The Parties Information |
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Claimant |
IR Group Ltd. |
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Respondent |
Young il Kim |
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Procedural History |
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A Complaint in this matter was filed with the Hong Kong Office of Asian Domain Name Dispute Resolution Centre (ADNDRC) dated 13 March
2003. A Response from the Respondent was not received by the ADNDRC within the required period of time, although e-mail correspondence
between ADNDRC and the Respondent shows that the Respondent (on 18 March 2003) acknowledged receipt of the Complaint but took issue
as to the proper language of the proceedings.
On the same day the ADNDRC e-mailed the Respondent with the suggestion that he submitted a complaint in both Korean and English,
pending determination of the language issue. He submitted neither. Although the Respondent complained of being unable to understand
the Complaint (written in English), he was able at short notice to produce e-mails in reasonable English and manipulating procedural
points of some complexity.
With regard to the question of the language of these proceedings, in relation to Clause 11(a) of the Rules, and having regard to
the following circumstances:
2.1 the aforesaid e-mail correspondence with the Respondent;
2.2 the fact that the current presentation of the Respondent’s website, such as it is, uses English at least in part;
2.3 the strength of the Complainant’s case,
I find that:
2.4 the Panel has jurisdiction in this matter;
2.5 the Respondent has no excuse for failing to submit a Response; and
2.6 the Respondent having shown no good reason why the administrative proceedings should not be conducted in English, that the language
of the proceedings should be English. |
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Factual Background |
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For Claimant |
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The Complainant is a communications consultancy specialising in corporate websites and has used IR Group as its trading name since
June 1997. Owing to the unavailability of www.irgroup.com (held by the Respondent), the Complainant uses www.ir-group.com at which
address it presents an impressive website consistent with its claimed business. IR Group lists accolades including gold, silver
and bronze awards at 15th Annual Mercury Awards, a US on-line communication competition won by its clients including Kingfisher plc,
Six Continents plc, and Aviva plc. |
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For Respondent |
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The Respondent’s site, as currently depicted, is an insubstantial presence purportedly offering ‘Art’. |
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Parties' Contentions |
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Claimant |
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The Complainant contends (1) the domain name registered by the Respondent is confusingly similar to a trademark or service mark in
which the Complainant has rights, (2) the domain name has been registered in bad faith and (3) the Respondent has no legitimate interests
in the domain at issue. |
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Respondent |
The Respondent has not filed any Response to the allegations in the Complaint. |
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Findings |
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Identical / Confusingly Similar |
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Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall
decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any
rules and principles of law that it deems applicable”. The Panel shall apply the rules and principles set out in decisions of
the Courts of Hong Kong, the independent jurisdiction of the Hong Kong Office of ADNDRC through which this Complaint is being administered.
Paragraph 3(b)(ix) of the Rules directs that the Complainant must demonstrate each of the following:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
and
(ii) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain
name that is the subject of the Complaint; and
(iii) why the domain name should be considered as having been registered and being used in bad faith.
On the basis of the papers submitted herein the Panel finds that:
(1) the disputed domain name is identical to the trade mark in which the Complainant has rights. It is noted that the Complainant
does not provide evidence of a registered trade mark. However, the uncontested evidence shows that it has used the name since 1997
and as such, whilst the mark remains vulnerable to other registrants in England & Wales, the Complainant does have rights to
the unregistered mark “IRGROUP” in England & Wales. At this juncture I should, perhaps, distinguish the decision in the
case of County Bookshops Limited –v- Guy Loveday, WIPO Case D2000-0655 (at http://arbiter.wipo.int/domains/decisions/html/ 2000/d2000-0655.html). In that case a Complainant, who was legally advised, failed to obtain a decision in his favour, notwithstanding
that the Respondent had failed to submit a Response, because the Complainant had failed to provide sufficient evidence to support
its claim to have protectable rights in the “County Bookshops” mark.
In the case at hand the Complainant – IR Group Limited has produced little evidence in support of its common law trademark rights
in “IR Group”. However, two things point in IR Group’s favour, namely (1) although “IR Group” is not a strong mark (in
terms of ease of registrability) it does not suffer from the weakness of the “County Bookshops” mark picked up by the Panelist
in that it is …“prima facie directly descriptive of bookshops in a county”… and (2) unlike County Bookshops Limited (which
had a site ‘under construction’), IR Group Limited’s website is available for the world, including the Panelist, to see. I
find that the IR Group mark is not unregistrable and given the use of it claimed by the Complainant, the Complainant has sufficient
rights in the mark to be worthy of protection hereunder. Without the availability of the www.ir-group.com website I would have been
unable to make an award in the Complainant’s favour. |
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Rights and Legitimate Interests |
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The Complainant has alleged and the Respondent has failed to deny that the Respondent has no legitimate interests in respect of the
domain name at issue. In addition, the Panel has been unable to independently discern any legitimate interest in respect of the
domain name at issue. |
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Bad Faith |
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The Respondent has failed to deny the Complainant’s allegation that the domain name was registered in bad faith. The Panel accepts
the Complainant’s contentions that
• up until 9 August 2002, the Respondent used the URL to point to a holding page for an ‘internet business’
• that this was changed, only upon the intervention of the Complainant
• that the Respondent has previously offered the domain name for sale (as referenced in paragraph 7 of the Complaint) (an indicia
of bad faith). |
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