Decotel Ltd, United Kingdom, filed a UDRP against the domain Decotel.com – a domain registered in 2001.
The 20 year old domain matches the DECOTEL mark, a common law mark, since 1999. In fact, the Complainant registered its domain then.
Although common law marks are generally considered weak in UDRP cases, the Complainant prevailed against the Korean Respondent, who held the domain for the past 20 years.
In his statement, the Respondent also revealed that his good reputation is established by the fact that he gave domains such as Interpol.com, Interpol.org, and others, to their respective rightful owners. Regarding Interpol.com, that probably took place before 2003 and as early as 2000.
The sole panelist at the WIPO, supported the Complainant’s claims:
The Panel considers it likely that the Respondent would have seen that the Complainant failed to register the disputed domain name and took advantage of this fact by registering the same in an effort to target the Complainant.
Final decision: Grant transfer of the domain Decotel.com to the Complainant.
Decotel Ltd v. Brian Yu (유용기), iContents
Case No. D2021-21011. The Parties
The Complainant is Decotel Ltd, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondent is Brian Yu (유용기), iContents, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <decotel.com> is registered with Whois Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2021, 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.
On July 26, 2021, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On July 26, 2021, the Complainant requested for English to be the language of the proceeding. On July 31, 2021, the Respondent requested for Korean to be the language of the proceeding.
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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Response was filed with the Center on August 22, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on October 15, 2021. 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 Background
The Complainant, Decotel Ltd. is a private limited company registered in the United Kingdom, that has been in the hotel and hospitality business since 2007 and has evolved over that time to offer a wide range of core guest room and public area products. The original Decotel business was a partnership established in 1990s by Duncan and Elizabeth Cox and the name Decotel, which was formally adopted in 2011, is derived from “d” (Duncan), “e” (Elizabeth), “c” (Cox), and “otel”, being a reference to hotel. The Complainant purchased the Decotel business in 2007 and has been using the name “Decotel” for its trading. The Complainant is one of the United Kingdom’s leading suppliers to the hospitality industry and is a nominated supplier to a number of hotel groups. The Complainant is using a domain name <decotel.co.uk> which was registered on October 13, 1999 by its original owner for its official website.
The disputed domain name was registered on May 20, 2001 and the website to which the disputed domain name resolves is a parking page that includes sponsored links that are connected to various other websites and a notice that the disputed domain name is available for purchase at the top of the page.
The Complainant requested for English to be the language of proceedings on July 26, 2021. On July 31, 2021, the Respondent requested for Korean to be the language of the proceedings and filed a Response in Korean on August 22, 2021.
5. Parties’ Contentions
A. Complainant
1) Language of the Proceedings: The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English based on the following reasons.
(a) The disputed domain name is in English.
(b) The current contents on the website to which the disputed domain name resolves are in English.
(c) Five prior UDRP cases in which the Respondent was found to have registered and used the domain names in bad faith are all in English.
(d) Proceeding in Korean and requiring the Complainant to translate the Complaint and all other supporting documents into Korean would be unfair, imposing a burden on the Complainant and delaying the proceedings.
2) The Complainant contends that the disputed domain name should be transferred to the Complainant for the following reasons.
(a) Identical or Confusingly Similar: The disputed domain name is identical to the Complainant’s business name “Decotel” in which the Complainant has rights. The Complainant contends that by virtue of its extensive and long-standing trading and marketing activities, the Complainant has acquired substantial reputation and goodwill in the name “Decotel” such that it is recognized by the public as distinctive identifier of the Complainant’s hospitality and hotel supply business.
(b) Rights or Legitimate Interests: The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trademark. Further, the Complainant claims that the Respondent has used the disputed domain name to attract, confuse and profit from Internet users seeking the Complainant, and the Respondent’s use of the disputed domain name to host a parked page composing Pay-Per-Click (“PPC”) links does not represent a bona fide offering of goods or services. Also, there is no evidence that the Respondent has been commonly known by the disputed domain name nor that it is currently making a legitimate noncommercial or fair use of the disputed domain name.
