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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Echelon Corporation v. Jung Hochul

Case No. D2001-0939

 

1. The Parties

The Complainant in these Administrative Proceedings is Echelon Corporation, a Delaware corporation with a principal place of business at 415, Oakmead Parkway, Sunnyvale, California 94086, USA and carrying on business at 4015, Miranda Avenue, Palo Alto, California. U.S.A.

The Respondent is Jung Hochul of Pyungkwang APT 101-1206, Hayang-up, Kyongsan, Kyongbuk 712-900, Korea.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <lonmark.com>. The registrar with which the domain name is registered is Tierranet, Inc.

 

3. Procedural History

On July 20, 2001, the Complaint was filed by the Complainant by e-mail with the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The hard copy was received by the Center on July 23, 2001.

On July 20, 2001, the Center received the First Amendment to the Complaint by e-mail and in hard copy on July 23, 2001. Hardcopies of the Amended Complaint were sent to the Respondent and the Registrar without exhibits.

On July 25, 2001, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant by e-mail.

On July 30, 2001, the Center received the Second Amendment to the Complaint by e-mail and in hard copy on August 3, 2001. Hardcopies of the said Second Amendment to the Complaint were sent to the Respondent and the Registrar without exhibits.

On July 31, 2001, the Center sent a Request for Registrar Verification to the Registrar. On August 6, 2001, the Registrar responded to the Center by e-mail and confirmed that the Registrar had received a copy of the Complaint, that said domain name <lonmark.com> was registered by the Registrar, that the Respondent was the current registrant of said domain name and provided details of the Respondent, the administrative contact, the technical contact and the zone contact in respect of the said registration. Furthermore the Registrar confirmed that the Policy applied to said registrations, that the domain name had active status and that said registration was currently on hold.

On August 9, 2001, the Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.

On August 9, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent (in his capacity of the domain name registrant, administrative contact, technical contact and zone contact) by courier (with enclosures) and by e-mail (Complaint without attachments).

On the same date a copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to ICANN and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia stated that the Administrative Proceedings had commenced on August 9, 2001, and that the Respondent was required to submit a Response to the Center on or before August 29, 2001.

On September 5, 2001, as no Response had been filed by the Respondent, the Center sent by e-mail, a Notification of Respondent Default to the Respondent.

On September 20, 2001, having invited James Bridgeman to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman, the Center proceeded to appoint this Administrative Panel consisting of a single member.

On September 20, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties by e-mail and advised that absent exceptional circumstances, the Administrative Panel was required to forward its decision to the Center by October 4, 2001.

On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is the owner of the trademark and service mark LONMARK for use with a variety of electronic communications products and services. The mark has been in use since 1993 in connection with the Complainants trade in goods including electronic circuits, electronic circuit boards, electrical circuit components, computer hardware, computer software and peripheral devices. The Complainant has registered and is the registered owner of the LONMARK trademark in the United States and throughout the world, including in the Respondent's home country of Korea. The Complainant has furnished this Administrative Panel with details of said registrations as an annex to the Complaint. The Complainant states that the following registrations are illustrative of the Complainant’s registrations for the LONMARK trademark:

Country

Registration No.

Date of Registration

United States

1,989,518

July 30, 1996

Australia

654060

August 9, 1996

Austria

158.453

June 30, 1995

Benelux

569,867

February 22, 1995

Canada

TMA 470757

February 11, 1997

China - PRC

886860

October 20, 1996

Denmark

02567/1995

April 21, 1995

Finland

141740

December 20, 1995

France

95/559638

February 22, 1995

Germany

395 09 373

March 11, 1996

Greece

123439

March 15, 1995

Hungary

146766

March 17, 1995

Iceland

916/1995

August 28, 1995

Israel

97262

August 5, 1996

Italy

725291

September 23, 1997

Japan

3318167

June 6, 1997

Korea

359854

April 16, 1997

Mexico

531379

September 23, 1996

New Zealand

251306

May 17, 1995

Norway

173.039

May 9, 1996

Poland

99334

December 5, 1997

Portugal

308,097

March 5, 1996

Romania

25293

March 22, 1995

Singapore

T95/06659I

July 20, 1995

South Africa

95/09283

March 23, 1998

Spain

1952445

October 5, 1995

Switzerland

425976

March 1, 1995

Sweden

312 144

April 26, 1996

United Kingdom

2011609

February 20, 1995

 

5. Parties’ Contentions

A. Complainant

The Complainant has submitted sales promotional material from its www site at <lonmark.org> and other sources, as evidence of its established reputation and goodwill in the use of the LONMARK trademark and submits that the Complainant is known throughout the world as offering electronic communications related products and services under the mark LONMARK.

The Complainant submits that the second level domain name in the Respondents domain name registration <lonmark.com> is identical to the Complainant's LONMARK trademark. The Complainant further submits that persons encountering the subject domain name will believe it emanates from, is endorsed by, or is licensed by Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in the subject domain name. Furthermore the Complainant submits that the Respondent is not commonly known by the domain name, and has acquired no trademark or service mark rights in the name. In addition, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the said domain name.

The Complainant further submits that the Respondent has not used or made 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. The Complainant submits that the Respondent registered the subject domain name on May 17, 2001, and has not made use of the domain name at all.

