The Korean registrant of the domain Multident.net secured the domain in 2010; a German company filed a UDRP on the basis of a trademark registered in Germany in 2009.
The Respondent did not respond; however, the WIPO panelist noted the dictionary qualities of the domain and ordered Multident.net to remain with the Respondent:
“The principal evidence of any possible targeting in the present case is the fact that the disputed domain name is identical to the Complainant’s mark. However, the disputed domain name consists of an English portmanteau word combining the prefix “multi” with the word “dent”. While the identity of this term with the Complainant’s mark is of some significance, no evidence has been put forward to demonstrate that such term is exclusively or even predominantly associated with the Complainant, and most importantly, that this was so at the point when the disputed domain name was registered, nearly 15 years ago.”
Copyright © 2024 DomainGang.com · All Rights Reserved.ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Multident Dental GmbH v. Park Hyung Jin
Case No. D2024-40081. The Parties
The Complainant is Multident Dental GmbH, Germany, represented by Brinkmann.Weinkauf Rechtsanwalte Partnerschaft mbB, Germany.
The Respondent is Park HyungJin, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name multident.net is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2024. On September 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2024.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 8, 2024. The Panel finds that it was properly constituted. The Panel 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 BackgroundLittle is known about the Complainant beyond the fact that it is a limited liability company (Gesellschaft mit beschrankter Haftung) based in Germany, registered in the Commercial Register under number HRB 211402 at the Register Court of Oldenburg, Germany. Based upon its contact details, the Complainant appears to operate the German country code Top-Level Domain name (“ccTLD”) multident.de but the Panel has not been provided with any information as to how long the Complainant has held this domain name, and/or whether it has operated a website using such domain name for any particular length of time.
The Complainant claims, but does not provide evidence of the fact that, it is the owner of German Registered Trademark Number 302008062081 for the mark MULTIDENT. On the basis that the Complainant had provided the relevant registration number and register details, the Panel determined that it was appropriate for it to carry out limited research to the extent of looking up said mark on the appropriate register, from which it notes the Complainant’s ownership, the fact that the mark is a word mark, and that it was registered on January 9, 2009 in Classes 3, 5, 9, 10, 21, 35, 38, 40, 41, 42, and 44, broadly speaking, relating to dental technology and services.1
1 With reference to the Panel conducting independent research of publicly available sources, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.The disputed domain name was registered on January 8, 2010. The Complainant indicates that the disputed domain name has been parked or offered for sale on the “Sedo” platform. The Complainant does not provide a screenshot of the website associated with the disputed domain name, nor any details of the asking price for the disputed domain name, nor any information as to the history of the disputed domain name and/or the length of time over which it has been placed on said platform. The only corroborating information available to the Panel on this matter is the fact that the disputed domain name is delegated to nameservers operating via the domain name sedoparking.com. No information is available regarding the Respondent, which appears to be a private individual with an address in the Republic of Korea.
The Complainant indicates that it complained to Sedo regarding the disputed domain name, after which the disputed domain name was blocked from sale and the account holder informed. The Complainant also says that it has been suggested to Google, presumably by the Complainant, that AdSense for Domains services be blocked, although the Complainant does not provide any indication of the outcome of such complaint.
On August 23, 2024, the Complainant’s representatives wrote to an email address associated with the Respondent informing it of the Complainant’s interest in the disputed domain name and its ownership of the MULTIDENT trademark. The Complainant’s representatives indicated in such email that the disputed domain name infringed their client’s rights, “By blocking the domain and offering it for sale to third parties”. The email went on to request that the disputed domain name be transferred for free to the Complainant. The Panel assumes that there was no response to this email, but the Complainant does not state this in terms.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that it regularly uses the MULTIDENT trademark throughout Germany and operates under a company name that features “Multident” as a distinctive component.
The Complainant asserts that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, adding that as a private individual from the Republic of Korea, it is unlikely that the Respondent is commonly known by the disputed domain name, and that there is no indication of this.
