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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SGS Sociйtй Gйnйrale de Surveillance S.A. v. Inspectorate

Case No. D2000-0025

 

1. The Parties

The Complainant is SGS Sociйtй Gйnйrale de Surveillance S.A., a Corporation of Geneva, Switzerland. The Respondent is Inspectorate (Inspectorate Korea Ltd.), a Corporation of Seoul, Korea.

 

2. The Domain Names and Registrar

The domain names at issue are "SGS.NET" and "SGSGROUP.NET", both registered with Network Solutions, Inc. ("NSI"), of Herndon, Virginia, United States of America.

 

3. Procedural History

On January 31, 2000 the WIPO Center received by e-mail a Complaint dated on the same day. A copy was received by the Center on February 2, 2000. On January 31, 200 Complainant sent his Complaint in hard copy by courier to Inspectorate Korea Co., Ltd.

On February 2, 2000 the Center sent to NSI a request for confirmation that the Registrar had received a copy of the Complaint, that the domain names "sgs.net" and "sgsgroup.net" were registered with NSI, that the registrant is Inspectorate (Inspectorate Korea) Sangjeriche Center A-Dong 501, 899-5, Dasechi-Dong, Kangnam-Ku, Seoul, KR 135-280, and asked further NSI to provide full contact details available in NSIґs WHOIS database for the domain name registrant, as well as technical, administrative and billing contacts for the domain names. The Center further requested NSI to confirm that the ICANN Uniform Domain Name Dispute Resolution Policy is in effect, and to indicate the current status of the domain name.

On February 3, 2000 NSI sent to the WIPO Center an email confirming that the Complaint had been received by NSI; that NSI is the Registrar of the domain name registrations; that Inspectorate is the current registrant of the "sgs.net" and "sgsgroup.net" registrations; that Registrant is the Inspectorate, Sangjeriche Center #501, 899-5, Dasechi-Dong, Kangnam-Ku, Seoul, Seoul 135-280, Korea; that the registered domain names are "sgs.net" and "sgsgroup.net"; that the administrative, technical and Zone contact is Haeseong, Kim being confirm@sgs.net his e-mail adress, with phone number 82-2-567-6367 and fax number 82-2-501-5854. The billing contact is this same person with e-mail at dckang@inspectorate.net and same phone and fax numbers as above. NSI confirms that its 5.0 Service Agreement is in effect, and indicates that the registrations are in "active" status.

On February 8, 2000 the Center sent an email to Complainant requesting that Complainant sends two more copies of the Complaint, that Complainant specify jurisdiction as required by Paragraph 3(b)(xiii) of the Rules, to make the statement required by paragraph 3(b)(xiv) of the Rules, and to confirm that Complainant had send the Complaint Transmittal Coversheet to the Respondent. On the same day Complainant responded fully to the requests of the WIPO Center.

On February 9, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Complainant by e-mail, to Inspectorate, D.C. Kang. Kim Haeseong, S.K.Hwang at sgs@sgs.net, postmaster@sgs.net, and postmaster@sgsgroup.net by courier, facsimile and e-mail. The Center also sent a copy to ICANN and NSI. In this communication the Center verified the Complaintґs compliance with formal requirements as provided in the Policy, Rules and WIPO Supplemental Rules, and that payment in the required amount had been made by the Complainant. The Center established February 28, 2000 as deadline for the submission of a Response.

On February 20, 2000 Respondent submitted his Response to the Center. On February 21, 2000 the Center received the Respondentґs Response.

On March 3, 2000 the Center sent to Complainant and Respondent a Notification of Appointment of Administrative Panel and Projected Decision Date. The date scheduled for the issuance of the Panelґs decision was March, 17^th, 2000.

The Panel sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that payment of the fees was properly made. Further, the Panel finds that the Complaint was properly notified in accordance with Rules, paragraph 2(a), and that the Response was timely filed.

In its Complaint, Complainant had expressed the wish that the present dispute be resolved by a sole panelist. In its Response dated February 18, 2000, Respondent also expressed the wish that the case be resolved by a sole panelist. On February 28, 2000 the WIPO Center decided to invite Roberto A. Bianchi to serve as a panelist. After having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, on March 3, 2000 the Center appointed him as a Sole Panelist. Thus, the Administrative Panel finds that it has been properly constituted.

On March 13, 2000 Complainant submitted to the Panel a request for leave to correct some statements in its Complaint. On March 14, 2000 the Panel issued Procedural Order No. 1 that reads in its entirety:

"WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL
PROCEDURAL ORDER NO. 1
SGS Sociйtй Gйnйrale de Surveillance S.A. v. Inspectorate
Case No. D 2000-0025

Having received by email on March 13, 2000 a late submission including three attachments by Mr. John Moetteli, Attorney for Complainant, with the purpose of correcting «certain inaccuracies in the Complaint » - the Panel quotes Mr. Moetteliґs words - , the Panel has decided:

1. After prima facie consideration of the new submission, to admit such submission and its three attachments as supplementing the Complaint.

2. In order to give Respondent a fair chance to be heard, to request Respondentґs comments on the Claimantґs new submission including its attachments. Comments are to be sent by email to Mr. Erik Wilbers, Case Administrator, at domain.disputes@wipo.int, with a copy to the Complainant.