The Complainant submits that the Respondent seeks commercial gain by attempting to sell the domain name and this is evidenced by the statements found on the Respondent's web site located at www.lonmark.com on July 17, 2001, stating "This domain name is for sale." The Respondent has clearly identified his intentions in this statement. The Respondent is clearly offering the domain name <lonmark.com> for sale. The Complainant has furnished this Administrative Panel with a screen shot of the www site at the <lonmark.com> address as it appeared on July 17, 2001 in support of these assertions.

The Complainant submits that this activity interferes with the business of the Complainant and creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the www site.

The Complainant submits the Respondent is attempting to capitalize financially on the Complainant's trademark. The Complainant and its products and services marketed under LONMARK are known throughout the world. Further, Complainant maintains an office in Korea located at #201, 27F, Korea World Trade Center, 159, Samsung-dong, Kangnam.Ku, 135-729, Seoul, Korea.

The Complainant submits that having registered the domain name <lonmark.com> and is offering it for sale, the intentions of the Respondent are apparent and he has clearly registered the domain name primarily for the purpose of selling the domain name registration.

The Complainant also submits that the Respondent has a past history of registering domain names incorporating other entities' famous trademarks and service marks. In support of this assertion, the Complainant has furnished this Administrative Panel with details of four domain names owned by the Respondent viz. <netnasdaqkorea.com>; <webnasdaqkorea.com>; <gonasdaqkorea.com> and <cybernasdaqkorea.com>. The Complainant has furnished printouts from the WHOIS database as evidence of the Respondent's ownership of these registrations. The Complainant submits that NASDAQ is a famous trademark and service mark owned by the National Association of Securities Dealers, Inc. in the field of financial securities. The Complainant has also furnished is a copy of the U.S. registration information for the mark NASDAQ owned by the National Association of Securities Dealers, Inc. and a printout of its web site which can be found at <www.nasdaq.com>. The Complainant submits the Respondent's ownership of <netnasdaqkorea.com>; <webnasdaqkorea.com>; <gonasdaqkorea.com> and <cybernasdaqkorea.com> is evidence a pattern of cybersquatting.

The Complainant submits that there is therefore sufficient evidence to demonstrate the Respondent's bad faith in the registration and use of the domain name <lonmark.com>.

B. Respondent

There was no Response filed by the Respondent.

 

6. Discussion and Findings

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

It is clear from the evidence that as a consequence of its trademark registrations and established goodwill in the use of the trademark in numerous jurisdictions throughout the world, the Complainant has rights in the trademark LONMARK. It is equally clear that the domain name in dispute is identical to the Complainant's trademark.

The Complainant has therefore established the first part of the test in paragraph 4(a) of the Policy.

While the onus rests on the Complainant to satisfy each of the three elements in the test in paragraph 4(a) of the Policy, it has been accepted by panelists that because of the difficulty in proving a negative in circumstances such as the present case the onus shifts to the Respondent. The Respondent has not filed any Response in these proceedings and therefore has not made any attempt to explain how it might have rights or legitimate interests in the said domain name.

The Complainant has alleged that the Respondent is not commonly known by the domain name, and has acquired no trademark or service mark rights in the domain name. This position is supported by the fact that the Complainant is the owner of a registered trademark in the jurisdiction in which the Respondent resides and that the Complainant has an office in Seoul. In addition, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the said domain name. The Complainant further alleges that the Respondent has not used or made 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.

In the absence of any evidence to the contrary, this Administrative Panel accepts that the Complainant has also established the second element in the test in paragraph 4(a). In reaching this conclusion, this Administrative Panel is conscious that the Complainant has established that it has trademark rights and an established reputation in the trademark LONMARK in numerous jurisdictions throughout the world including a registered trademark in the jurisdiction in which the Respondent resides.

Paragraph 4(b)(i) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name is evidence of registration and use in bad faith.

It is clear from the evidence that the Complainant has a substantial reputation in the trademark LONMARK and has taken active steps to protect this trademark by securing registrations in numerous jurisdictions across the world. It is also clear that the Complainant has an established reputation in the jurisdiction where the Respondent is resident and has an office in Seoul.

Furthermore it would appear from the evidence that the Respondent has not made any attempt to establish an active www site at the address and has merely permitted the address to resolve to a www page on which there is what appears to be a standard statement that "this domain is for sale".

In view of the above this Administrative Panel is satisfied that the Complainant has made out a prima facie case that the Respondent registered said domain name primarily for the purposes of selling or otherwise transferring the said registration to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly relating to the domain name. It is difficult to imagine how the Respondent might have had any other intention in registering and holding this domain name and it is clear that the Respondent is advertising the said domain name for sale. While such an advertisement is not in itself evidence of bad faith on the part of the Respondent, in the circumstances outlined above, it would seem to this Administrative Panel that the Complainant is the target of the advertisement and that the Respondent intended to profit from registering the Complainant's trademark as a domain name.

Therefore, on the balance of probabilities, in the absence of any explanation whatsoever from the Respondent, this Administrative Panel is satisfied that the Complainant has established that the Respondent registered and is using said domain name in bad faith.

 

7. Decision

With specific reference to paragraph 4 of the Policy and paragraph 15 of the Rules this Administrative Panel therefore decides that the Respondent has registered the domain name <lonmark.com> identical to a trademark mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <lonmark.com> should be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: October 4, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0939.html

 

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