DECISION

Fujitsu Limited v. d,y,an

Claim Number: FA0208000123924

PARTIES

Complainant is Fujitsu Limited, Kanagawa, JAPAN (“Complainant”) represented by James D. Halsey and David E. Weslow, of Staas & Halsey LLP.  Respondent is d,y,an, Gyoung Buk, KOREA (“Respondent”) represented by Sung Sang-Hee, of Hanalaw Law Office.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pocketloox.com>, registered with Iholdings.com.

PANEL

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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2002; the Forum received a hard copy of the Complaint on September 4, 2002.

On September 3, 2002, Iholdings.com confirmed by e-mail to the Forum that the domain name <pocketloox.com> is registered with Iholdings.com and that Respondent is the current registrant of the name.  Iholdings.com has verified that Respondent is bound by the Iholdings.com 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 September 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 2002 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@pocketloox.com by e-mail.

Subsequent to the foregoing deadline, and without being properly served upon Complainant, a Response to the Complaint was received by the Forum on October 11, 2002.

On October 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Fujitsu Limited, contends that the <pocketloox.com> domain name is identical or confusingly similar to Complainant's POCKET LOOX mark.    Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Although the Response to the Complaint submitted by d,y,an, was not timely received by the Forum, in the exercise of the Panel’s discretion, the Panel has chosen to consider the Response.  Respondent contends that he registered the disputed domain name for personal reasons and that Complainant has been unable to show proof of trademark registration of <pocketloox.com>.  Respondent also denies that he sought to sell the domain name to Complainant.

FINDINGS

Complainant holds two trademark registrations in Japan for its LOOX mark (Reg. Nos. 4,504,151 and 4,565,571) registered on September 7, 2001 and May 10, 2002 respectively.  Complainant uses this mark in relation to notebook computers.

 In January 2002, Complainant released information regarding its new Personal Digital Assitant (“PDA”) known as the POCKET LOOX.  From as early as January 30, 2002 Complainant’s POCKET LOOX product and mark has been extensively discussed in the global media as the first PDA powered by the Intel® PXA250 applications processor and featuring the Intel® Xscale microarchitecture.  The integrated technology on the POCKET LOOX enables wireless connection to the desktop PC and web browsing, and the GPRS module adds mobile phone functionality.  Complainant has also launched a massive worldwide marketing program for promoting its PDA under the POCKET LOOX mark.  The worldwide sale of the POCKET LOOX PDA began on July 16, 2002.

Complainant has applied for trademarks for POCKET LOOX in 28 countries, including Japan where it applied for a trademark on January 28, 2002.  Complainant also applied for a trademark in the United States on May 17, 2002. 

The disputed domain name <pocketloox.com> was originally registered by a “Micheal Ahn” on February 7, 2002.  At that time the domain name resolved to a pornographic website.  The domain name registration was transferred to Respondent on June 26, 2002.  Respondent is using the disputed domain name to display information about Complainant’s POCKET LOOX that is fictitious and disparaging of Complainant’s product.  A message at Respondent’s website reads “Notice- We realize the error of our Company’s item Which is ‘Pocketloox.’ We are very sorry.  We will do our best that this kind or case never happen[s] again.”  The graphic display on the website attempts to simulate the website of an international computer company.  Complainant’s investigation has revealed that Respondent is the same entity that registered the disputed domain name on February 7, 2002.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the LOOX mark through registration and use in Japan.  Complainant has also established that it has rights in the POCKET LOOX mark through evidence of extensive use throughout the world as the name of its new PDA product.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2 (2000).

Respondent’s <pocketloox.com> domain name is identical to Complainant’s POCKET LOOX mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.com.”  The addition of a top-level domain is irrelevant when conducting a Policy ¶ 4(a)(i) analysis because top-level domains are a required element of a domain name and have no distinctive qualities of their own.  As a result, the addition of a top-level domain name does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) identical analysis.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).  .

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent’s brief Response fails to set forth any rights or legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

Furthermore, because the Response failed to demonstrate any right or legitimate interest in the domain name, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of complainant to be deemed true). 

It is fair to infer from the record that Respondent is currently using the disputed domain name in order to masquerade as Complainant, and offer misleading information about Complainant’s new product identified by the POCKET LOOX mark.  Respondent is not using the domain name to offer legitimate protests, or complaints about Complainant’s product, it is merely offering false information.  This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (finding respondent’s use of the confusingly similar domain name <hpmilenium.com> to sell counterfeit versions of complainant’s HP products was not a bona fide offering of goods or services).

Based on Respondent’s own communications with the Panel, and Complainant’s submissions, it can be established that Respondent is commonly known as “Mr. An,” but not as POCKET LOOX or <pocketloox.com>.  Therefore, there is no evidence in the record that establishes that Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark). 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The UDRP Policy expressly recognizes that the paragraph 4(b) factors are not exclusive.  Therefore, other circumstances could give rise to bad faith beyond the conduct listed in the paragraph 4(b) factors.  See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

The disputed domain name <pocketloox.com> is identical to Complainant’s POCKETLOOX mark and Respondent has used the domain name in connection with two distinctly tarnishing activities.  From February to June of 2002, Respondent used the disputed domain name in connection with a pornographic website.  And since July of 2002, Respondent has used the domain name in order to confuse Internet users and disparage Complainant’s product as it masquerades as Complainant.  The use of a domain name that is identical to Complainant’s mark in order to display pornography and other tarnishing material is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

Based on the fact that Complainant released information about its POCKET LOOX product in January 2002, and Respondent registered the <pocketloox.com> domain name within two weeks of this global news release it can be inferred that Respondent registered the domain name in anticipation of selling the domain name registration to Complainant, or to benefit from the initial interest confusion that would result when curious consumers attempted to locate Complainant’s new product at the <pocketloox.com> domain name.  Registration of a domain name, despite notice of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain name <pocketloox.com> be transferred from Respondent to Complainant.

Bruce E. Meyerson, Panelist

Dated: October 25, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1480.html