WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cho Yong Pil v. Sinwoo Yoon
Case No. D2000-0310
1. THE PARTIES
1.1 The Complainant is Cho Yong Pil of YPC International, 1155 15th Street, N.W., Suite 911, Washington, D.C. 20005, USA.
1.2 The Respondent is Sinwoo Yoon of C-52, Shinpyunghwa 2F, 217, shindang-dong, chung-gu, Seoul 100-450, Republic of Korea.
2. THE DOMAIN NAME AND REGISTRAR
2.1 The domain name at issue is <choyongpil.net>. The domain name is registered with CORE Internet Council of Registrars of World Trade Center II, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland ("CORE").
3. PROCEDURAL HISTORY
3.1 A Complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on April 19, 2000. The signed original Complaint was received by WIPO Center on April 20, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on April 26, 2000. An amendment to Complaint was submitted electronically to WIPO Center on May 3, 2000.
3.2 On May 4, 2000 a request for Registrar Verification was transmitted to CORE to:
3.2.1 Confirm that a copy of the Complaint was sent to CORE by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
3.2.2 Confirm that the domain name at issue is registered with CORE;
3.2.3 Confirm that the Respondent is the current registrant of the domain name;
3.2.4 Provide the full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrars WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name;
3.2.5 Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name at issue; and
3.2.6 Indicate the current status of the domain name.
3.3 By email dated May 11, 2000, CORE advised WIPO Center as follows:
3.3.1 CORE had received a copy of the Complaint from the Complainant.
3.3.2 The domain name <choyongpil.net> is registered with CORE.
3.3.3 The Respondent, Sinwoo Yoon, is the current registrant of the said domain name. The contact details including the administrative contact and the technical contact are as follows:
Name: Sinwoo Yoon
Postal Address: C-52, Shinpyunghwa 2F
chung-gu, Seoul 100-450
Republic of Korea
Administrative Contact for the domain name:
Name: Sinwoo Yoon
Phone: (82-2) 972-3856
Fax: (82-2) 6219-0852
Technical Contact for the domain name:
Name: Lee Shinjong
Postal Address: 110-1307 Changchon Samsung Apt.
Changchon, Mapo, Seoul 120-190
Republic of Korea
Phone: (82-2) 325-4259
Fax: (82-2) 325-2259
3.3.4 The Uniform Domain Name Dispute Resolution Policy applies to the domain name.
3.3.5 The domain name registration <choyongpil.net> is in "active" status.
3.4 Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center sent by courier, facsimile and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent and Technical Contact for the domain name on May 12, 2000. The communication to the Respondent by courier was recorded as successful. However, the communication to the Respondent by facsimile failed. The communication to the Technical Contact by facsimile was recorded as successful, but the communication by courier was not successful.
3.5 The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by May 31, 2000).
3.6 The Respondent has made no Response to the Complaint. On June 5, 2000, WIPO Center sent a Notification of Respondent Default to the Respondent by courier, email and facsimile. The communication to the Respondent by courier and e-mail was recorded successful.
3.7 The Complainant elected to have its Complaint resolved by a single-member Panel and it has duly paid the amount required of it to WIPO Center.
3.8 WIPO Center invited Young Kim of Kim & Chang, Seoul, Republic of Korea, to be the Panelist, which was accepted.
3.9 On June 7, 2000, the Complainant and the Respondent were notified of the appointment of the Panel.
3.10 The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
3.11 The language of the administrative proceeding is English, being the language of the registration agreement.
4. FACTUAL BACKGROUND
4.1 The Complainant has submitted materials showing that Cho Yong Pil is the name of a famous Korean pop music artist who performs, records, and sells records, CDs, cassettes, and related music products under the name "Cho Yong Pil" (sometimes as "Cho Yong-Pil"), and that the name Cho Yong Pil has been used in association with his music products and performances over thirty years in Korea and internationally.
4.2 The Respondent is not a licensee of the Complainant, nor is it otherwise authorized to use the Complainants name.
4.3 According to the WHOIS information supplied by the Complainant, the <choyongpil.net> domain name was registered on March 2, 2000.
4.4 The Complainant has failed to locate any active website under the domain name <choyongpil.net>.
4.5 According to the Complainant, a representative of the Complainant, Jin Hyun Ahn-Cho of YPC International, contacted the Respondent by telephone. During the conversation, the Respondent informed that he would not be willing to transfer the domain name. The Respondent also indicated during the telephone conversation that it had registered the domain name at issue along with several other domain names comprised of the names of famous people.
5. PARTIES CONTENTIONS
5.1 The Complainant has asserted that the name Cho Yong Pil (or Cho Yong-Pil) has attained the status as a common law mark of the Complainant, a famous Korean pop music artist, for the reasons that: the name has been used over thirty years in association with his music products and performances and his fame as a pop music artist is fully recognized both within Korea and internationally.
5.2 The Complainant has submitted that the Respondent is not operating an active website under the domain name.
5.3 The Complainant has asserted that the domain name at issue has been registered by the Respondent in bad faith in view of the Complainants fame.
5.4 The Respondent has made no submission.
6. DISCUSSION AND FINDINGS
6.1 The Complainant, under Paragraph 4(a) of the ICANN Policy, is required to show:
6.1.1 That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
6.1.2 That the Respondent has no legitimate interests in respect of the domain name; and
6.1.3 That the domain name has been registered and used in bad faith.
6.2 It is not disputed that the Complaints name Cho Yong Pil is essentially the same as the Respondents domain name <choyongpil.net>. However, it should be reviewed whether the name Cho Yong Pil functions as the Complainants mark. It is noted that the Complainant has no trademark or service mark registration of the name and that the ICANN Policy and Rules do not require that the Complainants mark be registered with a government authority or agency for such right to exist. In Cases D2000-0014 and 0015, the WIPO Panels considered that reputation in unregistered marks sufficient to give the Complainant a claim for passing off was sufficient to constitute trademark rights for the purpose of the Rules.
Here, the passing off is likely given Cho Yong Pils fame, especially in Korea and Asia. Accordingly, the Panel determines that the Complainant has shown that the fame in his name Cho Yong Pil is sufficient to give the Complainant trademark or service mark rights for the purpose of the Rules. The Panel thus concludes that the domain name <choyongpil.net> is identical or confusingly similar to the Complainants mark, Cho Yong Pil.
6.3 The Panel determines that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:
(a) The Respondent has failed to submit any evidence that it has any right or legitimate interest in respect of the domain name at issue; and
(b) According to the Complainants search, the Respondent is not operating an active website under the domain name.
6.4 The Panel determines that the Respondent has registered the domain name in bad faith because the Complaints name was famous at the time of registration of the domain name, and according to the Complainants assertion, Respondent had registered the domain name at issue along with several other domain names comprised of the names of famous people.
6.5 The domain name must not only be registered in bad faith, but must also be used in bad faith. It appears that the domain name is not used in relation to an active website. The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 and SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, Case No. D2000-0131. With regard to the requirements of Paragraph 4(a)(ii), the Panel is entitled to and does draw an influence adverse to the Respondent from its failure to respond to the Complaint. Therefore, the Panel determines that the domain name is used in bad faith.
7.1 For the foregoing reasons, the Panel decides that:
- The domain name registered by the Respondent is identical or confusingly similar to the trademark or service mark to which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The Respondents domain name has been registered and is being used in bad faith.
7.2 Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel hereby orders that the registration of the domain name <choyongpil.net> be transferred to the Complainant.
Date: June 19, 2000