(c) Registered and used in Bad Faith: The disputed domain name was registered and is being used in bad faith. The Complainant refers to the “for sale” notice at the website to which the disputed domain name resolves and claims that:
i) the Respondent has registered the disputed domain name in bad faith aiming at eliciting an offer from the Complainant to buy the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs.
ii) The Respondent registered the disputed domain name in order to prevent the owner of the rights to the name “Decotel” from reflecting the mark in a corresponding domain name, and is engaged in a pattern of such conduct. The Respondent has been found to have acted in bad faith in at least five previous UDRP complaints concerning domain names reflecting other well-known trademarks.
iii) Further, the Respondent was aware of the Complainant and its business and registered the disputed domain name to disrupt the Complainant’s business by diverting Internet users seeking the Complainant. The Respondent is a competitor as its website includes sponsored links offering services similar to those of the Complainant in the website of the disputed domain name.
iv) The Respondent designed the website to which the disputed domain name resolves to create a likelihood of confusion in the minds of the public as to association between the Respondent and the Complainant and to confuse, attract and profit from Internet users who are searching for the Complainant’s business in search engines.
B. Respondent
1) Language of the Proceedings: The Respondent requested that the language of proceedings be Korean and stressed that the Respondent completed the Response without actually receiving the Complaint. (The Panel notes that the record reflects delivery of email and postal notice.)
2) The Respondent contends that the Complaint should be denied because:
(a) Identical or Confusingly Similar: the Respondent registered a disputed domain name that it thought was appropriate as the name of a website for a business related to ornaments and decoration on May 20, 2000. (The Panel notes this differs from the above-noted date of May 20, 2001 drawn from the public WHOIS.). At the time of registration of the disputed domain name, and even now, the name “Decotel” is unknown in the Republic of Korea. The Respondent had no knowledge of the Complainant’s company at that time and registered the disputed domain without any intention to exploit the Complainant’s reputation. The Complainant’s domain name <decotel.co.uk> appears to have been registered on October 13, 1999. In 1999, the Complainant could have registered the disputed domain name, but it did not, which can only be seen as the Complainant’s lack of interest in the disputed domain name.
(b) Rights or Legitimate Interests: The Respondent, iContents (Co., Ltd.), had registered the disputed domain name in advance in order to use it in the future for a business which today turned out to be one of the most active ornaments and decoration businesses in Jeju Island, Republic of Korea, that the Respondent operates. Its stores are win-win platforms where 300 teams of prop artists in Jeju Island co-plan and produce new props and souvenirs to the taste of modern tourists. Since the business pursued by the Respondent has nothing to do with the Complainant’s business field, there is absolutely no room for the Respondent’s use of the disputed domain name to infringe on the Complainant’s rights.
(c) Registered and used in Bad Faith: The Respondent is a company that transferred registered domain names to relevant parties who had legitimate rights to those domain names, free of charge. For example, the Respondent transferred the domain name registrations for <interpol.com>, <interpol.org>, <tokdo.com>, <paiknamjune.com>, and <kimkoo.com> to the relevant right holders, free of charge. Due to the nature of the Respondent’s company, if the Complainant’s company name had secured a well-known reputation in the Republic of Korea, the Respondent would not have registered the disputed domain name at that time or would have transferred it had the Respondent registered the disputed domain name. The Respondent did not register the disputed domain name in bad faith as the Respondent was not aware of the Complainant at the time the Respondent registered the disputed domain name. The Complainant has not taken any action in regards to the disputed domain name for 20 years and claiming rights to the disputed domain name only now cannot be a just and reasonable claim of rights. Rather, the Complainant’s claims reveal the wrongful purpose of taking away the disputed domain name from the Respondent.
Therefore, the Complaint should be denied.
6. Discussion and Findings
A. Language of the Proceeding
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean.
2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments.
3) The disputed domain name and the website to which the disputed domain name resolves are all in English.
4) Even though the Respondent submitted the Response in Korean, it shows that it understood the Complaint filed in English.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in both Korean and English; and (3) issue a decision in English.
