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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SEMATECH, Inc. v Lee Hyungyu
Case No. D2001-0870
1. The Parties
The Complainant is SEMATECH, Inc. ("the Complainant") a corporation which does business as International SEMATECH, of 2706 Montopolis Drive, Austin, Texas, United States of America.
The Respondent is Lee Hyungyu ("the Respondent") of Cho-won bila, 85-413, A-hyun 1 dong, Mapo-gu, Seoul, 121-011 Korea.
2. The Domain Name and Register
The Domain Name the subject of the Complaint is <sematech.com> ("the Domain Name").
The Registrar with which the Domain Name is registered is Netpia.com, Inc. ("the Registrar"), of Yongdungpo-gu, Seoul, Korea.
3. Procedural History
The World Intellectual Property Organization Center ("the Center") received a hard copy of the Complaint from the Complainant on July 10, 2001. An Acknowledgement of Receipt of Complaint was sent by the Center on July 11, 2001. The Complaint was received by e-mail on July 19, 2001 with the exhibits being received by e-mail on July 24, 2001.
On July 13, 2001, a Request for Registrar Verification was transmitted to the Registrar requesting it to:
(1) confirm that a copy of the Complaint had been sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Rules"), Paragraph 4(b);
(2) confirm that the Domain name is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the Domain name;
(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrar’s WHOIS database for the Domain Name registrant, technical contact, administrative contact and billing contact, for the domain name;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Name;
(6) indicate the current status of the Domain Name, and
(7) confirm the language of the registration agreement.
On July 21, 2001, the Registrar confirmed by reply e-mail that the Domain Name is registered with it and that the Respondent was the current registrant of the Domain Name. The Registrar also confirmed the Respondent’s address and that the Respondent was listed as the Administrative, Technical and Billing Contact, providing e-mail and telephone details. The Registrar also forwarded the requested WHOIS details and confirmed that the Policy applies to the domain name at issue. The Registrar also confirmed that the language of the registration agreement is Korean.
As the Complaint was submitted in English, on July 23, 2001, the Center sent an e-mail to the Complainant stating that, pursuant to Paragraph 11 of the Policy and in the absence of an agreement between the parties or unless specified otherwise in the underlying registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, that is Korean. The Complainant was requested to:
(1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or
(2) submit a request to the Administrative Panel to accept English as the language of the administrative proceedings if the Complainant did not choose to submit a remedied Complaint in Korean, because of such considerations as the language used in the pre-Complaint correspondence between the parties, the identity of the parties, the nationality and place of residence of the parties,.
The Complainant was also informed that, should it decide to pursue the second option, the Administrative Panel ("the Panel") would not be precluded from requiring that the proceedings continue in Korean and would not be precluded from requiring that all documentation in the proceedings not in Korean be translated.
On July 23, 2001, the Complainant forwarded a request by e-mail that the Panel use English as the language for the proceedings. The Complainant put forward the following reasons for its request:
(1) the Complainant’s place of business is in the United States of America and its representatives speak English;
(2) the Domain Name contains an English language trade mark that is registered in the United States;
(3) the pre-Complaint communications, being a cease and desist letter from the Complainant to the Respondent, was sent in English. While the Respondent’s response was in Korean, a detailed response was sent the next day, indicating that he had no difficulty having the Complaint’s letter translated into English for him;
(4) all exhibits to the Complaint are in English except for copies of Korean websites, which have been submitted in Korean;
(5) the panelists requested by the Complainant are English speakers and it was more likely that any WIPO chosen panelist will speak English rather than Korean;
(6) The Respondent is familiar with English as he used it on the website of the Domain Name. The Respondent has registered many well known domain names in English.
On July 31 2001, the Center sent an e-mail to the Complainant informing it that the Center has agreed that any Complaint filed with it where the language of the registration agreement is other than the language of the Complainant and the parties are of different countries, an agreement between the Complainant and the Respondent that the proceedings be conducted in English is required. In the absence of such an agreement, the language of these administrative proceedings shall be Korean. The Complainant was asked to provide the Center with either an agreement with the Respondent to proceed in English, or the Complaint in Korean.
