Eyewearmall.

Furthermore, apart from the operation of the above website, the Respondent has

not submitted any evidence which goes to show that the Respondent has made actual

use of the registered trademark or maintained any actual business using the

trademark.

Therefore, in consideration

of all of the circumstances described above, including, among others, the reputation

and wide recognition of the Complainant’s trademark which had been firmly established

and had existed prior to the Respondent’s registration or use of the domain

name in dispute and the lack of evidence establishing good faith in the Respondent’s

use of the domain name in dispute and his registered trademark, the Panel concludes

that the Respondent has no rights or legitimate interests in respect of the

domain name in dispute.

Therefore, the Complainant

has established this element of its case.

B3. Registered

and Used in Bad Faith

The Panel finds that, knowing

of the Complainant’s well established reputation in the trademark “CEBIT”

and/or “CeBIT”, the Respondent, by using the domain name in dispute, has intentionally

sought to cause confusions among Internet users as to the source, sponsorship,

affiliation or endorsement of his website. Further, the evidence submitted

before the Panel shows that the Respondent proposed to receive a sum of at least

US$65,000 in exchange for the transfer of the domain name in dispute to the

Complainant, which also makes this case fall under Paragraph 4(b)(i) of the

Policy. As stated above, the Respondent’s registration of the trademark

and operating a website using the domain name in dispute do not constitute sufficient

evidence to negate the existence of bad faith in the Respondent’s use of the

domain name in dispute.

Therefore, the Complainant

has also established this element of its case.

7. Decision

For all of the foregoing

reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules,

the Panel orders that the domain name <cebit.com> be transferred to the

Complainant.

Boh Young Hwang

Sole Panelist

Dated: November 13, 2003

More cases by this complainant

• Deutsche Messe AG — D2001-0232 · Terminated