B. Identical or Confusingly Similar
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel notes that the Complainant claims common law rights in the mark DECOTEL. To establish unregistered or common law trademark rights for purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services (see RoofPro, LLC v. Privacydotlink Customer 774656 / Blue Nova Inc., WIPO Case No. D2018-0883 and section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”)). Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark and the degree of actual public recognition.
In this case, the Complainant has provided evidence to support each of these factors, including evidence of sales figures, marketing materials, and business letters, to show that it has rights in the mark DECOTEL.
The Panel finds that the Complainant has established rights in the DECOTEL mark and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s mark and business name in its entirety. The mere addition of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The Respondent shows no actual intention to use the disputed domain name. An Internet search of the disputed domain name on Google pulls up the Respondent’s website which includes only several links that are connected to other various third party websites which are not relevant to the Complainant’s business area nor a business which the Respondent claims to be engaged in. The Respondent contends in its Response that it is operating stores related to props in Jeju Island, Republic of Korea. However, the website to which the disputed domain name resolves does not show any activities that are related to props in Jeju Island or any other actual business. The Complainant did provide a screenshot that showed a website for decoration and party supplies at some point in 2008. This however suggests that this website has not been in continuous operation for any notable period of time. Rather, it suggests that this website was created hastily for the purpose of giving the appearance that the Respondent is engaged in some actual business using the disputed domain name. Further, there is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services.
The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the manner of “use” of the disputed domain name. Since the Complainant has been found to have made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. The Respondent, however, failed to prove same.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i), (ii), (iii), and (iv) by registering the disputed domain name in order to (1) sell the disputed domain name to the Complainant or a third party for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; (2) prevent the owner of the trademark from reflecting the mark in the corresponding disputed domain name, provided that the Respondent has engaged in a pattern of such conduct; (3) disrupt the Complainant’s business; and, (4) attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to association between the Respondent and the Complainant.
The Panel notes the following salient facts:
(a) The Complainant claims that it is a company that has a history of a minimum of 22 years and has been using its DECOTEL business name as an identifier of its business and products consistently since the 1990s. The Panel finds that it did register the domain name <decotel.co.uk> for its official website and has been using it since October 13, 1999. The domain name <decotel.co.uk> incorporated its business name DECOTEL in its entirety. The Panel considers it likely that the Respondent would have seen that the Complainant failed to register the disputed domain name and took advantage of this fact by registering the same in an effort to target the Complainant.
(b) The Panel has confirmed that the Respondent has been offering to sell the disputed domain name through the website to which the disputed domain name resolved. The sale offer was at the top of the webpage.
(c) Although the Complainant did not register its DECOTEL trademark, it did produce evidence of continuous, material use that establishes its common law rights to the said mark.
(d) The disputed domain name was registered on May 20, 2001. The Respondent claims that he intended to run a website that concerns his business of props in Jeju Island. However, the Panel has independently confirmed that the Respondent’s website makes no mention of the word “decotel” and, as mentioned above, there is no evidence in the record to show that the Respondent is somehow associated with the name “Decotel.” While there was a fleeting use of the disputed domain name in 2008 for what appeared to be a decoration business, this is certainly no longer the case and the Respondent has provided no evidence whatsoever of any trading activity thereunder – if this was his claimed intention and actual use, the Panel believes it would not at all difficult to produce evidence of the related business. The Respondent’s website appears to do little more than simply displaying sponsored links that redirect Internet users to other websites, most likely with the Respondent deriving click-through revenues in exchange for providing that service. Thus, the Respondent’s argument that he is using the disputed domain name for its business is not credible because there is no connection between the disputed domain name and the contents of the Respondent’s website.
The Panel moreover notes that while on the one hand the disputed domain name includes the initial “deco” term, the latter “tel” part would not seem to bear a relation to decoration (e.g., insofar as “telephone” comes to mind), on the other hand, the appendage “otel” within the disputed domain name may point an indication of an association with the hotel industry – seeing as the Respondent has no such apparent connection whereas the Complainant clearly does, this leads the Panel to wonder if the former would have had the latter in mind when registering the disputed domain name.
On balance, the Panel concludes that the Complainant has met its burden under the Policy, paragraph 4(a)(iii).
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <decotel.com> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: October 29, 2021
