Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Lawchek, Ltd., Cedar Rapids, IA, USA ("Complainant") represented by Joan Fletcher, of Nyemaster, Goode, Voigts, West, Hansell & O'Brien. The Respondent is Jongdae Lim Detail, Shindaebang, Seoul Korea ("Respondent").

The domain name at issue is "lawcheck.com", registered with Hangang Systems, Inc..

Moon Sung Lee

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 4, 2000; the Forum received a hard copy of the Complaint on December 15, 2000.

On December 21, 2000, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name "lawcheck.com" is registered with Hangang Systems, Inc. and that the Respondent is the current registrant of the name. Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@lawcheck.com by e-mail.

A timely response was received and determined to be complete on January 29, 2001.

On February 2, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Moon Sung Lee as Panelist.

On February 2, 2001, this Panel issued an order that, pursuant to ICAAN Rule 11, and in consideration of the fact that the Respondent's registration agreement is in Korean and of the circumstances of the administrative proceeding, the Complaint and required documents shall be submitted by the Complainant to the Forum in English and Korean and be transmitted to the Respondent and the Respondent may submit the Response in Korean or English and other communications to and from the Forum shall be in English.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

The Complainant has registered with the United States' Patent and Trademark Office the mark "LAWCHEK" on October 8, 1996.

The domain name at issue was originally registered by the Complainant with Network Solutions Inc. ("NSI"), on June 17, 1996, and the Complainant operated a web site from such location.

Paragraph 4 of the Service Agreement between the Complainant and NSI provides that "[u]nless otherwise specified, each NSI service is for a two-year initial term and renewable thereafter for successive one year terms," and the Complainant entered into a renewal agreement for one year term in June 1998 after 2 years from the initial registration.

On February 25, 1999, LAWCHEK, Ltd.'s President, R.A. Pundt, wrote a letter to InterNic Registration Services - NSI requesting that the future billing notice for renewal of the domain name at issue be sent directly to the Complainant, rather than to Team Technologies, the originally-named billing contact (the "Letter").

Despite this Letter, the 1999-2000 renewal notice was sent to Team Technologies, the originally-named billing contact, but not directly to the Complainant.

On June 25, 1999, the Complainant received a Deactivation Notice from NSI for failing to make the renewal payment.

However, in the Deactivation Notice was stated that the domain name service would be deactivated unless the renewal payment was made within 10 days from the date of notice.

Despite the Deactivation Notice, the Complainant tendered the renewal payment to NSI after 19 days of such notice on July 14, 1999.

On March 1, 2000, the Respondent registered the domain name at issue through Hangang Systems, Inc. and is still identified as the registered owner of such domain name under "Whois."

Since May 13, 1999, the Respondent has been engaging in research, development and provision of certain business model. Further, the Respondent has been managing email correspondence for the domain lawcheck.co.kr which is managed by "akirou," who is in strategic alliance with the Respondent.

Since May 13, 1999, the Respondent has begun to develop certain business models through the Internet. On June 14, 2000, the Respondent has applied for patent for a business method under which "law can be checked by using the Internet and cellular phones" with the Korean Patent Office and such application was made known public of August 5, 2000.

The Complainant claims that the domain name at issue "lawcheck.com" is confusingly similar to the mark registered by the Complainant under "LAWCHEK."

Moreover, the Complainant contends that the Respondent unlawfully transferred the domain name to a third party without the consent of the Claimant during a service renewal period where LAWCHEK was the lawfully registered owner. For such reasons, the Claimant contends that the Respondent shall be deemed as having no right or legitimate interest in the domain lawcheck.com.

In addition, the Complainant contends that the Respondent transferred the domain lawcheck.com without the consent of the Complainant when the Respondent knew that the Complainant was the lawful owner of the domain name lawcheck.com. Thus, such domain name must be deemed registered and used in bad faith.

B. Respondent

The Respondent contends that the domain lawcheck.com is different from that of LAWCHEK. The domain lawcheck.com differs from LAWCHEK because it is a common noun with which most of the people as well as the legal professionals can associate but the domain LAWCHEK which is registered in the US refers to a specific trademark or service mark.

Moreover, the Respondent contends that the Respondent was able to register the domain lawcheck.com on March 10, 2000, because it was possible to register so under WHOIS print screens. As such, the Respondent claims that it has legitimate interest in the domain lawcheck.com because it was properly registered in due course.

In addition, the Respondent claims that there was no need to obtain the consent of the Complainant for transfer of the domain lawcheck.com because the Respondent registered the domain lawcheck.com properly which indicates that the Complainant must have forfeited its right with respect to the domain lawcheck.com

The Respondent further contends that it has been preparing for the provision of certain products or services in good faith before receipt of the notice of dispute and has never intended to reap any commercial profits by way of misleading the public through the use of the domain lawcheck.com which is a common noun.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

Although the domain lawcheck.com is not identical with the domain LAWCHEK registered by the Complainant, the domain lawcheck.com, which is different in one letter only, is confusingly similar to the domain LAWCHEK, as the domain lawcheck.com is pronounced the same as the domain LAWCHEK.

Thus, the domain lawcheck.com satisfies this element as it is confusingly similar to that the domain LAWCHEK.

The Complainant contends that the Respondent unlawfully transferred the domain name to a third party without the consent of the Claimant during a service renewal period where LAWCHEK was the lawfully registered owner. For such reasons, the Claimant contends that the Respondent shall be deemed as having no right or legitimate interest in the domain lawcheck.com.

However, Paragraph 4(c) of the Policy states that the Respondent shall be deemed as having rights or legitimate interests to the domain name at issue if the Respondent can demonstrate that " before any notice of the dispute, its (the Respondent’s) use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services" was in progress.

In light of this, the domain lawcheck.com is a combination of common nouns law and check. As it is a common noun which can be easily known to the public, such common nouns cannot be said to be used only by the registered owner of LAWCHEK in the US.

In addition, since May 13, 1999, the Respondent has begun to develop certain business models through the Internet. In view of the fact that on June 14, 2000, the Respondent has applied for patent for a business method under which "law can be checked by using the Internet and cellular phones" with the Korean Patent Office and such application was made known public of August 5, 2000, the Respondent shall be deemed preparing for a bona fide offering of goods or services before receipt of any notice of the dispute. Thus, the Respondent shall be said to have the legitimate interests to the domain lawcheck.com because it satisfies the element of Paragraph 4(c) of the Policy.

As such, the Complainant has not satisfied the element that the Respondent does not have any rights or legitimate interests to the domain lawcheck.com

Paragraph 4(b) of the Policy illustrates four (4) circumstances which may show evidence of the registration and use of a domain name in bad faith:

The Complainant contends that since the Respondent transferred the domain lawcheck.com without the consent of the Complainant when the Respondent knew that the Complainant was the lawful owner of the domain name lawcheck.com, such transfer or registration must be deemed registered in bad faith.

However, there is no evidence indicating that the Respondent was aware of the lawful ownership of the domain lawcheck.com by the Complainant at the time of registration of the domain lawcheck.com. Moreover, there is no circumstance which could fall under any one of the four elements of Paragraph 4(b) of the Policy.

As such, the Complainant has not satisfied the element that the Respondent registered the domain lawcheck.com in bad faith.

Please note that this UDRP is a simplified procedure by which a decision is quickly drawn upon presence or lack of presence of certain elements as required by the ICANN Rule within the limited scope. Thus, if there is any ground upon which other relief may be sought, you are advised to use other venue for resolution.

As explained above, the domain lawcheck.com shall not be transferred from the Respondent to the Complainant.