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WIPO Domain Name Decision: D2000-1759
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. Good Deal Communications
Case No. D2000-1759
1. The Parties
The parties are Beiersdorf AG of Unnastrasse 48, 20253 Hamburg, Germany (Complainant) and Good Deal Communications of 3rd Floor, 61-5 Nonhyun-dong, Kangnam-gu, Seoul 135-010, Republic of Korea (Respondent).
2. The Domain Name and Registrar
The domain name in dispute is <niveasun.com>("the Domain Name"). The Registrar is YesNIC of 2thF. Sinil bldg. 143-39 Samsung-dong, Kangnam-gu, Seoul (135-090), Republic of Korea ("YesNIC").
3. Procedural History
The Complaint was filed in English by the Complainant’s legal department with the WIPO Arbitration and Mediation Center ("the Center") by email on December 19, 2000 and in hard copy on December 20, 2000 under cover of the Center’s standard form Complaint Transmittal Coversheet, also in English. The Complaint included a submission to "the jurisdiction where the registrar is located, as shown by the address given for the domain name holder in the concerned registrar’s Whois database at the time of the submission of the Complaint". The Complaint authorized payment of the correct amount of fee from the Complainant’s account held with WIPO and the Center’s formal requirements compliance checklist records that the correct fee has been duly paid.
By emails of January 9 and 10, 2001, YesNIC verified that it was the Registrar of the disputed domain name, that it had received a copy of the complaint, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the domain name, and that it indicates a Registration Agreement in Korean or English to persons registering domain names. YesNIC’s Registration Agreement does not include a submission by the Registrant to the jurisdiction where the Registrar is located.
The Complaint was notified by the Center by email (without exhibits) on
January 12, 2001 to the email addresses recorded by the Registrar for the Registrant (email@example.com), the Administrative Contact (firstname.lastname@example.org) and the Technical Contact (email@example.com). No return notification was received. Copies of the complaint were also despatched by courier (with exhibits) on January 12, 2001 to the postal address recorded by the Registrar for the Registrant and the Administrative Contact (3rd Floor, 61-5 Nonhyun-dong, Kangnam-gu, Seoul 135-010, Korea), addressed respectively to the Registrant, Good Deal Communications, and the Administrative Contact, Jae Deok Yoo. The courier’s tracking record indicates that the package addressed to the Administrative Contact, Jae Deok Yoo, was delivered to that address.
On February 5, 2001 the Center gave notification of default by email in English to the email addresses recorded by the Registrar for the Registrant, Administrative Contact and Technical Contact. No response to the Complaint was received from the Respondent.
The single member Panel, Jonathan Turner, submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on
February 13, 2001.
On March 1, 2001, the Panel issued Procedural Order No.1, the dispositive part of which was in the following terms:
"The Complainant and the Respondent are requested to communicate to the Center, within 20 days of the notification to them of this Order, submissions on whether the Panel should or should not exercise its power under paragraph 11(a) of the Rules to determine that the language of the proceeding should be English; and (if not) how the Panel should exercise its power to order translations under paragraph 11(b) of the Rules. The Center should communicate any submissions to the other party and the Panel at the end of the above 20 day period.
"The Complainant is requested to communicate to the Center, within 20 days of the notification to it of this Order, a duly signed Amendment on paper (without annexes) together with four (4) copies thereof, providing a clear jurisdiction submission complying with paragraph 3(b)(xiii) of the Rules. The Center should communicate the revised complaint to the Respondent and the Panel at the end of the above 20 day period.
"This Order should be translated by the Center into Korean and communicated to the Complainant and the Respondent in the English and Korean versions."
That Order was sent to the Complainant and to the Respondent in English and Korean by email and courier on March 6, 2001, in the case of the Respondent to the email and postal addresses indicated above. On March 8, 2001 the Complainant sent to the Center by email and courier an amendment to the Complaint containing observations on the language of the proceedings and a submission "to the jurisdiction of the courts where the Respondent is located". The amendment was copied to the Respondent and the Registrar by email and courier to the above addresses on March 8, 2001. No communication was received from the Respondent.