The deadline for the Respondent to send its comments on the Complainantґs submission is March 16, 2000. Comments by Respondent are to be given equal attention by Panel, as deserved by Complainantґs submission, and to be admitted as supplementing the Response.

3. To remind the Parties that, other than those referred to in paragraphs 1 and 2 above, the Panel shall allow no further submissions.

Roberto A. Bianchi - Sole Panelist.

Date: March 14, 2000 "

On the same day, as allowed under the Rules, the Administrative Panel sent an email to each of the Parties to communicate them the Procedural Order No. 1; copies thereof for the Case Administrator were also sent.

On March 16, 2000 Respondent sent to the Panel and the Case Administrator its submission of a Response to the late submission of Claimant. On the same day the Case Administrator and the Panel acknowledged proper receipt thereof.

There were no extensions granted nor other orders issued.

Both registration agreements for the domain names at issue have been done and executed in English by Respondent-Registrant Inspectorate, and the Registrar NSI. The Parties have submitted Complaint and Response in English without any observation. Seeing the Panel no special circumstances to determine otherwise, as provided in Rule 11, the language of this proceeding is English.

 

4. Factual Background

 

4.1. Trademark registrations

The registration of following trademarks "SGS" has been evidenced by Complainant:

Country Registration Number Registration date

Switzerland 431.764 April 21, 1996

International Proceedings 668.970 February 19, 1997

Germany 668.970 February 19, 1997

Benelux 668.970 February 19, 1997

Spain 668.970 February 19, 1997

France 668.970 February 19, 1997

Italy 668.970 February 19, 1997

Chile 252.889 November 4, 1981

Argentina 1050236/2 October 26, 1982

Japan 3.061.050 July 31, 1995

Japan 3.051.434 June 30, 1995

Japan 3.067.393 August 31, 1995

Japan 3.067.394 August 31, 1995

Venezuela 14.513-D June 14, 1979

Complaint, Exh. "G".

Complainant has also evidenced that the SGS trademark has been registered in Chile Complaint, Exh. "J".

Respondent has not contested such registrations. Respondent has also acknowledged and accepted that Sociйtй Gйnйrale de Surveillance S.A. has registered the commercial trademark SGS Response, Exh. "DD".

 

4. 2. Non-contested Facts

The email from NSI to the Center confirmed that the domain names at issue are "sgs.net" and "sgsgroup.net", both registered by Respondent, and in "Active" status. The domain name "sgs.net" was registered on November 25, 1997. The domain name "sgsgroup.net" was registered on November 27, 1998.

It has been evidenced that Complainant has registered on November 19, 1998 the domain name "sgsgroup.com". Complaint page 4, Complaint-Exhibit "I". The fact of said registration is uncontested by Respondent.

The Parties coincide in affirming that both are competitors in the commercial field of the certification and inspection services.

 

5. Parties’ Contentions

 

5.1. Complainant

Complainant contends generally that Inspectorate’s domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and that Respondent has no rights or legitimate interests in respect of the domain names; and that the Complainant’s domain names have been registered and are being used in bad faith. Complaint, II, B.

Other specific contentions by Complainant are referred to by the Panel at 6 below.

Complainant requests that the disputed registrations be transferred to the Complainant. Complaint, IX.

 

5.2. Respondent

Respondent contends that the domain names at issue have never been used nor passed off as the Complainant’s listed trademarks ‘SGS’ and have never been used with and/or in association with Sociйtй Gйnйrale de Surveillance S.A., showing the domain names at issue that the initials represent Supreme Global Service (SGS). Response, I. Respondent asserts that the domain names have been registered (by Inspectorate) to be used towards a network business, as the top domain used ".net" would give clue to and not a commercial business as ".com" would represent, or the likes to give fierce competition to Sociйtй Gйnйrale de Surveillance S.A. The domain names were registered to be used towards a business linked to the internet or network. The registrations of the domains were done legally and were paid for in full with the intention of beginning a network oriented business. Response, II. Respondent further contends that the domain names at issue are using the initials ‘SGS’ and do not refer to any trademarks or word marks related to that of which Societe Generale de Surveillance S.A. has registered commercially as seen in Exhibit "DD". Response, II.

Respondent adds that if this stipulation is suggesting that all others who have not registered the trademark nor word mark ‘SGS’ have no legitimate interest or use of the initials ‘SGS’ then many businesses, both commercial and network oriented, (then they) should be encompassed in this claim. Response, II.

Respondent contends further that the domain names at issue were not and have not been registered in a competitive nature. The domains were created with the vision of beginning an internet and/or network business. There has been absolutely no commercial and/or otherwise beneficial gain relating to or in anyway connected to Societe Generale de Surveillance S.A. and/or another company or entity represented by the initials ‘SGS’ including Semi-Gas Systems, Inc. who is the official registrant and owner of the domain sgs.com. Moreover, the domain names have never been purposely employed to hinder and/or prevent the performance of Societe Generale de Surveillance S.A. There is no link nor publication in the "sgs.net" site referring to and/or that furnishes services relating to Societe Generale de Surveillance S.A. and/or Inspectorate, Inspectorate Korea Ltd. and/or Inspectorate PLC. Response, III.

Respondent further contends that it is clearly stated and therefore should in no way cause any confusion that Supreme Global Service (SGS) is not in any way, form or matter associated nor somehow affiliated with the Complainant’s organization, Sociйtй Gйnйrale de Surveillance S.A. Response, III.

