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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pohang Iron and Steel Co., Ltd. v. Peijie Lu
Case No. D2001-0319
1. The Parties
The Complainant is Pohang Iron and Steel Co., Ltd., a Korean corporation with its principal place of business located in Seoul, Republic of Korea (the "Complainant").
The Respondent is Peijie Lu, an individual having an address at Chanjiang Part, 25-501, Huanggu District, Shenyang, 110033, China (the "Respondent")
2. The Domain Name and Registrar
The domain name at issue is <posco.com>. The Registrar is Tucows.Com, Inc of 96 Mowat Ave, Toronto, ON, Canada M6K3MI (the "Registrar").
3. Procedural History
The electronic copy of the Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 5, 2001. The hardcopy of the Complaint was received on March 14, 2001. The Center sent an Acknowledgement of Receipt to the Complainant on March 7, 2001. The Complaint identified the following as Respondents:
1. ShenYang Goodfriend Electronic Information Consulting Center having a business address at Ningda Hotel, 8th Floor, Room 823, Shifu Road, Heping District, Shenyang, 110001, China ("SGEICC"); and
2. eDigitals.com, having a business address at Jaeil Building, 3rd Floor, Banpo-1 Dong, 723-23, Seocho-Ku, Seoul, Republic of Korea ("eDigitals").
On March 8, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar to which the Registrar responded on March 12, 2001, that the registrant of the domain name is neither SGEICC nor eDigitals but is the Respondent. The Center accordingly transmitted a Notification of Complaint Deficiency to the Complainant on March 13, 2001.
On March 22, 2001, the Complainant electronically submitted an Amended Complaint changing the Respondent together with supporting documents and affidavits to the Center. The hardcopy of the same followed on March 26, 2001.
On March 27, 2001, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint and the Amended Complaint to the Respondent, by post/courier and email. On April 6, 2001, the postal-mail of the Notification of Complaint was returned from the Respondent’s postal address.
Nevertheless, on April 15, 2001, the Respondent submitted a Response together with supporting documents to the Center. A hardcopy of the Response was received by the Center on May 1, 2001. The Response confirmed the Respondent’s postal address as the same postal address referred to in the Amended Complaint and the WHOIS record for the contested domain name. The Center sent an Acknowledgement of Receipt of Respondent’s Response on April 17, 2001. The Center also sent a Notification of Response Deficiency to the Respondent on April 17, 2001, for:
1. Failure to submit one original and four copies of the Response pursuant to Paragraph 5(b) of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and Paragraph 3(c) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules");
2. Failure to pay the requisite fee pursuant the Respondent’s election for a three-member Administrative Panel; and
3. Failure to identify three candidates pursuant to the above election.
The Respondent was required to remedy the deficiencies by April 19, 2001. The Respondent failed to remedy the second and third deficiencies by April 19, 2001. Accordingly, on May 8, 2001, the Center forwarded a Notification of Appointment of Administrative Panel by email to the parties appointing Soh Kar Liang as the Sole Panelist. The Sole Panelist finds the Administrative Panel properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The language of the proceedings is English. Various documents (including trademark registration information sheets) annexed to the Amended Complaint and Response were not in English. On May 11, 2001, this Panel, through the Center, requested English translations of the same from the parties. This Panel was subsequently advised by the Center that the Respondent’s email address had ceased functioning. As such, the request for translations was sent to the Respondent’s postal address confirmed in the Response.
On May 21, 2001, this Panel received translations for the trademark registration information sheets annexed to the Amended Complaint. However, English translations for non-English documents annexed to the Response remain outstanding at the time of this decision.
On May 25, 2001, this Panel issued a Procedural Order requesting further submissions from the parties to address allegations in the Amended Complaint that the Respondent is employed by, affiliated with or the agent of SGEICC and eDigital. The Respondent’s email address remained non-functional and the Procedural Order was sent to the Respondent’s postal address. The Complainant and Respondent were required to make submissions by June 1, 2001, and June 7, 2001, respectively. The date scheduled for this Panel’s decision was accordingly fixed as June 22, 2001.
On June 1, 2001, the Complainant complied with the Procedural Order in the form of a Rebuttal to the Response. A copy of the Rebuttal to the Response was emailed and postal-mailed to the Respondent on the same day. The Respondent’s email address remained non-functional and the Center’s postal mail to the Respondent was returned from the Respondent’s postal address on June 5, 2001. The Respondent did not provide any submissions pursuant to the Procedural Order.