On August 22, 2001, the Complainant informed the Center that, as it had not received a reply from the Respondent to its request that the proceedings be conducted in English, the Complaint would be translated into Korean and forwarded to the Center.
On August 28, 2001, the Complainant forwarded, by e-mail, translations of the Complaint and the accompanying affidavits into Korean. A hard copy was received on August 30 2001.
On September 12, 2001, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.
On September 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") was transmitted by e-mail to the Respondent. Enclosed with the Complaint Notification were the Complaint (without exhibits) in both Korean and English, the Policy in Korean and the Rules in Korean. The Complaint Notification and the enclosed documentation were also forwarded by courier.
No response was filed within the time specified by paragraph 5 of the Rules. On October 12, 2001, the Center gave the Respondent formal Notification of Respondent Default.
The Complainant elected to have the dispute determined by a three-member Panel and pursuant to paragraphs 3(b)(iv), 5(b) and 6(d) of the Rules and paragraph 7 of the Supplemental Rules, it provided names and contact information of five candidates in order of its preference.
The three-member Panel appointed consists of Dr. Annabelle Bennett SC (the Presiding Panelist), Mr. Gaynell Methvin and Professor Moonchul Chang ("the Panelists"). On October 31, 2001, after the Center received completed and signed Statements of Acceptance and Declaration of Impartiality and Independence from the Panelists, the Center notified the parties of the appointment of the Panel consisting of the Panelists.
In the circumstances of there being a three-member Panel and where the language of the proceeding is not familiar to two of the Panelists, an extension of time for the delivery of the Panel’s decision was granted until November 27, 2001.
4. Factual Background
The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel holds that these facts are proved.
The Complainant is a not-for-profit consortium that conducts research and development in the area of semiconductor manufacturing technology. It has a staff of approximately 600 people and has an operating budget of approximately US$160 million. The Complainant has enjoyed a reputation as one of the world’s premier research institutions for in excess of 12 years. Its principal place of business is in Austin, Texas, United States of America. However, it does business with suppliers, universities and other research consortia worldwide.
Its current members are Agere Systems, AMD, Conexant, Hewlett Packard, Hynix (based in Korea), IBM, Infineon (based in Germany), Intel, Motorola, Phillips (based in the Netherlands), STMicroelectronics (based in France and Italy), Texas Instruments and TSMC (based in Taiwan). The Complainant’s membership represents almost 50% of the world’s production capacity for semiconductors.
The Complainant’s original name was SEMATECH, being an acronym based on the words: Semiconductor Manufacturing Technology. The Complainant commenced its use of the name Sematech in 1987 and used it continuously until it commenced doing business under the name "International Sematech" in January 2000. SEMATECH, Inc. is the Complainant’s corporate name and the name SEMATECH is used by the Complainant for its website, e-mail, contracts and other legal documentation. The Complainant also owns the domain name <sematech.org> and has operated a website under that domain name since 1995.
The Complainant is the owner of the following trade marks which are registered in the United States of America:
(1) "SEMATECH": Registration No. 1785988, registered on August 3, 1993, and
(2) "International SEMATECH": Registration No. 75497142, registered on January 25, 2000.
Since their registration, the Complainant has continuously used these two trade marks in connection with its research and development activities. The Complainant has continuously conducted business with a majority of semiconductor equipment manufacturers worldwide.
These trade marks are widely recognised in the semiconductor industry as well as in the business world and in government and in academia. The trade marks are both distinctive and famous and have become valuable corporate assests. Included in the Complaint as exhibits was evidence that the word SEMATECH, in association with the Complainant, has been referred to and has been the topic of numerous publications, both of a technical and business nature, worldwide.