Respondent concludes by requesting the Provider and/or panelist to take all necessary steps within their power to resolve and rectify the matter. Response, V.

 

5.3. Late Submission by Complainant and Comments thereon by Respondent

According with Panel's Procedural Order No. 1 a late submission by Claimant was admitted as supplementary to the Complaint. The submission consists of corrections to some statements contained in the Complaint. After including the corrections, Mr. Kang is stated to have been a former employee of a company that was the predecessor in interest to SGS Korea, instead of having been an employee of the Complainant's Korean affiliated that the companies listed in the Appendix of the Response are not to the best of company. Here attaches Complainant a copy of a joint venture among Sociйtй Gйnйrale de Surveillance Holding S.A. and Hyopsung Superintendence Company , Ltd., and Mr. S. E. Wang. Further, Inspectorate PLC after the correction comes to be the franchisor of Inspectorate Korea, instead of Inspectorate Koreaґs parent company. Still further, there is a comment by Complainant that none of the companies listed in the Appendix of Response are competitors of Complainant. Such would not be the case as to Inspectorate Korea, as shown in appendix with purpose of business of Respondent as submitted by Respondent.

Respondent submitted comments on the late submission of Complaint, which were to be admitted as supplementary to the Response. Respondent asserts that the joint venture agreement was executed on September 3, 1987, while Mr. Kang left Hyopsung in 1984. Further the truth of Mr. Kangґs certificate of employment as annexed to Complaint is contested, and doubt and uncertainty are raised about some or all documents submitted by Complainant. Such certificate should be considered invalid. Still further Respondent asserts that Inspectorate is an independent company with no connection with Inspectorate PLC , Inspectorate Group, Inspectorate America Corp. and/or any individual including Mr. Kang, nor has the company any relationship to Inspectorate PLC. There is not any franchisor or franchise involved or related to Inspectorate Korea. Inclusion of word "only" is requested to proceed "clauses 1 through 4" of the purpose of business of Supreme Global Service. The comment further asks the Panel to take note of several passages from the original Response.

 

6. Discussion and Findings

65.1. Identity or confusing similarity.

6.1.1. The Domain Name "sgs.net".

It has been argued by Respondent, that there exist other domain name registrations, against whose holders Claimant has not taken legal action nor initiated ICANNґs proceedings. Response, II.

The Panel notes that the Policy and the Rules give no weight to such a circumstance, nor specially weaken the right for a complainant to initiate a proceeding thereunder against any domain name holder, if bound by the applicable domain name dispute resolution policy of the Registrar, such as Inspectorate. A complainant is not bound to initiate a proceeding within any period of time, or to challenge every domain name registration which is identical o similar to a domain name.

The Respondent further asks somewhat rhetorically whether Claimant uses or possesses or has any rights or authority over the initials ‘SGS’ used or held by such companies as Semi-Gas Systems, Inc.; SGS Tools; SGS Computer Corporation, SGS Geosystems Limited; The Superior Goods and Services Company, SGS, Inc., etc. Response, IV, C.

If the question is aimed at asserting that Claimant has no such rights, that will have no influence on the task of the Panel to examine identity or similarity of the domain names at issue to trademarks or service marks of the Claimant.

In Complainantґs late submission, there is a comment that none of the companies listed in the Appendix of Response are competitors of Complainant. Such would not be the case as to Inspectorate Korea, as shown in appendix with purpose of business of Respondent as submitted by Respondent.

According with Request for Comments 1591, the memo of March 1994 by Dr. Jonathan Postel, the ".net" portion of the domain name "sgs.net" is a generic top level domain " .. intended to hold only the computers of network providers, that is the NIC and NOC computers, the administrative computers, and the network node computers". The gTLD ".com" is "intended for commercial entities, that is companies." rfc1591, Para. 2, page 2 at ftp://venera.isi.edu/in-notes/rfc1591.txt.

Whatever IANA might have envisaged for attributing specific objectives to these gTLDґs, the intended use of ".net" and ".com" is a criterion for registrants, registrars or Domain Name System administrators. Such intended use of ".net" and ".com", is certainly no fence for Internet surfers. For instance, Internet users, while searching for a Web destination by means of a search engine, would hit at the sites and pages corresponding to the alphanumeric chains entered into the "search" field of a template, no matter what the top level domain might be. This leads the Panel to conclude that the fact that the domain names at issue are ".net" and not ".com" domain names is irrelevant while checking confusion of domain names and trademarks.

To check identity or similarity, the Panel must examine whether considering the full domain names – including both second level and top level portions thereof – identity or similarity exists that leads to confusion with a trademark or service mark owned by a Complainant.

The Panel has first examined the second level part (to the left of the dot of ".net"), that is "sgs". Respondent has accepted straightforwardly that the "SGS" trademarks or service marks are owned by Complainant. Response, IV, C. As shown in Exhibits "B" and "G" of the Complaint, "sgs", the second level part of the domain name ""sgs.net"", is identical to such registered trademarks of the Complainant.

The Panel considered simultaneously the top level portion ".net" for testing likelihood of confusion, and determined that the addition of ".net" does not lessen the effect of direct confusion of the domain name with the trademarks and service marks of Complainant.

