WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratoire Nutergia v. Jeongyong Cho
Case No. D2007-1582
1.
The Parties
Complainant is Laboratoire Nutergia, of Capdenac Gare, France, represented by Me
Pattrick Therond-Lapeyre, France.
Respondent is Jeongyong Cho, of Gwangju, Republic of Korea.
2.
The Domain Name and Registrar
The disputed domain name <nutergia.com> (“Domain Name”) is currently registered
with Korea Information Certificate Authority, Inc. d/b/a DomainCa.com
(the “Registrar”), which has a business address in Seoul, Korea.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on October 25, 2007.
On November 1, 2007, the Center notified Complainant that the Complaint was
administratively deficient, because it was filed in English rather than Korean (the
language of the registration agreement). The Center requested Complainant to remedy
this defect or to submit a request to proceed in English language that explained why
Complainant believed this was appropriate. The Center also requested Complainant to
correct certain other defects.
On November 12, 2007, Complainant filed a request with the Center to hold the
proceedings in English, and corrected the other defects identified by the Center.
The Center verified that the Complaint, as amended, satisfied the formal requirements
of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO
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Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified
Respondent of the Complaint and the proceedings officially commenced on
November 14, 2007. The Center’s formal notification was written in both English and
Korean and was sent electronically to Respondent’s e-mail addresses, by international
courier, and by facsimile. The Center advised that Respondent was required to submit
a Response by December 4, 2007, and that if no Response was submitted, Respondent
would be considered in default and an Administrative Panel would be appointed to
decide the case. The Center also advised Respondent to notify the Center by November
21, 2007, if he wished to respond but was having language difficulties with the
Complaint.
Respondent did not submit a Response to the Complaint by the deadline of
December 4, 2007, as required by the Rules, paragraph 5(a). Accordingly, on
December 7, 2007, the Center notified the parties that Respondent had defaulted in
responding to the Complaint and that a single-member Administrative Panel would be
constituted, as requested by Complainant.
The Center appointed Grant L. Kim as the sole panelist in this matter and notified the
parties of the same on December 21, 2007. The undersigned Panelist has submitted the
Statement of Acceptance and Declaration of Impartiality and Independence, as required
by the Center to ensure compliance with the Rules, paragraph 7.
4.
Factual Background
Complainant Laboratoire Nutergia is the registered owner of a French trademark for
LABORATOIRE NUTERGIA. The trademark application was granted registration on
June 23, 2003. Complainant is also the registered owner of the international trademark
for NUTERGIA, which was registered on July 24, 1996 and renewed on July 24, 2006.
Complainant’s international trademark is designated to apply in Belgium, Luxembourg,
the Netherlands, Switzerland, the Czech Republic, Germany, and Italy. The
NUTERGIA mark is registered in International Class 005, which includes “dietetic
substances adapted for medical use”.
Respondent registered the Domain Name with the Registrar on May 9, 2006. The
Registrar confirmed the identity of the registrant in an e-mail to the Center. As part of
Respondent’s registration agreement with the Registrar, Respondent agreed to submit
any disputes to a proceeding under the Policy.
Complainant has submitted printouts of prior versions of <nutergia.com>, annexed to
the Complaint. These printouts indicate that when the original Complaint was filed,
Respondent was using the Domain Name to operate a website with sponsored links to
commercial websites. The subject matter of the linked commercial websites included
shopping, computers, and gay and lesbian films.
When the Panel input the website address, “www.nutergia.com” in January 2008, the
website displayed an English language page that states, “For Sale Domain!” and
“Interested in purchasing this Domain Name?” The website invites prospective buyers
to contact an email address corresponding to that of Respondent to arrange a Paypal
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transaction. Opening the “Properties” of this website indicates that it links to and
displays content from “http://my.dreamwiz.com/gregorycho/parking/index.html”.
5.
The Parties’ Contentions
A.
Complainant’s Contentions
Complainant states that it is a French pharmaceutical company, with branches in Spain,
Belgium, Switzerland, and the Czech Republic. Complainant’s current website, located
at domain name <nutergia.fr>, states that it has specialized in making and marketing
natural products to restore cell balance and regain health since 1989.
Complainant states that it was the registrant of the Domain Name as of 2003, but that
the registration lapsed when its service provider failed to renew the registration of the
Domain Name. In March 2004, Complainant discovered that the Domain Name had
been registered by another and attempted to secure transfer of the Domain Name
directly from its then-registrar, but was unable to do so.