Having reviewed the file, the Panel concludes that the Complaint as amended complied with the applicable formal requirements and was properly notified in accordance with paragraph 2(a) of the Rules. There is no requirement in the Uniform Domain Name Dispute Resolution Policy ("the Policy") or the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") that the Complaint be made in the same language as the Registration Agreement. Paragraph 11(a) of the Rules, which regulates the language of the Proceeding, does not apply to the Complaint or the Notification, since in accordance with paragraph 4(c) of the Rules, the Proceeding only commences on the date on which the Provider completes its responsibilities in connection with forwarding the Complaint to the Respondent. Paragraph 4(a) of the World Intellectual Property Organisation Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules") requires transmittal of the Complaint under cover of a Complaint Transmittal Coversheet as set out in Annex A thereto using the version in the same language as the Registration Agreement if available. However, at the relevant date a Korean version of the Complaint Transmittal Coversheet was not available.
It should, nevertheless, be noted that, if a Complaint is filed in a language other than that of the Registration Agreement, there is a risk that the Panel may decline to change the language of the Proceeding under paragraph 11(a) of the Rules, and may require the Complainant to translate the Complaint and other documents into the language of the Registration Agreement under paragraph 11(b). This may then result in delay and expense. A Complainant should therefore try to ensure that its Complaint is filed in the language of the Registration Agreement or that it contains good reasons for procceding in a different language, taking into account, in particular, the requirements of paragraph 10(b) of the Rules that both parties must be treated equally and given a fair opportunity to present their cases. If this has not been done, it is good practice for the dispute resolution service provider to invite the Complainant to amend the Complaint accordingly. In this case, it appears that the Center did not alert the Complainant to this potential problem because the Registrar had not responded clearly to the Center’s request to indicate the language of the Registration Agreement. It is important that Registrars answer this question clearly and accurately in order to ensure the efficient and correct administration of the Policy.
The Panel interprets the submission to the jurisdiction "where the Respondent is located" in the amended Complaint as referring to the Respondent’s address as shown in the Registrar’s Whois database, in accordance with paragraphs 1 and 3(b)(xiii) of the Rules.
4. Factual Background
The Complainant is the proprietor of an internationally well-known brand of cosmetic creams, soaps and lotions, "Nivea". Its "Nivea" range of products includes a sub-range of sun care preparations called "Nivea Sun". It has registered trade marks for the word "Nivea" in numerous countries (including South Korea) and also for a device incorporating the words "Nivea Sun" in many countries (including some countries in East Asia, but not South Korea).
The Respondent (an entity apparently in Seoul, Korea) registered the domain name in dispute on June 13, 2000. As at January 12, 2001, a web page at www.niveasun.com was blank apart from providing the address www.mados.com (which is the same domain as the email address of the administrative contact). The Panel was not able to access any website at www.niveasun.com on February 16, 2001.
The Complainant wrote to the Respondent on October 12, 2000 in English alleging trade mark infringement and requesting surrender of the domain name. A firm of attorneys, Kim & Kim of KNTO Building, 12th Floor, 10 Da-Dong, Choong-Ku, Seoul, responded by letter in English of November 23rd 2000 stating that the Respondent registered the domain name "on the basis of its business reason and its legal reason", that therefore it could not transfer the domain name "without any business reasons", but that they could "persuade Good Deal to sell this domain to your company for reasonable consideration, if your company can offer proper price".
5. Parties’ Contentions
The Complainant contends that it has registered trade marks in the names "Nivea" and "Nivea Sun", that these brands are very well-known internationally, that the disputed domain name is the same or confusingly similar thereto, that the Respondent has no rights or legitimate interest in using the name "niveasun", and that the proposal to sell the domain name in the Respondent’s attorneys’ letter indicates bad faith. The Complainant further contends that the Panel should determine the language of the proceedings to be English on the grounds that it could be assumed that the Respondent was able to understand English and that translation of documents would involve disproportionate expense.