Therefore, the Panel finds that the domain name ""sgs.net"" is identical or confusingly similar to such registered trademarks or service marks of the Complainant.

6.1.2. The Domain Name ""sgsgroup.net""

The Complainant contends that the domain name "SGSGROUP" is identical to the tradename of a subsidiary of the Complainant, and also identical to the second level domain name "SGSGROUP" associated with the first level ".com" domain name of the Complainant. Complaint, III.

The Panels considers that the Policy and Rules refer only to identity or similarity to trademarks or service marks in which a complainant has rights. No reference is made in the Policy and Rules to tradenames in which a complainant has rights. A trade name is the name of a business but not necessarily a trademark or service mark unless registered or used as such (depending on country and state specific statute law or common law).

No reference is made in the Policy or the Rules to identity or similarity to domain names held by a complainant either. So, the Panel is not allowed to examine these contentions in order to determine whether the requirement set out in Paragraph 4 a (i) of the Policy has been met, although such a confusion could eventually be examined to test if the bad faith requirement is met.

However the Complainant has also contended that the domain name "SGSGROUP", is confusingly similar to the registered SGS marks of Complainant, and this is a contention relevant to lead to a finding by the Panel under the Policy and Rules.

The "sgs" component of the second level portion "sgsgroup" under the gTLD ".net" is identical letter-by-letter to the registered "SGS" marks of Complainant. The ancillary part "group" clearly refers to some kind of affiliation with "sgs", carrying this part "sgs" the main meaning of the whole expression "sgsgroup", that is, a gathering of businesses very closely related to, or affiliated with "sgs".

Furthermore – as mutually recognized – Complainant and Respondent are competitors, even "fierce" competitors, and it can be assumed that competitors in the very specialized market of services of certification and inspection in a global environment know each other well. Incidentally, Respondent has not denied that a group of activities, businesses or companies exists under the direction, control and/or ownership of the Complainant, nor denied affiliation of a group of companies or businesses with Complainant.

The Panel observes that any "group" shares at least some degree of identification with the leading entity, in this case Complainant. This fact cannot be ignored by Respondent because as shown in the "sgs.net" homepage of Inspectorate (1998), two references are made by Respondent to "Inspectorate Group" by using a font larger than in the rest of the text. Exhibit "N" of the Complaint. Thus, Respondent cannot reject the idea of affiliation of a "group" with the main meaning-carrier being in Respondentґs case "Inspectorate". The same necessarily applies to "sgsgroup".

Therefore, having in mind reasons similar to those mentioned at 6.1.1. above for "sgs.net" (i.e. irrelevancy of the addition of ".net" in testing confusion) the Panel finds that "sgsgroup.net" is confusingly similar to the registered trademarks or service marks of the Complainant.

 

6.2. Rights and Legitimate Interests in the Domain Name.

According with the Policy, Paragraph 4 (c),

"(...) any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate ...your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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."

Against a concrete contention by Complainant that Respondent has neither rights nor legitimate interests to the domain name, Respondent can defend its domain name registration by proving any circumstance demonstrating rights to or interests in the domain names. The Panel shall now examine if Respondent has met its burden.

Respondent asserts that: "( ...) the domain names at issue have been registered to be used towards a network business, as the top domain used .net would give clue to and not a commercial business as .com would represent, or the likes to give fierce competition to Societe Generale de Surveillance S.A.". Respondents further asserts that "(t)his networking business having no connection and/or association with the services provided by Societe Generale de Surveillance S.A., Semi-Gas Systems, Inc., and/or Inspectorate PLC. More importantly, the domain names at issue are using the initials ‘SGS’ and do not refer to any trademarks or word marks related to that of which Societe Generale de Surveillance S.A. has registered commercially". Response, II.

Complainant noted that Respondent has no registrations of trademarks with the letters "SGS". Complaint, I page 2. This was not contested by Respondent.

It is very difficult for the Panel to accept that Inspectorate has a legitimate interest to the domain names. The domain names were allegedly registered for the networking business. However such an activity has been described by Respondent as completely different from commercial activities under ".com". At the same time Respondent has suggested that Supreme Global Service is the real beneficiary of the registration. Further suggests Respondent, Supreme Global Service is a separate department or entity. In its comment to the late submission by Complainant, Respondent corrected its Response by adding that Supreme Global Service has clauses 1 through 4 as the only purpose of its business. See response-Exh. "EE".

However, as seen below, such alleged purposes of business of such a department or entity neither include networking nor belong to an entity distinct from Inspectorate Korea Ltd.

Respondent has also tried to distinguish "using the initials SGS" from "referring to trademarks or service marks registered by Sociйtй Gйnйrale de Surveillance S.A.". (Response, II). The Panel cannot recognize any relevance to such a distinction, because the trademarks or service marks of the Complainant are evidently the same thing: "initials" as they are called by Respondent, or an "acronym", in Complainantґs words.

Once identity or confusion has been established (see 6.1.2), the Panel cannot accept the argument that the letters forming the domain name refer to something distinct from the trademarks or service marks of Complainant. The Policy allows a domain name to co-exist with the trademarks of a Complainant, by evidencing and proving circumstances that show that the Respondent has rights to or legitimate interest in the domain name, as provided for by Paragraph 4(b) of the Policy, which reads:

"How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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."

The Panel will now examine whether Respondent has met its burden.