Complainant requests a decision requiring the Registrar to transfer the Domain Name
<nutergia.com> to Complainant pursuant to Paragraph 4(i) of the Policy. Complainant
asserts that Respondent’s use of the Domain Name satisfies the standard established in
Paragraph 4(a) of the Policy because the Domain Name is confusingly similar to
Complainant’s NUTERGIA trademark; (2) Respondent has no rights or legitimate
interests in the Domain Name; and (3) the Domain Name has been registered and is
being used in bad faith.
Complainant contends that its rights in the NUTERGIA mark are demonstrated by its
ownership of a French trademark registration for “LABORATOIRE NUTERGIA”
(No. 033233201, filed June 23, 2003) and an international trademark registration for
“NUTERGIA” (No. 658974, filed June 24, 1996). Complainant asserts that
Respondent’s Domain Name is identical to Complainant’s international trademark and
confusingly similar to Complainant’s French trademark.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain
Name. Complainant notes that Respondent has never offered products for sale using
the name or trademark NUTERGIA.
Complainant further contends that Respondent has registered and used the Domain
Name in bad faith. Complainant states that Respondent has never responded to the
formal request for transfer of the Domain Name made by Complainant. Rather,
Respondent reacted by trying to sell the contested domain name through an auction on
SEDO, a German website.
B.
Respondent’s Contentions
Respondent did not reply to Complainant’s contentions.
6.
Discussion and Findings
The Panel finds that it was properly constituted pursuant to the Rules and that it has
jurisdiction to decide this dispute. The Panel notes that the record, including a
confirmation communication from the Registrar, shows that Respondent agreed to the
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Policy as part of its Domain Name registration, and was notified of both the Complaint
at the addresses included in Respondent’s registration. The Panel further notes that
notwithstanding Respondent’s failure to respond to the Complaint, the Panel has
reviewed the record to determine whether or not Complainant is entitled to the relief
requested under the Policy, the Rules, and the Supplemental Rules.
A.
Language of the Proceeding
According to Paragraph 11 of the Rules, the language of the administrative proceeding
shall be the language of the Registration Agreement unless the Panel decides otherwise.
Since the Registrar has confirmed that the registration agreement is in Korean, that is
the language of this proceeding unless the Panel decides otherwise. Upon receiving
notice of the same from the Center, Complainant submitted a request for English to be
the language of the proceeding, citing a number of specific reasons.
When the Center notified Respondent of these proceedings, it provided Respondent
with the Notification of Complaint and Commencement of Administrative Proceedings
in both English and Korean. The Center stated that Complainant had requested the
proceedings be conducted in English, and that if Respondent was intending to file a
Response but was experiencing language difficulties with the Complaint, Respondent
should indicate this to the Center by no later than November 21, 2007. The Center
further stated that if Respondent failed to respond by that date, the Center would
proceed on the basis that Respondent had no objection to Complainant’s request that
English be the language of this proceeding. The Center also stated that pursuant to
paragraph 11(a) of the Policy, the Panel would make the final decision regarding the
language of the proceedings.
Respondent has neither responded to nor acknowledged these proceedings in any way.
Accordingly, the Panel finds that Respondent has waived any objection to this
proceeding being conducted in English, by failing to respond to the Center’s notice, in
both English and Korean, that Respondent would be deemed to have no objection to
proceeding in English if he did not respond. The Panel concludes that it is reasonable
to conduct this proceeding and to render the decision in English. See, e.g. Taylor Made
Golf Company, Inc. d/b/a TaylorMade adidas Golf v. Kang Doeck-Ho, WIPO Case
No. D2005-1262.
B.
Scope of the Policy
Pursuant to Paragraph 4(a) of the Policy, a domain name may be cancelled or
transferred to Complainant where the three elements below are satisfied. The burden of
proof is on Complainant.
(i)
The Domain Name is identical or confusingly similar to a trademark or
service mark in which Complainant has rights; and
(ii)
Respondent has no rights or legitimate interests with respect to the Domain
Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Transfer or cancellation of the domain name is the sole remedy provided to
Complainant under the Policy, as described in Paragraph 4(i).
C.
Identical or Confusingly Similar
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To satisfy this element, the Panel must find that (1) Complainant has demonstrated its
rights in the NUTERGIA mark; and (2) the disputed Domain Name is identical or
confusingly similar to Complainant’s mark.
With respect to the first element, a domestic trademark registration is sufficient to show
Complainant’s rights to the mark. See, e.g., Uniroyal Engineered Products, Inc. v.
