Docstoc

d2008-1990

Document Sample
d2008-1990 Powered By Docstoc
					                 WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

                              Symantec Corp. v. James Kim

                                   Case No. D2008-1990




1.   The Parties

     The complainant is Symantec Corporation of Cupertino, California,
     United States of America, represented by Fenwick & West LLP,
     United States of America (“Complainant”).

     The respondent is James Kim of Seoul, Republic of Korea (“Respondent”).


2.   The Domain Name and Registrar

     The disputed domain name <nortoninternetsecurity.com> is registered with Korea
     Information Certificate Authority Inc. d/b/a DomainCa.com (“Domain Name”).


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on December 24, 2008. On December 29, 2008, the Center transmitted
     by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request
     for registrar verification in connection with the Domain Name. On January 7, 2009,
     Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email
     to the Center its verification response, confirming that the Respondent is listed as the
     registrant and providing the contact details.

     On January 7, 2009, the Center notified the parties of the Center’s procedural rules
     relevant to the language of the proceeding. On January 7, 2009, the Complainant has
     submitted a request that English be the language of the proceeding, to which the
     Respondent has not replied. On January 16, 2009, the Center notified the parties of its
     preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response
     in either Korean or English; and 3) appoint a panel familiar with both languages
     mentioned above, if available.

     The Center verified that the Complaint satisfied the formal requirements of the Uniform

                                           page 1
     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(a) and 4(a), the Center formally notified the
     Respondent of the Complaint, and the proceedings commenced on January 16, 2009. In
     accordance with the Rules, paragraph 5(a), the due date for Response was
     February 5, 2009. The Respondent did not submit any response. Accordingly, the
     Center notified the Respondent’s default on February 6, 2009.

     The Center appointed Chunghwan Choi as the sole panelist in this matter on
     February 16, 2009. 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, Symantec Corp. is one of the global leaders in providing security,
     storage, and systems management solutions to help businesses and consumers secure and
     manage data and information. One of the Complainant’s products is its family of
     NORTON software and services used to detect and remove viruses, spyware, adware,
     and other potential security risks, and to back up and recover data. The Complainant has
     been using the NORTON mark in connection with its software products since 1982, and
     since then has expended significant resources in promoting and advertising its
     NORTON-branded products and services.

     One of the Complainant’s NORTON products and services is its NORTON INTERNET
     SECURITY software, which the Complainant has been using since September 1999 in
     connection with an Internet security suite that protects against viruses, spam, and
     malware, and allows users to set parent controls, among other things. The NORTON
     INTERNET SECURITY software has been recognized as the leading Internet security
     software among others by Internet magazines.

     The Complainant also owns a United States (“U.S.”) trademark registration for
     NORTON INTERNET SECURITY under Registration No. 3,314,016. Additionally, the
     Complainant owns a number of trademark applications and registrations worldwide for
     NORTON and other NORTON-based marks.

     The Domain Name has been used for a website offering links to third party websites that
     offer Internet security products and other antivirus products and services.


5.   Parties’ Contentions

     A.   Complainant

     The Complainant contends that the Domain Name is identical to the mark NORTON
     INTERNET SECURITY and confusingly similar to the mark NORTON, which are the
     Complainant’s registered trademarks; that the Respondent has no rights or legitimate
     interests in respect of the Domain Name; and that the Respondent’s use of the Domain
     Name on the website featuring links to third party websites that offer Internet security

                                           page 2
     products and other antivirus products and services directly competing with the
     Complainant’s NORTON INTERNET SECURITY software and its family of NORTON
     products services proves the Respondent’s bad faith registration and use of the Domain
     Name.

     The Complainant requests that the Domain Name be transferred to the Complainant.

     B.    Respondent

     The Respondent did not reply to the Complainant’s contentions.


6.   Discussion and Findings

     Language of Proceeding

     The registrar confirmed that the language of the registration agreement for the Domain
     Name is Korean. Pursuant to the Rules, paragraph 11, in the absence of an agreement
     between the parties, or specified otherwise in the registration agreement, the language of
     the administrative proceeding shall be the language of the registration agreement. The
     Complainant initially filed its Complaint in English. On January 7, 2009, the Center
     issued a notice regarding the applicable language of proceeding. The Complainant then
     submitted a request that English be the language of the proceeding, to which the
     Respondent has not replied.

     Paragraph 11 of the Rules provides:

     “Unless otherwise agreed by the Parties, or specified otherwise in the Registration
     Agreement, the language of the administrative proceeding shall be the language of the
     Registration Agreement, subject to the authority of the Panel to determine otherwise,
     having regard to the circumstances of the administrative proceeding.”