The Complainant’s Chief Executive Officer first learnt of the Respondent’s activities on February 1, 2001, upon his receipt of a facsimile from another organisation within the semiconductor industry. On February 28, 2001, the Complainant sent the Respondent a "Cease and Desist" letter informing him that his use of the Domain Name was not authorised and constituted an infringement of the Complainant’s trade marks. This letter was sent by Federal Express delivery on March 5, 2001, and an identical copy was forwarded to the Respondent by e-mail on May 14, 2001.
On May 15, 2001, the Complainant’s counsel received an e-mail reply from the Respondent demanding that the Complainant submit extensive evidence of its right to use its trade marks within 30 days, accusing the Complainant of harassing him and threatening to sue the Complainant in Korea. The Respondent’s reply did not include any evidence or explanation of the Respondent’s use of the Domain Name.
5. Parties’ Assertions
A. The Complainant
The Complainant asserts that the Domain Name should be transferred to it as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.
The Complainant asserts that the domain name is identical to or confusingly similar to trade marks in which it has rights. The respective registration numbers and dates of registration of the Complainant’s trade marks are detailed above. Additionally, the exhibits to the Complaint include status information for each of these trade marks, whereby it is recorded that the trade marks are registered in respect of "association services: namely, promoting the interests of the semiconductor industry by providing services to conduct research and development of manufacturing aids for the said industry."
The Complainant cited a number of United States legal decisions in support of this contention. It also referred to the WIPO Panel decision in Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446 in which it was held that:
"The insertion of the word "Monsanto" to the domain name is devious given that the domain name was registered by the Respondent soon after the announced merger of two giants in the pharmaceutical industry whose names must be known worldwide. Persons worldwide accessing the domain names would be bound to think that the domain names had a connection with Monsanto and Pharmacia & Upjohn – the merged entity. The Panel decides that the domain names are confusingly similar to the Complainant’s marks."
The Complainant asserts that the Respondent can have no rights or legitimate interests in respect of the Domain Name, and relies upon the following assertions:
(1) the Respondent has not used the Domain Name for the bona fide offering of goods or services of its own, but instead has posted links to sites that offer the goods and services of other companies which do not appear to be legitimate commercial activities of the Respondent. In support of this contention the Complainant exhibited a printout of the website of <sematech.com> which includes the links "VIAGRA<==For Sale==>artworksforsale. For Sale ==>BargainGolf.com". The site was also stated to be under construction.
(2) the Respondent is not commonly known by the name SEMATECH or International SEMATECH and does not operate a business or any other organisation under either name, and
(3) The Respondent is not making a legitimate non-commercial or fair use of the domain name.
The Complainant asserts that the Respondent registered and is using the domain name in bad faith, and relies upon the following assertions:
(1) the Respondent has intentionally capitalised on the strength of the Complainant’s trade marks and its goodwill to deceive people and to divert them to the Respondent’s website;
(2) the use of the Complainant’s trade marks to provide a link to a site providing testimonials about a drug that enhances sexual performance subjects the Complainant to ridicule, both tarnishing and injuring its business reputation;
(3) whilst the Respondent did not directly offer to sell the Domain Name to the Complainant, his website lists other domain names for sale. This, in addition to his refusal to cease his use of the trade marks is strong circumstantial evidence that the Respondent acquired or registered the Domain Name for the purpose of selling it to the Complainant or to a competitor for consideration in excess of the Respondent’s out-of-pocket expenses;
(4) by using the Domain Name, the Respondent intentionally attempted to attract, for financial gain, internet users to its website or other on-line locations by creating confusion or a suggestion of sponsorship or endorsement; and,
(5) the Respondent has engaged in a pattern of conduct by registering as domain names, the names of other well-known companies. Evidence of these registrations was exhibited to the Complaint and included domain names such as <cnbconline.com>, <micrographx.com>, <golforlando.com> and <myjobsinc.com>, which are similar to the well-known names "CNBC", "MICROGRAPX", "GOLF ORLANDO" and <www.myjob.com> respectively. A Whois database search was exhibited to the Complaint recording a number of domain names registered in the Respondent’s name. The Complainant states that it attempted to conduct an extensive Whois database search of the Respondent but the search aborted after 50 names.