Nauga Network Services, WIPO Case No. D2000-0503 (registered U.S. trademark is
adequate to demonstrate Complainant’s rights); Thaigem Global Marketing Limited v.
Sanchai Aree, WIPO Case No. D2002-0358, para. 6.3 (“The propriety of a domain
name registration may be questioned by comparing it to a trademark registered in any
country.”) Based on Complainant’s evidence of ownership of an international
trademark to NUTERGIA and the French trademark to “LABORATOIRE
NUTERGIA”, the Panel finds the first element established.
It is well-established that the specific top-level identifier of a domain name, such as
“.com”, “.org” or “.net.” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar. See, e.g. Zedge Ltd. v.
Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585. Here, the
<nutergia.com> Domain Name is identical to Complainant’s international NUTERGIA
trademark, with the insignificant addition of the top level identifier, “.com”. The
Domain Name is also confusingly similar to Complainant’s French trademark,
“Laboratoire NUTERGIA”.
Accordingly, the Panel finds the Domain Name identical and confusingly similar to
Complainant’s marks.
D.
Rights or Legitimate Interests
It is the consensus view of UDRP panelists that, to establish the second element,
Complainant must make a prima facie showing that Respondent has no rights to or
legitimate interests in the Domain Name. Once Complainant has made a prima facie
case, the burden shifts to Respondent to present evidence of its rights or legitimate
interests. See, e.g., Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043, para.
6.9; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, para. 6(B).
Complainant has stated that Respondent, a private resident of the Republic of Korea,
has no prior rights to justify the registration and use of the Domain Name. Moreover,
Complainant contends that Respondent has not attempted to market goods or services
under the “Nutergia” name; instead, when Respondent previously placed content on
the “www.nutergia.com” site, it placed sponsored links to unrelated movies and other
services.
The Panel finds that Complainant has presented a prima facie case that Respondent
lacks rights or legitimate interests in the Domain Name. The Panel also finds that
Respondent has failed to present any evidence to rebut this prima facie case.
Accordingly, the Panel finds the second element established.
E.
Registered and Used in Bad Faith
To establish the third element, Complainant must demonstrate pursuant to
Paragraph 4(a)(iii) of the Policy that Respondent has registered and used the Domain
Name in bad faith. Paragraph 4(b) of the Policy sets forth a non-exclusive list of
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circumstances that may show bad faith, including registrations made (i) primarily for
the purpose of selling, renting, or transferring the domain name to a complainant (who
owns the relevant trademark or service mark) or a complainant’s competitor; (ii) to
prevent the trademark or service mark owner from reflecting the mark in a
corresponding domain name, where Respondent has engaged in a pattern of such
conduct; (iii) primarily for disrupting a competitor’s business; or (iv) to attract Internet
users intentionally and for commercial gain, by creating a likelihood of confusion with
the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
website or location, or an offered product or service.
Registration of an arbitrary trademark with an exclusive connection to a commercial
product and limited potential utility as a common conveyor of information supports an
inference of bad faith. See, e.g. Pharmacia & Upjohn Company. v. Xanax Advocates,
WIPO Case No. D2000-0817. The record contains no evidence that “Nutergia” has any
pre-existing meaning in English, French, or Korean, and the Panel is not aware of any
such pre-existing meaning. On the contrary, this appears to be an arbitrary term created
by Complainant to describe its company, which is vaguely related to an English word
“nutrition”. Additionally, the mark appears to be associated with Complainant’s
company and products. Respondent’s registration of the Domain Name that appears to
be an arbitrary term associated exclusively with the Complainant supports the inference
that Respondent had no legitimate purpose for this registration, and instead registered
the Domain Name for the purpose of selling it to Complainant. This inference is
supported by the fact that Respondent’s website currently indicates that the Domain
Name is for sale.
Respondent’s previous use of the website to offer sponsored links to sites selling
computers, gay and lesbian films, and offering other forms of shopping further supports
an inference of bad faith. Specifically, it is evidence of intent to profit from the
goodwill of another’s trademark, by attempting to generate click-through revenues from
consumers looking for Complainant’s website who have been diverted to Respondent’s
website. See, e.g. Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case
No. D2006-1585.
The Panel finds that the third element is established.
7.
Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and
paragraph 15 of the Rules, the Panel orders that the Domain Name <nutergia.com> be
transferred to Complainant.
Grant L. Kim
Sole Panelist
Dated: January 14, 2008
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