The Complainant submits that the disputed domain name was registered and used in bad faith because the offering of sale thereof strongly indicates that the disputed domain name was primarily registered for the purpose of selling it to the trademark owner or a competitor, adding (but not evidencing) that the offered sale price significantly exceeds the Respondent’s demonstrable out-of-pocket costs. The Complainant notes that the disputed domain name was blocked from sale on the Sedo website “after a letter to sedo.com”, adding that the account holder was informed of this outcome. The Complainant adds that it has been suggested to Google that AdSense for Domains services be blocked for the disputed domain name.
The Complainant states that it has been blocked from using its MULTIDENT mark in a corresponding domain name by virtue of the registration of the disputed domain name, adding that the clear commercial intent, combined with the likelihood of confusion with the MULTIDENT mark is an attempt to attract Internet users to the sales platform to generate a profit, adding that as there is no information about the Respondent’s own rights to the name, and no obvious connection for a private individual in the Republic of Korea, bad faith is reinforced.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s findings in connection with the third element under the Policy, no good purpose would be served by addressing the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, all that the Panel knows from the very limited evidence produced by the Complainant is that the Complainant’s mark was registered in January 2009, the disputed domain name was registered in January 2010, and that the disputed domain name has at some point been placed on the Sedo platform. The Complainant does not provide a screenshot of the disputed domain name on the Sedo platform, and while it does say that the disputed domain name was offered for sale, it does not specify the asking price but only notes that this “significantly exceeds” the Respondent’s out of pocket costs.
The Panel assumes in the absence of evidence to the contrary that the Respondent is the original registrant of the disputed domain name.
A finding that a domain name has been registered and is being used in bad faith typically requires an inference to be drawn that the respondent has registered and is using such domain name to take advantage of its significance as a trademark owned by (usually) the complainant (see, for example: British Airways Plc v. Softline Studios, WIPO Case No. D2023-2188). It follows that the Complainant, on whom the burden of proof lies, must show on the balance of probabilities that when the Respondent registered the disputed domain name on January 8, 2010, it did so in the knowledge of and with intent to target the Complainant and/or its rights in the trademark concerned. In that regard, all that the Panel knows from the present record is that, by that date, the Complainant had held its registered trademark in Germany for one year. There is no evidence before the Panel as to the extent or reach of that mark, notably whether there was an internationally available website and, if so, the prominence of such website that might suggest it would have come to the Respondent’s attention. There is likewise no evidence as to when the disputed domain name was placed on the Sedo platform. While the Complainant mentions AdSense advertising, it does not provide evidence showing that such advertising has been used in connection with the disputed domain name, if so, for how long, and whether such advertising targets the trademark value of the term “multident”. In short, there is no evidence from which the Panel may reasonably infer that when the Respondent (being an individual in the Republic of Korea) registered the disputed domain name, it did so in the knowledge of the Complainant’s mark and with intent to target the same unfairly.
The principal evidence of any possible targeting in the present case is the fact that the disputed domain name is identical to the Complainant’s mark. However, the disputed domain name consists of an English portmanteau word combining the prefix “multi” with the word “dent”. While the identity of this term with the Complainant’s mark is of some significance, no evidence has been put forward to demonstrate that such term is exclusively or even predominantly associated with the Complainant, and most importantly, that this was so at the point when the disputed domain name was registered, nearly 15 years ago. It remains possible on the basis of the present limited record that the Respondent may have registered the disputed domain name independently of the Complainant and its rights. It is also possible that there was no targeting of the Complainant inherent in the placing of the disputed domain name on the Sedo platform, whenever that might have occurred in the timeline.
While the Respondent has chosen to remain silent, the burden is on the Complainant to prove on the balance of probabilities that the disputed domain name was registered and used in bad faith, and it has failed to do so in this case, largely for want of evidence.
The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark. Accordingly, the Complaint fails.
The Panel finds the third element of the Policy has not been established.
7. Decision
For the foregoing reasons, the Complaint is denied.
/Andrew D. S. Lothian/
Andrew D. S. Lothian
Sole Panelist
Date: November 20, 2024
