The Epoxylite Corporation v. Jin, Sung-Hwan [2002] GENDND 375 (12 March 2002)

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PROCEDURAL HISTORY

The Complaint was filed with CPR on February 5 2002 and, after review for administrative compliance, served on the Respondent on February 5 2002. The Respondent did not file a Response before February 25 2002. I was appointed Arbitrator pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and Rules promulgated by the Internet Corporation for Domain Names and Numbers (ICANN). Upon the written submitted record including the Complaint, I find as follows:

FINDINGS

Respondent’s registered domain name, “epoxylite.com”, was registered with The Registry at Info Avenue sm LLC on June 25 2001. In registering the name, Respondent agreed to submit to this forum to resolve any dispute concerning the domain name, pursuant to the UDRP.

The UDRP provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:

i. Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. Respondent’s domain name has been registered and is being used in bad faith.

IDENTITY/CONFUSING SIMILARITY: Complainant alleges that “epoxylite.com” is identical or confusingly similar to Complainant’s trademarks, EPOXYLITE and EPOXYLITE, which applies to resin products for the transformer and electronics industries.

Complainant has submitted evidence that it owns United States Registration No. 777,198 for EPOXYLITE, which mark was first registered in 1964, and United States Registration No. 777,171 for EPOXYLITE, which mark was first registered in 1964 .

I therefore conclude that the registered domain name is identical or confusingly similar to Complainant’s protected mark.

RIGHTS AND LEGITIMATE INTERESTS: Complainant alleges that Respondent has no rights or legitimate interests with respect to the domain name at issue. In support for this allegation, Complainant notes that it was the previous registrant for this domain name and its registration expired in May, 2001. The Respondent registered the domain name on June 25, 2001.

UDRP Paragraph 4(c) provides that Respondent’s rights or legitimate interests in a domain name may be demonstrated, without limitation, by showing that (a) before notice to Respondent of the dispute, Respondent has used, or made 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; or (b) Respondent has been commonly known by the domain name; or (c) Respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Even if it is demonstrated the Complainant’s right on the domain name at issue and that the Respondent has no historical or trademark entitlement or connection to the trademark EPOXYLITE, after having personally visited the site at www.epoxylyte.com I find that the documents disclosed by the Complainant are not sufficient to evidence that the Respondent has no rights or legitimate interests in respect of the domain name at issue. I find that the activity undertaken by the Respondent on the site www.epoxylite.com shows a fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark EPOXYLITE.

I therefore conclude that Respondent does have rights or legitimate interests with respect to the domain name at issue.

BAD FAITH: In support of the contention of Respondent’s bad faith registration and use, Complainant notes only that there is no correlation between the domain name “epoxylite.com” and the contents of the Respondent’s web page.

Paragraph 4(b) of the UDRP provides that indications of bad faith include, without limitation, (a) registration for the purposes of selling, renting or transferring the domain name to the Complainant for value in excess of Respondent’s cost; (b) a pattern of registration in order to prevent Complainant from reflecting the mark in a corresponding domain name; (c) registration for the primary purpose of disrupting the business of a competitor; or (d) an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location, or of a product or service on Respondent’s web site or location.

Bearing in mind that the indications of bad faith described by Paragraph 4(b) of the UDRP are not exhaustive and therefore Complainant could provide other evidences of the bad faith, nevertheless I do not agree with the assumption of the Complainant that the mere lack of correlation between the domain name and the contents of the Respondent’s web page is evidence of either the bad faith in registering and in using the domain name.

I therefore conclude that Respondent did not register and use the domain name in bad faith, as that term is defined in the ICANN Policy.

In light of my findings above that (a) the registered domain name is identical or confusingly similar to Complainant’s protected mark; (b) Respondent does have rights or legitimate interests with respect to the domain name at issue; and (c) Respondent did not register and use the domain name in bad faith, as that term is defined in the ICANN Policy, I find in favor of the Respondent.

Complainant’s request to transfer the domain name “epoxylite.com” is hereby DENIED.

Generic Top Level Domain Name (gTLD) Decisions

The Epoxylite Corporation v. Jin, Sung-Hwan [2002] GENDND 375 (12 March 2002)

CPR Institute for Dispute Resolution