Respondent does not succeed in demonstrating any use of the domain name or its preparations to use it before notice of the dispute in connection with a bona fide offering. Evidently Respondent has not shown that Respondent Inspectorate directly or through any of its departments had used "sgs" or "sgsgroup" under the required conditions before knowing a dispute existed. The bona fide use of those identifiers should be in the name of Respondent. Respondent however asserts that the beneficiary of the domain names is Supreme Global Service, a department or entity allegedly "separate".

That alleged independence or separation between Respondent and Supreme Global Service cannot turn into profit for the Respondent, because Respondent is not allowed under the Policy to hide behind any department or entity whatsoever, specially if no separation has been evidenced in this proceeding. See 6.3.1. below.

Respondent has not asserted that Inspectorate has been known by the domain names "sgs.net", "sgsgroup.net", or by any names associated with the domain names. Inspectorate has to the contrary asserted that "Inspectorate Korea Ltd. acknowledges and respects the fact that Sociйtй Gйnйrale de Surveillance has registered the commercial trademark shown in Exhibit DD". Response IV C.

Neither has Respondent shown a non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A non-commercial or fair use would be unthinkable, or at least extremely unlikely, for Inspectorate Korea Ltd., a corporation registered with the Commercial Registry Office of Seoul District Law Court, as well as for any other commercial corporation. See Response, Exh. "EE".

Additionally, Respondent has neither alleged nor demonstrated any other circumstances that could reasonably indicate rights to or legitimate interests in the domain names.

Therefore, the Panel finds that Respondent has neither rights to nor legitimate interests in the domain names at issue.

 

6.3. Registration and use in bad faith

6.3.1. Registration in bad faith

Paragraph 4(b) of the Policy reads:

(...) b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(...) (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; (...)"

Complainant has contended that Respondent registered the domains at issue in bad faith, on the grounds of "the competitive nature of the activities of the Respondent's and the Complainant's", "the blatant difference in the name registered from that of the Registrant and the similarity to that of Complainant (that) implies a clear competitive motive to disrupt the business of the Complainant, and thus evidence of bad faith in Reverse Domain Name Hijacking, as defined in the "Rules".Complaint, V (ii)

Complainant also mentioned the "lack of any correspondence of the letters "SGS" with any activity of Inspectorate which predates the use of the same by the Complainant clearly shows that Inspectorate, i.e. in fact Inspectorate Korea, for no legitimate reason, registered the domain names at issue, to prevent the Complainant, a fierce competitor, from registering their trademark or service mark". Complaint, V (ii). Complainant added that "Inspectorate has engaged in a pattern of such conduct as evidenced by the fact that Inspectorate registered the domain name "SGSGROUP.NET" eight days after the Complainant registered SGSGROUP.COM". Complaint, II.

The Panel finds the latter supported by the uncontested sequence of registrations (see 4.2. above) that proves that Respondent moved quickly to make impossible to Complainant to reflect its own trademarks as domain names.

According with these assertions, Complainant claims that such facts clearly show that a reverse domain name hijacking has taken place, and thus bad faith on the part of Inspectorate. Complainant has also asserted that the e-mail of Mr. Kang, attached as Exhibit D of the Complaint, contains a statement by Mr. Kang after which the domain name is Inspectorate Korea's property and categorically refuses to sell the domain name, and that this further supports the contention that the purpose of the disputed domain name registrations was and is to deprive the Complainant of its right to register its mark as a domain name. Respondent has contended that its email of May 8, 1999 meant a refusal by Inspectorate to assign the registration for "sgs.net" to Complainant. Response, IV F.

Respondent has further contended that domain names at issue were not and have not been registered in a competitive nature, but created with the vision of beginning an internet and/or network business. Such a business would be or is conducted by Supreme Global Service. Response, IV, C. However, in other part of the Response, Respondent asserts that

"Supreme Global Service (SGS) was formed as a separate department and entity to begin a network business to more completely satisfy clauses 1 through 4 as can be seen under ґThe Purpose of EstablishmentЁin Exhibit EE (Commercial Registry Office of Seoul District Law Court). The main objectives of Supreme Global Service (SGS) are 1. Cultivating, selling, and trading of herbal products, 2. Processing, manufacturing, and trading of herbal products, 3. Manufacturing, selling, and trading of products made of herbal (e.g. favorite food, food for keeping one’s health in good condition, and beverages) and 4. Manufacturing and trading of products made of herbal (e.g. cosmetic and aromatic). It is obviously clear that the purpose of Supreme Global Service (SGS) is not competitive in any way or purposely trying to hinder the services provided by Societe General de Surveillance S.A. because the services provided by each, Supreme Global Service (SGS) and Societe Generale de Surveillance S.A., are not at all related."

Response, IV, F.

Complainant has asserted that "Supreme Global Service (SGS)" is a non existing entity, dictinct from Inspectorate. Complaint-Exh. "P"-CompuMark report. Complaint II A (9).

The Panel considers that Respondentґs assertions concerning Supreme Global Service lack credibility, on the following grounds:

First, clauses 1 to 4 clearly consist of business in the field of herbal products, and do not relate at all to networking business. Response-Exhibit "EE". Secondly, Respondent has suggested in other place of the Response that commercial activities in the Internet should be conducted under ".com", and not under ".net". Response, II. Respondent is implying that its own department Supreme Global Service is not conducting its business activities under the appropriate top level domain (.com).

