Cho Yong Pil v. Sinwoo Yoon

[Indexed as:  Pil v. Yoon]

[Indexed as:  CHOYONGPIL.NET]

ICANN Uniform Domain Name Dispute Resolution
Administrative Panel Decision

Case No.  D2000-0310
Commenced: 12 May 2000
Judgment:  19 June 2000

Presiding Panelist:  Young Kim

Domain name – Domain name dispute resolution policy – Names of Famous People - Active domain name status but no active website – No response from Respondent – No participation in dispute resolution by Respondent – Respondent not licensee of Complainant – Respondent not willing to transfer domain name - Complainant’s name attained status of common law mark - Confusingly similar – Likelihood of confusion and claim for passing off successful given Complainant’s fame – Bad faith registration includes inaction.

Complainant is Cho Yong Pil, who is 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 known as “Cho Yong-Pil”).  Respondent registered the domain name choyongpil.net.  Complainant’s name had attained the status of a common law mark since his name has been used for over thirty years in association with his music products and performances.  Complainant is well known and fully recognized both within Korea and internationally.

Held, Name Transferred to Complainant.

Since Respondent did not participate in dispute resolution process, it was not disputed that Complainant’s name is essentially the same as the Respondent’s domain name, and thus it is confusingly similar to Complainant’s name.  This is bad faith registration also. 

Although Complainant does not have a trademark or service mark registration of his name, the ICANN Policy and Rules do not require that the Complainant’s mark be registered with a government authority or agency for such right to exist.  Complainant’s reputation in his unregistered mark is sufficient to give Complainant a claim for passing off, given Complainant’s fame in Korea and Asia.

Complainant has all trademark and service marks in his name, while Respondent does not have any rights or legitimate interests with respect to the domain name choyongpil.net. Respondent is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s name. Although the domain name is active, Respondent is not operating an active website under the domain name.  Respondent has also registered domain names of other famous trademarked names. Not only did Respondent register the domain name in bad faith, but he also used the domain name in bad faith.  The concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept. Respondent's failure to respond draws an inference of bad faith also.

Cases referred to:

Bennett Coleman & Co. Ltd. v. Stephen S. Lalwani, WIPO Dispute No. D2000-0014. 
Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO Dispute No. D2000-0015.
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Dispute No. D2000-0003.
SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Dispute No. D2000-0131.

Policies referred to:

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.

Panel Decision referred to
--
Kim, Panelist:
 

1. The Parties:

1.1 Complainant is Cho Yong Pil of YPC International, 1155 15th Street, N.W., Suite 911, Washington, D.C. 20005, USA.

1.2 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 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 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 Registrar’s 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 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 
217, shindang-dong
chung-gu, Seoul 100-450
Republic of Korea 

Administrative Contact for the domain name:
Name: Sinwoo Yoon
Email: pilhyun@hanaro.net
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
Email: whois@whois.co.kr
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 Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by May 31, 2000).
3.6 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 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, Complainant and 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 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 known 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 Respondent is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s name. 

4.3 According to the WHOIS information supplied by Complainant, the <choyongpil.net> domain name was registered on March 2, 2000. 

4.4 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 Respondent by telephone. During the conversation, Respondent informed that he would not be willing to transfer the domain name.  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 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 Complainant has submitted that Respondent is not operating an active website under the domain name.
 

5.3 Complainant has asserted that the domain name at issue has been registered by Respondent in bad faith in view of the Complainant’s fame.

5.4 The Respondent has made no submission.
 

6. Discussion and Findings:

6.1 Complainant, under Paragraph 4(a) of the ICANN Policy, is required to show:
6.1.1 That the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
6.1.2 That 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 Complainant’s name Cho Yong Pil is essentially the same as        Respondent’s domain name <choyongpil.net>. However, it should be reviewed whether the name Cho Yong Pil functions as Complainant’s mark. It is noted that Complainant has no trademark or service mark registration of the name and that the ICANN Policy and Rules do not require that Complainant’s 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 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 Pil’s fame, especially in Korea and Asia. Accordingly, the Panel determines that Complainant has shown that the fame in his name Cho Yong Pil is sufficient to give 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 Complainant’s 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 Complainant’s search, the Respondent is not operating an active website under the domain name. 

6.4 The Panel determines that Respondent has registered the domain name in bad faith because Complainant’s name was famous at the time of registration of the domain name, and according to Complainant’s 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 Respondent from its failure to respond to the Complaint. Therefore, the Panel determines that the domain name is used in bad faith.

7. Decision: 

7.1 For the foregoing reasons, the Panel decides that: 
a. The domain name registered by Respondent is identical or confusingly similar to the trademark or service mark to which Complainant has rights; 
b. Respondent has no rights or legitimate interests in respect of the domain name; and 
c. Respondent’s 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. Dated:  June 19, 2000.
 

Domain Name Transferred