4. Factual Background
The Complainant holds 77 trademark and service mark registrations for the word POSCO on its own or in combination with other elements. In particular, there are:
a) 68 registrations in Republic of Korea;
b) 7 registrations in Japan; and
c) 2 registrations in the United States of America.
All the registrations relate to "steel" and related goods and services.
The Complainant is the registrant of the domain name <posco.co.kr>.
The domain name in dispute <posco.com> was originally registered by SGEICC which is located in Shenyang, China, the same city as that of the Respondent’s postal address. The WHOIS record for <posco.com> was created on March 7, 2000. The domain name was subsequently transferred to the Respondent.
The Respondent has never been an agent of, or employed by the Complainant to sell, distribute or promote the Complainant’s POSCO products. The Complainant and the Respondent have never been directly involved in any type of business relationship.
Pursuant to the powers given under Rule 10(a), this Panel has verified that:
a) a website relating to the Complainant exists at the URL <posco.co.kr>;
b) no webpage or website exists at the URL <posco.com>; and
c) the WHOIS record for <posco.com> as of June 11, 2001, does not reflect any change in the email or postal addresses of the Respondent as indicated in the Complaint or Response. The record also refers to the same name, email and postal addresses as the Respondent’s details for the administrative contact, technical contact and billing contact.
5. Parties’ Contentions
A. The Complaint
The Complainant contends in the Complaint that (extracts from the Complaint are enclosed in quotation marks and italicised):
1. Except for the Top Level Domain ".com", "the domain name is identical or confusingly similar to the Complainant’s trademark POSCO".
2. The Respondent has no rights or legitimate interests with respect to <posco.com> for the following reasons:
2.1 To the best of the Complainant’s knowledge, the Respondent has not conducted any business in the steel industry in Republic of Korea and the Respondent has not obtained any rights or legitimate interests as a result of any contact and/or business relationship with the Complainant.
2.2 SGEICC had registered and maintained the domain name <posco.com> on behalf of eDigitals pursuant to an agency agreement dated August 30, 2000 (the "Agreement"). The Agreement as annexed to the Complaint was in Korean. The accompanying English translation interprets Articles 1 to 3 of the Agreement as follows:
"Article 1 (Object)
"All internet domain names including ‘digital.com.cn’ that are registered, and will be registered in the Republic of China in the name of Mr Kim, Il-sung, the representative of [SGEICC], and information related to the internet.
"Article 2 (Purposes)
"The purpose of this Agreement is to assist [eDigitals] to carry out an internet business within the Republic of China.
"Article 3 (Method of Management)
[eDigitals] shall take all responsibilities for the maintenance of the domain names and the costs incurred in connection with the domain names. Mr Kim, Il-sung shall allow [eDigitals] to use his name in connection with the registration of the domain names."
2.3 "The Respondent is an employee of and/or affiliated with SGEICC, the former registrant of the disputed domain name, and/or eDigitals, the principal owner of the disputed domain name ... SGEICC subsequently transferred the rights to the domain name to the Respondent, who is currently maintaining the domain name as an agent of SGEICC and eDigitals"
2.4 eDigitals’ representative, a Mr. Sam-Hee Cho, met Mr. Jin Geun Yoo of the Complainant at the Complainant’s office on February 7, 2001. At the meeting, Cho admitted that <posco.com> was registered to pressure the Complainant to invest in eDigitals. Cho stated that he would transfer <posco.com> to the Complainant in exchange for the Complainant’s investment of US$166,600.00 into eDigitals. Mr. Yoo has provided an affidavit testifying to the fact and content of the meeting between Cho and himself.
2.5 Mr. Yoo’s affidavit also indicated that Mr. Cho had claimed at the meeting that eDigitals is in the business of buying and selling domain names and eDigitals own several hundred domain names. As such, there is a pattern of registering a domain name to prevent the trademark owner from reflecting the trademark as a corresponding domain name under Rule 4(b)(ii).
2.6 On or about March 7, 2001, shortly after the original Complaint was filed, but before the Notice of Complaint and Commencement of Administrative Proceeding was delivered to the Registrar, SGEICC transferred the domain name to the Respondent in order to circumvent the current proceedings.
3. <posco.com> was registered and is being used in bad faith for the same reasons stated in paragraphs 2(4) and 2(5) above. In addition, the Complainant contended that the registration of a domain name primarily for the purpose of selling the domain name for valuable consideration in excess of out of pocket costs is considered "bad faith" use of the domain name.
The Complainant accordingly requested the transfer of <posco.com> to the Complainant.
