Decision for dispute CAC-UDRP-108531

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is a group of companies under which also the trademark owner of several "BIOCEVAL" trademarks, such as:

• International trademark "BIOCEVAL" No. 822294, registered on September 24, 2003;
• French trademark "BIOCEVAL" No. 3217384, registered on March 26, 2003 (hereinafter cumulatively referred to as the "Trademark").

The Respondent did not claim any relevant rights on the name or trademark "BIOCEVAL".

The Complainant is SARIA SE & Co. KG, an international group of companies with over 200 locations in 26 countries and 13,000 employees. The SARIA Group is headquartered in Selm, Germany. Among the company of this Group, there is also the trademark owner SARIA SAS, based in Clichy, which is tightly connected to the Complainant. 

The Complainant is also the owner of several identical domain names, such as:

• <bioceval.de>: which is the main website of the company Bioceval Gmbh:
• <bioceval.eu>: registered in April 2006;
• <bioceval.cl>: registered in December 2017;
• <bioceval.fr>: registered in June 2014;
• <bioceval.dk>: via the company DAKA Denmark since November 2023.

The disputed domain name <bioceval.com> was previously owned by the company DAKA Denmark, which is now part of the SARIA Group and was unfortunately and unintentionally abandoned.

The disputed domain name <bioceval.com> was registered on May 14, 2024 and is used in connection with a placeholder website of GoDaddy, mentioning that the disputed domain name is for sale.

The Respondent is "Joe Harris" based in South Korea.

The Complainant has tried to recover the disputed domain name amicably but without success.

Complainant:

The Complainant contends that the disputed domain name is identical to the Trademark.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In this regard, the Complainant states that the Respondent is not commonly known by the disputed domain name, that it is not affiliated with nor authorized by the Complainant in any way, that the Complainant does not carry out any activity for, nor has any business with the Respondent, and that neither license nor authorization has been granted to the Respondent to make any use of the Trademark or apply for registration of the disputed domain name by the Complainant.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It contends that the Respondent must have been aware of the Complainant and its Trademark at the time of registration of the disputed domain name as the Trademark is well-known and the disputed domain name is identical to the Trademark. Further, that the Respondent's use of the disputed domain name is evidence of bad faith, as it is used to prevent the Complainant to develop its activity and to freely use its trademark rights online, and that the only reason for registering the disputed domain name is in order to have a financial gain, as the website under the disputed domain name is suggesting that the later is for sale and the Respondent requested a prohibitive amount of money for the amicable solution of the matter.

Respondent:

In his Response, the Respondent wrote the following:

Prior to addressing the merits of the case, I note that I have been unable to review the evidentiary materials attached to the Complaint. Accordingly, I request that such materials be provided to me by email.

As I have not yet had an opportunity to examine the evidence, I will, for the time being, set forth only my preliminary position in response.

At the time I registered the domain name, I had no knowledge of the Complainant’s trademark registration or use. In the Republic of Korea, where I registered the domain name, the Complainant has no registered trademark rights.

Furthermore, “ceval,” which can be transliterated into Korean as “세발” refers to a common noun meaning a type of fishing net. I combined this term with “bio” to create the domain name. I am preparing to use this domain name in connection with a related line of business."

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Language of the proceedings

The Registrar confirmed that the language of the respective registration agreement is Korean. Thus, the default language of the proceedings is Korean, unless the Panel determines that there is a compelling reason to deviate from Korean.

Taking into account paras. 10 and 11 UDRP Rules, as well as the following facts: 

• There is multiple evidence that the Respondent can understand the language of the Complaint, i.e. English, since he communicated with the Complainant in English for the unsuccessful amicable resolution of the matter and submitted the Response to the Complaint in readily understandable English;
• The disputed domain name contains the roman script, and uses the generic TLD .com rather than being in Korean characters using Internationalized Domain Names (IDNs) or using a Korean ccTLD;
• Content on the website associated with the disputed domain name is in English, 

it determines that the Respondent is fully capable to understand and communicate in English, would not suffer any disadvantage by the use of the English language, and therefore the language of the proceedings shall be English.

Access to the case file by the Respondent

The Respondent mentions in his Response that he "ha[s] been unable to review the evidentiary materials attached to the Complaint. (..)" 

Taking into account para. 10 (b) UDRP Rules, which states that "In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.", and the CAC's UDRP Supplemental Rules, both parties accessed the CAC's online platform successfully and submitted their respective forms, deadline extensions and submissions. The Complaint and its Annexes are well downloadable and readable and, to the Panel's knowledge, there has been no system log of the CAC suggesting any malfunction of the system. Consequently, both parties had the opportunity to access and comment on each other's submissions and had equal and fair opportunities to do so. Therefore, the Respondent's statement that he was unable to review the evidentiary material attached to the Complaint, without even explaining the reason for such inability, does not seem plausible.

In light of the above, the Panel is satisfied that all procedural requirements under the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

1. Identical or Confusingly Similar

The Panel accepts that the disputed domain name is identical to the Trademark.

However, Complainant has to also prove that it has rights in the Trademark. Complainant has provided printouts from various trademark databases, showing details of BIOCEVAL trademark registrations in France and other countries. Even though some of those printouts are not translated into the language of the proceeding, it was clear to the Panel that none of the registrations were in the name of the Complainant per se, but registered in the name of another SARIA Group company based in France. In order to give the Complainant a fair opportunity to clarify its statement that it has rights in the Trademark and provide supporting documentation, the Panel issued a Procedural Order.

The Complainant then clarified and submitted further evidence about the relationship with the trademark owner. The Complainant is affiliated with the trademark owner and belongs to the same group of companies. Further, upon the Panel's request, the Complainant has also provided a respective Power of Attorney (PoA) that legitimises the Complainant's involvement in these proceedings. 

The Panel concludes that the Complainant has proven that it has rights in the Trademark for the purposes of the Policy.

2. No Rights or Legitimate Interests

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. He states that he "combined this term with “bio” to create the domain name." and that he is "preparing to use this domain name in connection with a related line of business". However, no relevant proof has been submitted to support those assumptions.

Consequently, the Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy. The Respondent failed to prove any rights or legitimate interests in the disputed domain name.

3. Bad Faith Registration and Use

3.1 The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the Trademark.

3.2 Furthermore, the Panel accepts the Complainant's contentions that the disputed domain name has been used in bad faith under para. 4(b)(i) of the Policy. The Respondent seems to have registered 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 for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name. Further, he is preventing the Complainant from developing its activity and to freely use its trademark rights online.

Consequently, by using the disputed domain name in such a manner, the Respondent has fulfilled the elements and requirements for a finding under paragraph 4(a)(iii) of the Policy. The Panel finds that the Complainant has also established the third element of the Policy successfully.