Tonzon Holding B.V. v James H Park

WIPO Case No. D2023-0180

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tonzon Holding B.V. v. James H Park

Case No. D2023-0180

1. The Parties

The Complainant is Tonzon Holding B.V., Netherlands, represented by Inaday Merken BV, Netherlands.

The Respondent is James H Park, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <tonzon.com> (the “Disputed Domain Name”) is registered with

DropCatch.com 1015 LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2023.

On January 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On January 13, 2023, the Registrar transmitted by email to the
Center its verification response confirming that the Respondent is listed as the registrant and providing the
contact details. The Center sent an email communication to the Complainant on January 25, 2023,
regarding Registrar information, inviting the Complainant to submit an amendment to the Complaint.

The Complainant filed an amended Complaint on January 26, 2023.

The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the Uniform 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 and 4, the Center formally notified the Respondent of the paragraph 5, the due date for Response was February 16, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on February 22, 2023.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 9, 2023.
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.

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4. Factual Background

The Complainant, Tonzon Holding B.V., is a Dutch company active in isolation material for buildings since
1980.

The Complainant is the owner of several registered trademarks consisting of or including the term TONZON, such as the following:

- TONZON, Benelux word mark registered under No. 755814 on October 11, 2004, in classes 11,
17 and 37.

The Disputed Domain Name was registered on December 2, 2018. The Disputed Domain Name appears to

resolve to a parking page containing pay-per-click (“PPC”) links to advertisements of competitors of the

Complainant. The parking page also mentions the following:

“Buy this domain

The owner of tonzon.com is offering it for sale for an asking price of 9800 USD!”

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be identical and/or confusingly similar to trademarks in which it claims to have rights.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name.  According to the Complainant, the Respondent has not been licensed or

authorized to use the Disputed Domain Name.  The Complainant claims that the use of the Disputed Domain

Name is unfair and does not amount to a bona fide offering of goods or services.  Also, according to the

Complainant, there is no evidence that the Respondent has been commonly known by the Disputed Domain

Name and the Respondent has never acquired any trademark rights to the Disputed Domain Name.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad

faith. According to the Complainant, the Respondent must have had knowledge of the Complainant’s

trademark rights when registering the Disputed Domain Name. The Complainant also claims:

-	that the Respondent is creating a likelihood of confusion with the TONZON trademarks, constituting bad faith use pursuant to paragraph 4(b)(iv) of the Policy;
-	that the Disputed Domain Name was registered for the purpose of selling or transferring the Disputed Domain Name to the Complainant or to a competitor for valuable consideration in excess of the
Respondent’s out-of-pocket costs directly related to the Disputed Domain Name;
-	the Disputed Domain Name was registered primarily for the purpose of disrupting the business of the Complainant.

B. Respondent

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

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6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it

deems applicable. 

The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed

Domain Name.  As the UDRP proceedings are administrative, the standard of proof is the balance of

probabilities. 

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that: 

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;  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. 

The Panel will therefore deal with each of these requirements. 

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that it has rights in the TONZON trademark, which

has been registered and used in connection with the Complainant’s isolation material business.

The operative element of the Disputed Domain Name is identical to the Complainant’s TONZON mark.

The only additional element in the Disputed Domain Name is the generic Top-Level Domain (“gTLD”) suffix (“.com”). As a technical requirement of registration, this element is generally disregarded in the comparison

between a domain name and a trademark for the purposes of the first element of the Policy (see WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”),

section 1.11).

Therefore, the Panel finds that the Disputed Domain Name is identical to a trademark in which the

Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent

has no rights or legitimate interests in respect of the Disputed Domain Name. 

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing

that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the

burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). 

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain

Name and that the Respondent does not seem to have acquired trademark or service mark rights. 

According to the information provided by the Registrar, the Respondent is “James H Park”.  The

Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. 

There are no indications that a connection between the Complainant and the Respondent exists or existed. 

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Where a domain name is identical to a complainant’s trademark, UDRP panels have largely held that it

carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). The Disputed

Domain Name being identical the Complainant’s TONZON trademark, the Panel finds that the Disputed

Domain Name carries a high risk of implied affiliation with the Complainant and cannot constitute fair use in

the circumstances of this case.  

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not

(see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). 

In this case, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Panel observes that the Disputed Domain Name is offered for sale and resolves to a parking page containing PPC links resolving to advertisements of competitors of the

Complainant.

Therefore, the Panel finds that such PPC links compete with or capitalize on the reputation and goodwill of

the Complainant’s mark or may mislead Internet users, which cannot be considered as a use of the Disputed

Domain Name in connection with a bona fide offering of goods or services (see section 2.9 of the WIPO

Overview 3.0). 

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the

absence of a Response from the Respondent, the prima facie case established by the Complainant has not

been rebutted. 

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or

legitimate interests in the Disputed Domain Name.  In light of the above, the Complainant succeeds on the

second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was

registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for

example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Control
Techniques Limited v. Lektronix Ltd,  WIPO Case No. D2006-1052). 

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad

faith.  Among these factors demonstrating bad faith registration and use is the use of a domain name to

intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by

creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or

endorsement of the website or location or of a product or service on the website or location. 

In the present case, the Panel finds it likely that the Respondent was aware of the Complainant and its

trademark rights when it registered the Disputed Domain Name. The Complainant’s marks predate the

Disputed Domain Name by more than a decade and the Disputed Domain Name is identical to the

Complainant’s distinctive trademark. In the Panel’s view, the Respondent’s likely awareness of the

Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit

du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property

Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

The Panel observes that the Respondent uses the Disputed Domain Name to resolve to a parking page

containing PPC links to advertisements of competitors of the Complainant. In the Panel’s view, this indicates

that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by

creating a likelihood of confusion with the Complainant’s trademark.  While the intention to earn

click-through-revenue is not in itself illegitimate, the Panel finds that the use of the Disputed Domain Name

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that is identical to the Complainant’s trademark (as is the case here) to obtain click-through-revenue

constitutes bad faith use (see Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L’Oréal,

Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623). The fact that the PPC links may be automatically generated by a third party cannot discharge the Respondent of any responsibility for the content appearing on the website connected to the Disputed Domain Name under its control (see section 3.5 of the WIPO Overview 3.0).

Moreover, in the Panel’s view, the fact that the Disputed Domain Name is offered for sale at a price which

most probably exceeds by far the Respondent’s out-of-pocket costs directly related to the Disputed Domain

Name is a further indication of bad faith in the circumstances of this case.

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. 

Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. 

Therefore, the Panel finds that, on the balance of probabilities, it is established that the Disputed Domain

Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on

the third and last element of the Policy. 

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <tonzon.com> be transferred to the Complainant.

/Flip Jan Claude Petillion/

Flip Jan Claude Petillion

Sole Panelist
Date: March 22, 2023