B. The Response
This Panel found the style and structure of the Response difficult to follow but identifiably raised the following contentions against the Complainant’s request for transfer of <posco.com>:
1. The Respondent had bought <posco.com> from SGEICC in late February 2001, and the transaction had been in progress before that.
2. The Complainant had no rights in the word POSCO. Many other companies are using the trademark POSCO. For example, a Japanese company, Pos Systems, is operating a website at <posco.co.jp>. There are trademark registrations for POSCO at the USPTO not owned by the Complainant. The Respondent particularly identified:
2.1 Registration No 2065397 which covers furniture
2.2 Registration No 1386552 which covers unwrought and partly wrought common metals
2.3 Registration No 2019695 which covers paints
3. Complainant’s trademarks and <posco.com> are identical but many others are using POSCO and <posco.com> will only be used to provide information and does not infringe the trademark POSCO.
4. The Respondent cited Asphalt Research Technology Inc. v. Anything.com (WIPO Case No. D2000-0967) in support of his contention that registration of a generic domain non-famous domain name establishes legitimate interest and delays in developing a website will not remove that legitimate interest.
5. The Respondent had a plan to develop a website under the domain <posco.com> to provide information on the city of Shenyang but could not launch the website because the Respondent could not edit the WHOIS information. In support, the Respondent referred to a business plan and a browser printout of an HTML document. On this basis, the Respondent claimed to have a legitimate interest in <posco.com> and did not register it in bad faith.
6. <posco.com> was not registered and is not being used in bad faith because:
6.1 "POSCO" is an abbreviation of "Portal of Shenyang, Co" or "Portal of Shenyang, Company". The Respondent had tried to register <pos.com>, <posc.com>, <poscom.com>, <posinc.com> and <poscompany.com> but they were already taken.
6.2 The Respondent does not like cybersquatting and did not cybersquat.
7. The Complainant must prove relations between SGEICC and the Respondent.
8. The Complainant has not demonstrated that <posco.com> was registered or used in bad faith for the following reasons:
8.1 The Respondent had neither knowledge of the Complainant nor the trademark POSCO. The Respondent, being a resident of China had no basis for knowing of the Complainant’s trademark registrations in Republic of Korea and China at the time <posco.com> was registered. The Respondent did not know that POSCO was a well-known trademark prior to registering <posco.com> because the Complainant had not advertised its products and trademark through the mass media in China. The Complainant’s products were also highly-specialized products.
8.2 The Respondent had refused to sell <posco.com> despite an offer from a third party to buy it. In any event, an offer to sell a generic domain name after being contacted by a trademark holder does not constitute bad faith.
8.3 The Complainant is committing reverse domain name hijacking.
8.4 The Complainant could have registered <posco.com> in the past but did not do so.
C. The Rebuttal
Pursuant to the Procedural Order of May 25, 2001, the Complainant submitted a Rebuttal to the Response. Other than repeating the allegations which prompted this Panel to issue the Procedural Order, the Rebuttal did not address the issues directed by the Procedural Order. The Panel therefore finds the Rebuttal to be of no assistance in that respect. The Rebuttal also included further bare allegations which are summarized as follows:
1. Whether another person may be using the term POSCO does not mean that the Complainant does not have rights in the term and the Respondent had admitted that <posco.com> is identical to POSCO.
2. In view of the Complainant’s advertising of "POSCO" and substantial business in China, the Respondent had actual or constructive knowledge of POSCO as a trademark before he registered <posco.com>;
3. POSCO is not a generic word and WIPO Case No D2000-0967 is not applicable.
4. The POSCO trademark is famous worldwide, including in China. The Complainant has advertised POSCO in China and has conducted substantial business there. Therefore, the Respondent had actual or constructive knowledge of the POSCO trademark.
5. The Respondent’s business proposal is a sham.
6. Discussion and Findings
Before proceeding with a discussion on the contentions of the parties, it is pertinent for the Panel to state its view regarding some procedural matters.
Rule 10(b) states:
"In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case."
To the best of this Panel’s knowledge, the concern of equality and natural justice finds expression in every legal system, albeit in different incarnations and to different degrees. Not only must justice be done, justice must also be seen to be done. As such, we see in Rule 2(a) an elaborate scheme of action to exhaust all reasonable options to achieve actual notice of a complaint to the concerned Respondent.
The Rules are however silent on how actual notice of subsequent communications should be ensured. In particular, where a Panel has requested further statements or documents (see Rules 10(a) and Rule 12), the Rules do not provide express guidance on this issue. So in this case, where communication of the Procedural Order of May 21, 2001, to the Respondent does not appear to have been achieved, this Panel has to decide on how to proceed.