As to the alleged characterization of Supreme Global Service (SGS) as a "separate department and entity" the Panel finds hard to believe that such a separation really exists, beyond any alleged intention on the part of Inspectorate.

The Panel could not find any assertion or evidence that a decision has been made by the Board of Inspectorate Korea Ltd. to separate Supreme Global Service (SGS) as a department or entity. According with the certificate of registration seen as Exhibit EE, the activities listed by Respondent as pertaining to Supreme Global Service (SGS) are clauses 1 through 4 of the "purpose of establishment" of Inspectorate Korea Ltd., that is the Respondent.

On the other part, being a registrant of the domain names, Respondent has the control over the activities conducted through the domain name held in its own name, as long as the domain name is not transferred to another person or entity. Respondent is also deemed to exert control over any department or entity belonging to Inspectorate Korea Ltd., such as Supreme Global Service.

Further, the Respondent in this proceeding is Inspectorate, and not "Supreme Global Service". Pursuant to Rule 1 ("Definitions") "(p)arty means a Complainant or a Respondent". The Panelґs decision can only affect Parties. It was Inspectorate that registered the domain names and no other entity. Furthermore, Inspectorate is the entity that has submitted a Response, and not any other person a/o entity such as "Supreme Global Service".

Respondent asserts that the domain names have never been purposely employed to hinder and/or prevent the performance of Sociйtй Gйnйrale de Surveillance S.A. Now, as long as the "first come first served" rule applies for the registration of domain names, Complainant will not have an opportunity to reflect its marks as domain names, unless transfer occurs.

Thus, the Panel finds that hindering the business of Complainant or unfairly difficulting such business was clearly present as a purpose of Respondent at the time of registering the domain names.

Respondent contends that there is no link nor publication in the "sgs.net" site referring to and/or that furnishes services relating to Sociйtй Gйnйrale de Surveillance S.A. and/or Inspectorate, Inspectorate Korea Ltd. and/or Inspectorate PLC. Response, III.

The Panel finds that this is true. However, "passing off" as described in unfair competition law, or as depicted in Paragraph 4 (b) of the Policy, certainly does not exhaust the contents and meaning of the "bad faith" concept as used in the Policy.

Respondent asserts elsewhere that according with the hard copy obtained by printing the screen of the "sgs.net" page seen in Exhibit AA (Complainant’s Exhibit F), it is clearly stated and therefore should in no way cause any confusion that Supreme Global Service (SGS) is not in any way, form or matter associated nor somehow affiliated with the Complainant’s organization, Societe Generale de Surveillance S.A.

This argument runs short if it aims at demonstrating good faith or absence of bad faith.

Passing off or confusion caused by Inspectorate between Supreme Global Service (SGS) and SGS Societй Gйnйrale de Surveillance S.A. is not the only way to disturb or hinder a competitorґs operation.

A certainly more subtle way does exist, and that is diverting prospective customers to an Internet "cul-de-sac" consisting in presenting a tombstone supposedly not related to Claimant. The Panel cannot ascertain whether this scheme is or has been successful in achieving that hindering goal. However the Panel cannot overlook that this mechanism is an evidence of bad faith as described in the Policy. The fact of having set up such scheme is certainly a "pattern of such conduct" by Respondent, and does not require any effective success in unfairly disturbing competition.

It is uncontested that the registration of the domain name "sgsgroup.net" by Respondent occurred only a few days after the registration of the domain name "sgsgroup.com" by Complainant. (See 4.2. above). It has also been shown that the registration of "sgs.net" and of "sgsgroup.net" happened after the domain name "sgs.com"ґs registration by an entity which is not a party to this proceeding. Response-Exhibit "CC" and Complaint-Exhibits "A" and "B". As seen above the Panel considers that the sequence of registrations indicate that Respondent incurred in evident bad faith by closing all doors to a legitimate reflecting of Complainants trademarks. No ignorance or error i.e. good faith at the registration can reasonably be assumed when such registrations were made by a main competitor of Complainant.

The fact of identity between the second level part of domain names (".com" and ".net") can certainly be taken into consideration by the Panel at the moment of the appraisal of bad faith by the Respondent.

The competitive nature of the Partiesґ commercial activities dissolves any doubt about the purposes of Respondent at the moment of registering the domain names at issue.

Fierce competition can only exist if competitors know each other well. It is evident for the Panel that a minimum level of knowledge in the battlefield of competition is the name of the main competitor, including its initials or acronym. This leads the Panel to reasonably conclude that the registrations were made in bad faith.

It is therefore not necessary for the Panel to examine the Claimantґs contention that the trademark or service mark "SGS" is famous or well known pursuant to Article 6b of the Paris Convention, and about its applicability to the present case.

Furthermore, Respondent has neither asserted nor demonstrated that Respondent was known by "sgs" or "sgsgroup" or any name associated therewith before receiving notice of the dispute. Even such an assertion would have lacked any ground since Respondent contends that the beneficiary of the registrations is Supreme Global Service.

For all these reasons, the Panel finds that Respondent has registered the domain names in bad faith.

 

6.3.2. Use in Bad Faith

Beginning with Case No. D1999-0001 World Wrestling Federation Entertainment Inc. v. Bosman most decisions in WIPO cases published to date have stressed the need for the Panel to check use in bad faith additionally to registration in bad faith. Therefore the Panel must now examine if a bad faith use of the domain names at issue is present.