B. The Respondent
No response was received from the Respondent.
6. Discussion and Findings
Language of the Decision
The Complaint was submitted in both English and Korean and there were no substantive documents contained in the Complaint that were not translated from English to Korean. In light of the correspondence between parties and taking into account the composition of this Administrative Panel, the Panel decides to proceed in Korean. Notwithstanding, as a matter of courtesy, the decision is also provided in English text.
Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))
The Domain Name at issue is <sematech.com>. The relevant part of the Domain Name is <sematech>. The Domain Name incorporates the relevant portions of the trade marks "SEMATECH" and "International SEMATECH". The Administrative Panel is satisfied that this part of the Domain Name is identical to or confusingly similar to the two trade marks "SEMATECH" and "International SEMATECH" registered in the name of the Complainant.
Respondent’s Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))
In his e-mail reply to the Complainant’s "Cease and Desist" letter, the Respondnet stated that he had acquired ownership of the Domain Name through his registration of it. Otherwise, the Respondent has not demonstrated, nor has he provided, any evidence of circumstances of the type detailed in paragraph 4(c) of the Policy, such as use of the Domain Name in connection with the bona fide offering of goods, that the Respondent has been commonly known by the Domain Name or that the Respondent is making legitimate non-commercial or fair use of the Domain Name. The Respondent has not asserted any right or legitimate interests in the domain name.
The Complainant submitted substantial evidence in support of its assertion that the Respondent can have no rights or legitimate interests in respect of the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.
The word <SEMATECH> is an invented word, being an acronym for "Semiconductor Manufacturing Technology" and, as such, does not appear to be one that others would legitimately choose to use unless seeking to create an impression of an association with the Complainant.
Further, both the word <SEMATECH> and the Complainant are well known by people in the semiconductor industry, in the business world and in government and academia in many countries around the world and have been referred to in many industry trade journals and business publications.
The Complainant has not licensed nor permitted the Respondent to use its trade marks or to apply for the domain name incorporating <SEMATECH>. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))
For the Complainant to satisfy this requirement, the Complainant must prove bad faith in registration as well as bad faith in use of the Domain Name. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy: (Telstra Corporation Limited v Nuclear Mushrooms WIPO Administrative Panel Decision No. D2000-0003).
The Complainant relies upon five grounds in support of its assertion that the Respondent has both registered and used the Domain Name in bad faith. These five grounds are detailed in paragraph 5A above and the established facts supporting these grounds are detailed in paragraph 4 above.
The Panel notes that while the Respondent has not directly offered to sell the Domain Name to the Complainant, his actions in attracting people to <www.sematech.com> where he has listed other domain names for sale, is strong circumstantial evidence that the Domain Name was registered for the purpose of selling it to the Complainant or a competitor of the Complainant’s Domain Name upon being notified by the Complainant that his use of the Domain Name is an infringement of the Complainant’s trade marks, without the Respondent providing any explanation of his adoption, registration and/or use of the Domain Name.
It is also relevant that the Respondent’s website <www.sematech.com> does not appear to have been developed for any credible or bona fide purpose. It contains links to other websites, such as "Viagra", which themselves do not appear to have any plausible connection to the Respondent in the absence of any explanation from him.
The Panel also notes that the Respondent has engaged in a pattern of conduct whereby he has registered a significant number of domain names that contain or are similar to the names of well-known companies.
The Panel takes all these matters into account and, in the absence of any response from the Respondent, the Panel finds that the Complainant has established that the Domain Name has been registered and is being used in bad faith.
The Panel decides that
(i) the Domain Name is identical or confusingly similar to two trade marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name, and
(iii) the Domain Name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel requires the Domain Name be transferred to the Complainant.
Dr. Annabelle Bennett SC
Gaynell C. Methvin
Professor Moonchul Chang
Dated: November 26, 2001