A convenient view would be to apply Rule 2(a) to ensure that all reasonable options are exhausted. However, this Panel in exercise of its powers under Rule 10(a) and being very conscious of its responsibilities under Rule 10(c) has decided not to extend Rule 2(a) to the communication of the Procedural Order for the following reasons:
1. It is understandable that a Respondent may not have maintained current contact information with the relevant Registrar, although the Respondent would normally owe a contractual obligation to the Registrar to ensure current contact information is maintained. Therefore, there is a need to go the extra mile to ensure that a Complaint reaches the Respondent and the Respondent is given a chance to respond.
2. When a Complaint has been communicated, it is not just a contractual obligation for the Respondent to maintain current contact information. The Respondent’s interest is at stake and the Respondent has to be diligent to see to it that he receives all communication regarding the proceedings initiated by the Complaint.
3. The Complaint was communicated to the Respondent and it was fair to expect the Respondent to be well aware of the nature of the proceedings and the need to be reachable by the Center.
4. Further, the Respondent had confirmed the Respondent’s contact information and preferred method of communication in the Response. Therefore, there was a positive assertion by the Respondent that the contact information and preferred method of communication will ensure that communications reach the Respondent.
5. With knowledge of the Complaint, and with its domain name registration at stake, the Respondent must be responsible to inform the Center and the relevant Registrar of any change in the Respondent’s contact information.
In this case, pursuant to Rule 10(a), this Panel has verified that the WHOIS record of <posco.com> as of June 18, 2001, continued to provide the same contact information for the Respondent as that in the Complaint and Response. The postal and email addresses of the Respondent were no longer functional and the Respondent has failed to update the Center or the Registrar with current contact information.
The Complainant was given 7 days to make further submissions pursuant to the Procedural Order. In exchange, the Respondent was given 7 days as well to reply. Although the Complainant had made submissions beyond the Procedural Order, the Respondent could have countered those submissions in reply. In view of the above reasons, any failure on the part of the Respondent to reply and any prejudice suffered thereby are really the Respondent’s fault. Therefore, this Panel finds that a fair opportunity has been given to the Respondent to present its case in relation to the Procedural Order and the extraneous submissions of the Complainant.
In the circumstances, this Panel will proceed to decide upon the proceedings on the basis of the Complaint, the Response and the Rebuttal without the Respondent’s reply to the Rebuttal.
In order to succeed in this proceeding, Article 4(a) of the Policy requires the Complainant to prove the existence of each of the following elements:
1. <posco.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of <posco.com>; and
3. <posco.com> has been registered and is being used in bad faith.
Identical or confusingly similar trademark
By virtue of the 77 trademark registrations of the Complainant for the trademark POSCO, this Panel holds that the Complainant has rights in the trademark POSCO. Even if the Complainant’s trademark rights may be limited to the countries and goods and services covered by the various trademark registrations, unless and until all these registrations are invalidated, it cannot be maintained that the Complainant does not have any rights whatsoever in the trademark POSCO. Whether other parties also have rights in the word POSCO (as a trademark or otherwise) or are using the trademark POSCO is irrelevant for determination of this issue. It is also noted that the Respondent had admitted that the domain name is identical to the trademark.
The ".com" portion of the domain name <posco.com>, being a non-distinguishing feature should be ignored when comparing the domain name against the relevant trademark. Based on the above, this Panel finds that the domain name <posco.com> (disregarding the ".com" portion) is identical to the Complainant’s trademark POSCO.
Upon examining the Respondent’s basis for claiming a legitimate interest, this Panel finds the Respondent’s contentions unsupported by evidence or irrelevant. More specifically:
1. The Respondent has not shown any real plans to develop the website prior to the Complaint in the manner as claimed by the Respondent. This Panel does not consider the HTML document and business proposal credible.
The HTML document appeared to be a detailed webpage. However, despite what appeared to be links in the document to other related documents, the Respondent did not provide any evidence of the pages which should have been linked to this document. A website invariably incorporates several webpages. The development of a website ordinarily involves some form of design specification, graphical mockups and skeletal drafts of the main pages which progresses in detail towards a set of web pages comprising the whole website. The HTML document appears to be a fully developed home or main page but without any hint of the existence of the prior development steps or at least partially developed related pages. This, together with the lack of any explanation, is unusual. The Panel does not see why the Respondent needed to edit the WHOIS information of <posco.com> to launch the website. The Respondent did not provide any information on the same.
Similarly, the business plan was undated and there was no evidence on whether or how the business plan had been used.