6.3.2. 1. The Domain Name ""sgs.net""

One obvious way to establish use is by looking at the Web site and pages. In its Web site "www."sgs.net"" Respondent is hosting an tombstone that refers to Supreme Global Service (SGS). The hard copy of the page reads in its entirety:

"Supreme Global Service (SGS)
http.//www."sgs.net"
Add : KANGNAM P.O. BOX 1191, Seoul Korea
Tel : +82-2-592-6022
Fax : +82-22-538-2867
sgs@"sgs.net"".

Complaint, Exhibits "B" and "F". Response, Exh. "AA".

The text refers to an organization, Uniform Resource Locator (URL), address, phone and facsimile numbers, and E-mail address. The site is "active". The Panel finds that those facts suffice to indicate a "use" of the domain name. "Use", as required in the Policy, does not necessarily mean complete, rich, or well designed sites or pages, such as those shown by the Parties in Complaint-Exhibits "H" and "L", and Response-Exhibits "BB"1 through 13, and "HH".

The fact that the name of Respondent does not appear on the site at www."sgs.net" is irrelevant. As seen in 6. C. a. above, Respondent claims that Supreme Global Service (SGS) is a separate department or entity, but the Panel found no evidence for that assertion. That leads the Panel to conclude that the use of the domain name for and/or on behalf of Supreme Global Service, which is under the control of Respondent, is a Respondent's use in terms of the Policy.

That conclusion is further supported by followings facts: the domain name holder has control over the contents of the site www."sgs.net" through its agents or delegates as contact persons. Complaint, II, A (2)

Everything in this proceeding under the Panelґs eyes leads to conclude that Respondent has set up a scheme by creating or using a ghost - the separate department or entity -, and by designing and uploading a half naked tombstone, the aim of this scheme being to create a public feeling that SGS is something or somebody different from SGS Sociйtй Gйnйrale de Surveillance S.A., that is Inspectorateґs fierce competitor.

Having set up such scheme consists of actions which certainly satisfy the description of Paragraph 4 (b)(iii) of the Policy:

"you have registered the domain name primarily for the purpose of disrupting the business of a competitor".

The disruption of business aimed at by Respondent consists in impeding or otherwise difficulting an average, prospective, eventual or actual customer of the competing SGS Sociйtй Gйnerale de Surveillance S.A. to possibly hit on a site owned by Complainant, for example if this customer types the letters "SGS" on his keyboard while using a search engine.

The Respondentґs conduct also falls within the description of Paragraph, 4(b)(iv) of the Policy:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."

The Panel notes that the description quoted above includes using the domain name with the intent to attract Internet users for commercial gain consisting in depriving a main competitor as Complainant of the chance to be contacted by such prospective customers. That deprivation could happen through obstructing or making a connection imposible while using the Internet with an intended destination (if no site exists at all), or through diverting - even nonsensically - eventual customers to a commercial entity totally different from the one intended, and even by using a mere tombstone.

Respondent contends that there has been no commercial and/or otherwise beneficial gain relating to or in anyway connected to Societe Generale de Surveillance S.A. and/or another company or entity represented by the initials ‘SGS’ including Semi-Gas Systems, Inc. who is the official registrant and owner of the domain "sgs.com" Response, III..

As to this argument, the Panel notes that the commercial gain described in Paragraph 4(b)(iv) does not mean an actual gain for Respondent. This gain could eventually be expected by Respondent through any unfair competing conduct. Mere unfair harming could eventually produce some gain to Respondent when competition is "fierce".

The Paragraph does not refer to actual confusion either. It suffices that confusion could reasonably occur when somebody looking for "SGS", if this acronym is a trademark or a service mark registered or otherwise owned by the complainant, is connected with the Respondentґs web site, or any other on-line location, no matter which the actual destination may be.

For all these reasons, the Panel finds that the "sgs.net" domain name is being used in bad faith by Respondent.

 

6.3.2.2. The Domain Name ""sgsgroup.net""

Under Paragraph 4(b)(iii) of the Policy the complainant must assert and prove that the domain name has been registered and is being used in bad faith.

While a bad faith use of the domain name "sgs.net" has been apparent for the Panel, the situation is not that evident as to the "sgsgroup.net" domain name.

Complainant contended that the domain names - in plural - "have been registered and are being used in bad faith". Complaint, II, B, 3, at page 5. However Complainant has made no other any specific allegations on the use of "sgsgroup.net". Complaint-Exhibit E showing the Supreme Global Serviceґs tombstone corresponds to "sgs.net" and not to "sgsgroup.net". The emails between Mr. Moetteli, Attorney of Complainant, and Mr. D.C. Kang of Inspectorate Korea Supreme Global Service have all "sgs.net domain name" as a subject. Furthermore, in their entirety, the emails seem to refer only to "sgs.net". Complaint Exhibit D.

Does this mean that the "sgsgroup.net" domain name has not been used by Respondent, and therefore that the last requirement cannot be met?

No particular principles of law nor territorial law seem to apply in this case. The situation is clearly different from that present in WIPO Case D00-0001, with both parties and registrar residing in the same country. In that case the Panel considered appropriate to look to rules and principles of law set out in decisions of the courts of the United States of America. WIPO Case D00-0001, Robert Ellebogen v. Mike Pearson, 6 A, at pages 6/7. In this case however the Complainant, the Respondent and the Registrant are resident in different countries.

