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Generic Top Level Domain Name (gTLD) Decisions |
Mainsoft, Inc. v. Jinseok Yang a/k/a
World Best Domainer
Claim Number: FA0203000105936
PARTIES
Complainant
is Mainsoft, Inc., San Jose, CA
(“Complainant”) represented by Rochelle
D. Alpert, of Brobeck, Phleger &
Harrison LLP. Respondent is Jinseok Yang a/k/a World Best Domainer,
Seoul, SOUTH KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mainwin.com>,
registered with Verisign - Network
Solutions, Inc.
On April 16, 2002 pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed James
P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 19, 2002; the Forum received
a hard copy of the
Complaint on March 19, 2002.
On
March 20, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain name <mainwin.com>
is registered with Verisign - Network Solutions, Inc. and that Respondent is
the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- Network Solutions, 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
March 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 9,
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@mainwin.com by e-mail.
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.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The domain name <mainwin.com> is identical to Complainant’s federally
registered MAINWIN mark.
2. Respondent is not commonly known as <mainwin.com>. Second, Respondent has not made a good faith
intention of offering any product or services under the MAINWIN designation at
the website
connected with the disputed domain name. Third, by linking a pornographic website to the disputed domain
name, Respondent does not have a legitimate right or interest in <mainwin.com>.
3.
First, Respondent’s use of the domain name, namely connecting pornographic
material to the disputed domain name, is evidence that
Respondent is using <mainwin.com> in bad faith. Second,
by using a domain name that is identical to Complainant’s mark, Respondent is
creating a likelihood of confusion with Complainant
as to the sponsorship of
Respondent’s website. Finally, since
Respondent provided false contact information to the registrar, Respondent has
registered the disputed domain name
in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant registered its MAINWIN mark
on November 7, 1995 with the United States Patent and Trademark Office,
Registration Number
1,933,524. Since as
early as 1993, Complainant has used its mark in connection with developing
software which has been licensed to more than
one million users.
Respondent registered the disputed domain
name on May 17, 2001. Respondent uses
the disputed domain name as a gateway to a pornographic website
<sexyadong.com>. Complainant has
attempted to contact Respondent and make a cease desist request of the disputed
domain name. However according to
Complainant, the telephone number listed on the WHOIS database for Respondent
is inoperable, and there was no
answer to Complainant’s letter.
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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights to
the MAINWIN mark by registering the mark with the USPTO and through its
subsequent continuous
use. Because the
generic top-level domain “.com” does not distinguish <mainwin.com> from
MAINWIN, the Panel finds that the disputed domain name is identical to
Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
POMELLATO mark because the generic top-level
domain (gTLD) “.com” after
Complainant’s mark is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to Complainant’s registered ROBOHELP
trademark, and that the "addition of
.com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response in
this matter. Therefore, the Panel will
presume that it has no rights or legitimate interests to <mainwin.com>. 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). Since no Response was filed, the Panel will
presume that all allegations in the Complaint are true. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Respondent has used the disputed domain
name to transport Internet users to a website that provides pornographic
material. Where the domain name in
dispute is identical to Complainant’s mark, such activity by Respondent cannot
be considered a bona fide
offering pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial
gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material, where such use is
calculated
to mislead consumers and tarnish Complainant’s mark).
There is no evidence provided that
Respondent has been known or is currently known as <mainwin.com>. Therefore, the Panel finds that Respondent
is not commonly known as <mainwin.com> and can not satisfy Policy ¶
4(c)(ii). 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).
By diverting Internet users to a website
that offers pornographic goods and services, Respondent has not engaged in a
legitimate,
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of
the domain name to direct users to other, unconnected websites does not
constitute
a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has linked the disputed domain
name to a website that offers adult material.
Because the domain name is not only confusingly similar, but identical
to Complainant’s MAINWIN mark, Respondent has registered and
used <mainwin.com> in bad faith pursuant to Policy ¶
4(b)(iv). See Land O'
Lakes Inc. v. Offbeat Media Inc.,
FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶
4(b)(iv) where Respondent utilized a domain name confusingly
similar to the
Complainant’s mark and used a confusingly similar pornographic depiction of the
Complainant’s registered trademark
on its web site to cause confusion as to the
source or affiliation of the site); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where the Respondent linked the domain name in question to
websites displaying
banner advertisements and pornographic material).
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
should be hereby
granted.
Accordingly, it is Ordered that the <mainwin.com> domain name be transferred
from Respondent to Complainant.
James P. Buchele, Panelist
Dated:
April 18, 2002
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