2. The Respondent’s reliance on WIPO Case No. D2000-0967 was misplaced. That case dealt with generic, descriptive domain names and was really limited to its circumstances. The Respondent in that case had successfully shown that the relevant domain name was actively redirecting browsers to another domain name and there were steps undertaken to develop a website under the relevant domain name. Therefore, a delay in putting up a website under the domain name was excusable. Here, there was no credible evidence of a website or business development.
Although the Respondent has failed to show a right or legitimate interest in <posco.com>, the burden remains on the Complainant to show that the Respondent in fact does not have a right or legitimate interest in <posco.com>.
In this Panel’s view, the Complainant submission on the absence of a website under the domain name is insufficient to justify a finding that the Respondent had no right or legitimate interest in the domain name. Even if there was positive evidence that no website was intended at the domain name, there is still a reasonable possibility that there could be a legitimate interest in the domain name. Web services are but only one type of service on the Internet that uses the domain name system. A domain name may also be used on the Internet for other services like file transfer protocol services and mail. Therefore, this Panel is not prepared to find that there is no right or legitimate interest in the domain name simply on the basis of the absence of a website.
It appears on a plain reading of the English translation of the Agreement that it relates only to domain names at the ".CN" country code Top Level Domain ("TLD"). Nothing in the Agreement expressly points to a relationship between SGEICC and eDigital regarding ".com" domain names, or for that matter domain names beyond the ".CN" country code TLD.
The Agreement does indicate the possibility that there is a relationship between SGEICC and eDigital which could go beyond ".CN" domain names. This Panel accepts Mr. Yoo’s affidavit testimony that SGEICC is a front for eDigital and Mr. Cho’s admission that <posco.com> was registered to pressure the Complainant to invest in eDigital and that Mr. Cho would procure the transfer of <posco.com> to the Complainant in exchange for the Complainant’s investment of US$166,600.00 into eDigitals. It is accepted that such testimony may have limited admissibility or weight in some jurisdictions. However, in view of the nature of administrative proceedings such as this, it will be allowed.
This Panel accordingly holds, on a balance of probabilities, that eDigitals and thereby SGEICC did not have a right or legitimate interest to register the domain name.
Therefore, all that remained was for the Complainant to translate SGEICC’s lack of a right or legitimate interest to the Respondent. The Complainant had undertaken a 2- pronged approach, namely that (1) the Respondent was an agent, employee or affiliate of SGEICC or eDigitals, and (2) the domain name was transferred to the Respondent to avoid a panel decision against SGEICC. A finding for the Complainant on these grounds would in the circumstances also result in a finding that there was bad faith registration and use of the domain name, or at least raise a case for the Respondent to answer. Unfortunately, the Complainant failed to prove either ground.
The Complainant’s allegation that the Respondent was an employee of or affiliated with SGEICC or eDigitals, or that the Respondent maintained the domain name as an agent of SGEICC or eDigitals was a bare allegation unsupported by any evidence. An opportunity was given to the Complainant in the Procedural Order to support this allegation but the Complainant failed to do so. Therefore, in the face of a denial by the Respondent, this Panel has to hold on a balance of probabilities that the Complainant had failed to show the same.
The Complainant’s allegation that <posco.com> was transferred to the Respondent after the original Complaint was filed but before the Notice of Commencement of Administrative Proceeding was delivered to the Registrar was also another bare allegation unsupported by any evidence. The Complainant repeated the same allegation in the Rebuttal but failed to provide any evidence for its contention. Although a transfer to the Respondent before the delivery of the Notice of Commencement of Administrative Proceeding to the Registrar should have been accepted and effected by the Registrar, a transfer prior to the original Complaint should also have been accepted and effected by the Registrar. In view of these possibilities, it was not enough for the Complainant to rely on a bare allegation. On the other hand, the Respondent has indicated that negotiations with SGEICC were already in progress at least one month prior to the filing of the original Complaint. Caught in a cross-fire of bare assertions and without additional evidence to tip the balance towards the Complainant, this Panel is unable to find in favour of the Complainant on the balance of probabilities.
Therefore, this Panel finds that the Complainant has failed to show that the Respondent did not have a right or legitimate interest to register the domain name.
Bad faith registration and use
In view of the foregoing, the Complainant has also failed to show that the domain name was registered and used in bad faith by the Respondent. In the circumstances, it is also unnecessary to consider the other contentions of the Respondent.
The Complainant had requested a transfer of the domain name in the Complaint. For the reasons stated above, the Complaint is dismissed.
Soh Kar Liang
Dated: June 22, 2001