On that ground, the Panel considers that this case is to be resolved by a direct and exclusive application of the Policy and its Rules.

It seems clear that the Panel has to construe a fair interpretation of the word "use", while considering that the meaning of this word as is stands in the text of the Policy has an ample scope

In particular the Panel notes that "use in bad faith" encompasses any action by Respondent, or by any employee or agent thereof under Respondentґs control, that represents an advantage for Respondent resulting from exclusively holding the domain name, while at the same time effectively depriving the trademark owner of the possibility to access to his own location in Internet that reflects his mark.

It is a non-contested fact that the Parties are fiercely competing with each other in the inspection and certification field of services.

Respondent has made isolated and seemingly innocent assertions concerning both domain names. It has for instance been contended by Respondent that:

"the domains were created with the vision of beginning an internet and/or network business. There has been absolutely no commercial and/or otherwise beneficial gain relating to or in anyway connected to Societe Generale de Surveillance S.A. and/or another company or entity represented by the initials ‘SGS’ including Semi-Gas Systems, Inc. who is the official registrant and owner of the domain sgs.com. Moreover, the domain names have never been purposely employed to hinder and/or prevent the performance of Societe Generale de Surveillance S.A." (Panelsґs emphasis added). Response, III.

The emphasized words imply at least three things. First, that there has been some use of both domain names (the domains have been "employed" that is "used"). Second, that such use has seemingly brought some gain to the user Inspectorate. Third, that such gain is absolutely not related to the Claimant nor to any other company represented by the initials "SGS". This scarce reference to the way and manner the domain name "sgsgroup.net" is being used by Inspectorate Korea Ltd. is a fact that shows that the bad faith use requirement as set out in the Policy has been met.

Furthermore, against the assertion by Complainant that the domain names (both of them) are being used in bad faith by Respondent, the Panel could not find any statement by Respondent that it had not used the "sgsgroup.net" domain name in bad faith. Respondent failed thus to do what is provided in Rule 5 (b)(i):

"(b) The response shall (...)

(i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...);"

The Panel notes that Respondent has kept, during this whole proceeding, strict silence about the precise way it is using the "sgsgroup.net" domain name. This is not an obstacle for the Panel who is to decide in the matter as provided in Rule 15 (a):

"(The Panel) ... shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

The Panel believes that "statements" as used in the Rule certainly includes "lack of response" when, as provided in Rule 5(b)(i) there is a general duty for Respondent to respond to the statements and allegations of the Complaint. Silence can in such cases award what a flat denial would have not allowed to conclude. The omission cannot thus benefit a Respondent that prefers to leave un-contested the assertion by Complainant that both domain names are being used in bad faith.

There is still another reason for the Panel to conclude that the domain name at issue is being used in bad faith. The billing contact for the "sgsgroup.net" domain name, that is the person who has been trusted by Registrant-Respondent Inspectorate with receiving the bills required by registrant NSI to renew the registration is Mr. Haeseong Kim, with dckang@inspectorate.net as E-Mail address, and 82-2-501-5854 as fax number. Mr. Kim happens also to be administrative and billing contact for the "inspectorate.net" domain name, held by Respondent. See Complaint II A (3) at page 4. Complaint-Exhibits "A" and "C".

The Panel considers that the fact that Respondent has trusted its representative Mr. Kim with receiving and paying the fees collected by the registrar, including the renewal of the domain name registration is a showing of bad faith use specially vis-а-vis its fierce competitor, the Claimant, to whose trademarks the "sgsgroup.net" domain name has been found confusingly similar.

At the same time, the fact that Mr. Kim can be reached at an E-mail address evidently belonging to the Respondent, a competitor of Claimant, shows an intent to permanently create unfair confusion between "sgsgroup" and "inspectorate".

An Internet surfer and prospective customer for the inspection or certification services that looks at the WHOIS database could reasonably conclude that some kind of merger or association between the two companies has taken place. To create such a likelihood of confusion with the Complainant's mark "SGS" as to the source or affiliation of the web site satisfies the description of Paragraph 4(b)(iiii) of the Policy, and shows bad faith use of the domain name by Respondent.

As to the purpose of commercial gain required by the Policy, the Panel concludes that it has been met considering the competitive nature of the Parties' activities.

The Panel find therefore that the "sgsgroup.net" domain name is being used in bad faith by Respondent.

For all the foregoing reasons, this Panel finds that Respondent has registered the domain names "sgs.net" y "sgsgroup.net" in bad faith, and that both domain names are being used in bad faith by Respondent.

7. Decision

The Panel has found that the domain name "sgs.net" is identical o confusingly similar to the trademarks of the Complainant, and that the domain name "sgsgroup.net" is confusingly similar to such trademarks. The Panel has also found that the Respondent has no rights to or legitimate interests in said domain names, and that they have been registered in bad faith. The Panel has further found that they are being used in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requests that the registrations of the "sgs.net" and "sgsgroup.net" domain names be transferred to the Complainant SGS Sociйtй Gйnйrale de Surveillance S.A.

 

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Roberto A. Bianchi
Sole Panelist

Date: March 17, 2000