     Thus, the parties may agree on the language of the administrative proceeding. In the
     absence of an agreement, the language of the registration agreement shall dictate the
     language of the proceeding. However, the Panel has discretion to decide otherwise,
     having regard to the circumstances of the case. The Panel’s discretion must be exercised
     judicially in the spirit of fairness and justice to both parties, taking into consideration
     matters such as command of the language, time, and costs. It is important that the
     language finally chosen by the Panel for the proceeding is not prejudicial to the parties in
     their ability to articulate the arguments for the case. International Data Group, Inc. v.
     Lingjun, WIPO Case No. D2004-0398.

     The Complainant, upon being notified by the Center that the language of the registration
     agreement is Korean, has submitted a request that English be the language of the
     proceeding, to which the Respondent has not replied. Thus, given the provided
     submissions and circumstances of this case, the Center’s typical practice would be to
     accept the Complaint as filed in English, accept a Response in either English or Korean,
     and appoint a panel familiar with the languages mentioned above, if available, with
     discretion as to any final determination as to the language of proceeding a matter for the
     panel on appointment.

     In light of the fact that the Respondent has been notified of the Complaint in Korean as
     well as English , that the Domain Name and the website at the Domain Name are in
     English, and that the Respondent has chosen not to participate in the proceeding, the

                                            page 3
Panel is satisfied that, inter alia, taking these circumstances into consideration, the Panel
may render its decision in English and that this may be considered fair to both parties in
the circumstances of this case.

Review of UDRP Elements

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding
and obtain the transfer of the Domain Name, the Complainant must establish that each of
the three following elements is satisfied:

1.    the Domain Name is identical or confusingly similar to a trademark or service mark
      in which the Complainant has rights;
2.    the Respondent has no rights or legitimate interests in respect of the Domain Name;
      and
3.    the Domain Name has been registered and is being used in bad faith.

These requirements will be considered in turn.

A.    Identical or Confusingly Similar to a Mark in which the Complainant has
      Rights

The Panel recognizes that the Complainant is the owner of registered trademark
NORTON INTERNET SECURITY. The Complainant has been using the above mark
since September 1999 in connection with an Internet security suite that protects against
viruses, spam, and malware, and allows users to set parent controls, among other things.
The Panel is satisfied on the evidence that the Complainant has rights in the mark
NORTON INTERNET SECURITY.

The Panel further finds that the Domain Name is confusingly similar to the marks
NORTON and NORTON INTERNET SECURITY. Apart from the generic top level
domain, the Domain Name consists of the Complainant’s trademark NORTON
INTERNET SECURITY. In these circumstances, Internet users finding the Domain
Name <nortoninternetsecurity.com> are likely to be misled into believing that the
Complainant is the registrant or is otherwise affiliated or associated with the Domain
Name.

The Panel finds that the first element of the Policy has been established.

B.    Rights or Legitimate Interests

The Respondent is neither an authorized dealer nor a distributor of NORTON products or
services, and it has not been licensed or otherwise been given permission to use the name
and marks NORTON or NORTON INTERNET SECURITY by the Complainant. The
Panel is satisfied by the Complainant’s unchallenged evidence that the Domain Name
has been used for a website offering links to third party websites that offer Internet
security products and other antivirus products and services directly competing with the
Complainant’s NORTON INTERNET SECURITY software and its family of NORTON
products and services.

The Respondent does not use the Domain Name in connection with a bona fide offering
of goods and services within the meaning of the Policy, paragraph 4(c)(i) because the
Respondent merely provides links to third party websites. Based on the case file, the
Panel is of the view that the Respondent has no rights or legitimate interests in respect of
the Domain Name.

                                        page 4
     The Panel finds that the second element of the Policy has been established.

     C.   Registered and Used in Bad Faith

     The trademark NORTON is widely known. It has been used world wide for many years
     and is one of the widely known trademarks for computer and Internet security products.
     Therefore, in the Panel’s view, the Respondent most likely knew of the trademark prior
     to registering the Domain Name. This finding of the Panel is also evidenced by the fact
     that the Respondent has utilized the Domain Name for a website featuring links to third
     party websites that offer Internet security products and other antivirus products and
     services. The Panel believes that the Respondent intends by using the Domain Name to
     take unfair advantage of the recognition associated with the Complainant’s NORTON
     and NORTON INTERNET SECURITY marks by diverting Internet users from
     Complainant’s official website to the Respondent’s parked website, where the
     Respondent may receive pay-per-click commissions.

     The Panel concludes that the Domain Name was registered and is being used in bad faith.


7.   Decision

     For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of
     the Rules, the Panel orders that the domain name <nortoninternetsecurity.com> be
     transferred to the Complainant.




                             ___________________________
                                   Chunghwan Choi
                                       Panelist

                                  Dated: March 18, 2009




                                           page 5

				
DOCUMENT INFO