Successful domain name recovery

In a clear case of cybersquatting, Arcor SAIC, an Argentine world food manufacturer leader could not register the domain name, which is identical to its well-known trademark and trade name “ARCOR”, because it had been already registered by the Korean citizen Young Jung.

Considering that it had better rights than Mr. Jung, in 2006 Arcor commenced administrative proceedings before the WIPO Arbitration and Mediation Center (the “Center”), alleging that the defendant had registered and used the domain name in bad faith and therefore, seeking the transfer of the disputed domain name in its favor in the terms of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), also known as UDRP.

On December 31, 2006 the Panel appointed by the Center decided to order the transfer of the domain name to Arcor¹, based on the fact that it considered that Arcor had proved the three elements of paragraph 4.a) of the Policy:

1. to be the holder of a trademark identical to the disputed domain name,
2. that the defendant had no rights or legitimate interests in the domain name, and
3. that the defendant had registered and used the domain name in question in bad faith.²

The Center gave notice of the Panel’s decision upon the Registrar for its fulfillment. In that connection, section 4.k) of the Policy sets forth that if the Panel decides to order the transfer or cancellation of the domain name in dispute, the Registrar shall wait 10 business days before executing said decision. Upon the expiration of such term, the Registrar shall comply with it unless the defendant gives notice of its having filed court action against the complainant in any of the jurisdictions consented to as indicated in paragraph 3.b)xiii) of the Rules.³

Within said term, Mr. Jung informed the Registrar that he had filed a complaint against Arcor before a Korean court, requesting the court to declare that Arcor had no right to prohibit him from using the disputed domain name or to request its transfer and that he had rights on the domain name. The Registrar suspended the execution of the Panel’s decision.

A court action before a Korean court implied two significant difficulties for Arcor. In the first place, in principle, the procedural laws of Korea do not provide for the application of a statute of limitations for not prosecuting a lawsuit for a given period so Mr. Jung’s court action could be pending indefinitely preventing the execution of the Panel’s decision. Secondly, court precedents related to domain names were not very favorable to Arcor’s position.4

On the basis of certain deficiencies in Mr. Jung’s complaint, the Korean court declared the proceedings to be voluntarily dismissed and Mr. Jung consented the decision.

Arcor voluntarily appeared in court and requested a certificate indicating that the complaint had been voluntarily dismissed.

After obtaining said certificate, Arcor requested the Registrar, pursuant to the provisions of section 4.k) of the Policy, to transfer the domain name to it as ordered by the Panel.

Three years after the Panel’s decision, the Registrar finally transferred the disputed domain name to Arcor.

  1 http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1362.html.