The Respondent has not submitted a response to these contentions.
6. Discussion and Findings
It is necessary first to determine the appropriate language of the Proceeding. In this case, the Registrar’s website has pages in Korean which refer to a Korean version of the Registration Agreement and pages in English which refer to an English version. Since the primary language of the website is Korean and the Respondent is in Korea, it is more likely that the Respondent was referred to the Korean version and that accordingly this is the language of the Registration Agreement. The Registration Agreement does not specify and there has been no agreement of the parties with regard to the language of this Proceeding.
Under paragraph 11(a) of the Rules the language of the Proceeding should therefore be Korean "subject to the authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding". In making any such determination, the Panel must comply with its obligation under paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel should also take into account the importance of ensuring that the Policy continues to command broad support throughout the global community and that decisions under it are considered valid by national courts. At the same time, the Panel should have regard to the objective of the Policy of providing a cost-effective system for resolving straightforward domain name disputes and the risk that this could be jeopardized by the considerable expense of translating documents.
The Panel considers that, where a Complaint is made in a language other than that of the Registration Agreement, and it is not clear that this poses no difficulty for the Respondent, the Respondent should normally receive notice of the Proceeding in the language of the Registration Agreement. Otherwise there is a risk that the Respondent may not appreciate the true nature of the proceeding and may be deprived of a fair opportunity to present its case. Furthermore, if the Complainant is seeking, or the Panel is considering, a determination that the Proceeding be conducted in a language other than that of the Registration Agreement, such proposal should be communicated to the Respondent, so that it has an opportunity to raise any contrary arguments.
In future cases where there is a potential language issue, it is hoped that the requirements identified above will normally be met through the availability of a coversheet in the language of the Registration Agreement and through the inclusion in the Complaint of appropriate submissions on the language of the Proceeding.
In the present case, attorneys on behalf of the Respondent had in fact replied in English to a letter written by the Complainant in English. This might have been a sufficient basis for concluding that the English language of the Complaint posed no difficulty for the Respondent. Nevertheless, the Panel decided to give the Respondent a further opportunity to raise any objections to the Proceeding being conducted in English by making the Procedural Order referred to above. The Respondent has not raised any objections and indeed has not taken any part in the Proceeding. The Panel concludes that the Respondent will not be prejudiced by the Proceeding being conducted in English and that this has the advantage of avoiding unnecessary further expense on translations. Accordingly, the Panel determines that the language of the Proceeding shall be English.
In accordance with paragraph 4 of the Policy, a complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
As to the first requirement, the Domain Name <niveasun.com> is confusingly similar to the word mark "Nivea" registered by the Complainant in South Korea and numerous other countries. It is also confusingly similar to the device mark incorporating "Nivea Sun" registered by the Complainant in many countries around the world. Since the Respondent has not indicated any geographic restriction of the use of the domain name, the Panel considers that it is proper to take the "Nivea Sun" device registrations into account, even though there is no corresponding registration of this device in South Korea where the Respondent is based. Furthermore, the Complainant has unregistered rights in the trade mark by virtue of its extensive international reputation and goodwill which would suffice to found the complaint even if there were no registrations (cf. WIPO Case D2000-0235, Jeanette Winterson v Mark Hogarth).
As to the second and third requirements, the international reputation of the "Nivea" brand is such that it can be inferred that the Respondent has no rights or legitimate interests in respect of the domain name and that this name was registered and is being used in bad faith. This inference is confirmed by the letter of the Respondent’s attorneys which alleges that the domain name was registered for "business reason", without specifying any good reason, and goes on to offer the domain name for sale at a "proper price".
Given the reputation of the "Nivea" brand, the Panel considers that the use of the domain name by another person would be likely to cause confusion. The Panel concludes that the domain name should therefore be transferred to the Complainant.
The Panel decides that the language of this proceeding should be English and that the domain name <niveasun.com> should be transferred to Beiersdorf AG of Unnastrasse 48, 20253 Hamburg, Germany.
Dated: April 2, 2001