Generic Top Level Domain Name (gTLD) Decisions

Complainant is Silicon Knights, Inc., St. Catherines, ON, Canada ("Complainant") represented by Christopher T. Holland, of Krieg, Keller, Sloan, Reilley & Roman LLP. Respondent is Chang il Lee, Seoul, Korea ("Respondent").

The domain name at issue is "siliconknight.com" registered with HANGANG Systems, Inc.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 27, 2001; the Forum received a hard copy of the Complaint on March 29, 2001. The Complaint was submitted in English with a Korean translation.

On March 29, 2001, HANGANG Systems, Inc. confirmed by e-mail to the Forum that the domain name "siliconknight.com" is registered with HANGANG Systems, Inc. and that 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"). HANGANG Systems, Inc. confirmed that the registration agreement is in Korean.

On April 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@siliconknight.com by e-mail. Both English and Korean copies of the Commencement Notification and Complainant were included.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 7, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

Since the Respondent failed to respond to the translated Commencement Notification and Complaint, the Panel determines, in accordance with Rule 11, that the remaining Administrative Proceeding may be conducted in English.

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

B. Respondent has not submitted a response in this matter.

Complainant, Silicon Knights, Inc., owns the registered SILICON KNIGHTS mark, which it has used in connection with computer software, computer software consulting services, and training services. Complainant’s mark was registered with the United States Patent and Trademark Office on October 15, 1996. Complainant is also the registered owner of numerous domain name variations of its registered mark.

Respondent registered the disputed domain name February of 2001 during a registration lapse. To date, Respondent has not used the disputed domain name for any purpose.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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:

(1) the domain name registered by the Respondent 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.

Complainant’s rights are evidenced by its registered SILICON KNIGHTS mark.

The Panel finds that Respondent’s domain name, siliconknight.com, is confusingly similar because it is a common misspelling of Complainant’s mark and does not change the overall impression of the mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

Moreover, the disputed domain name is so confusingly similar a reasonable Internet user would assume the domain name is somehow associated with Complainant’s well-established mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant).

Consequently, Policy ¶ 4(a)(i) has been satisfied.

The Panel finds that Respondent is not commonly known by the disputed domain name, nor is Respondent using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

In addition, Respondent asserted no rights or legitimate interests in the disputed domain name; therefore, the Panel is free to conclude that Respondent has no such rights or legitimate interests in the domain name at issue. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proven).

Therefore, Policy ¶ 4(a)(ii) has been satisfied.

The Panel finds that Respondent has passively held the disputed domain name since its registration, which indicates bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Also, Respondent knew or should have known of Complainant’s well-established mark prior to registering the disputed domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

Finally, the evidence supports the conclusion that Respondent registered the disputed domain name to intentionally attract Internet users to its web site, or other online location, via a likelihood of confusion with Complainant’s famous mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent was attracting Internet users to a web site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s web site); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").

Accordingly, Policy ¶ 4(a)(iii) has been satisfied.

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Thus, it is Ordered that the domain name, siliconknight.com, be transferred from Respondent to Complainant.