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Generic Top Level Domain Name (gTLD) Decisions |
Richard Ravid, Inc. v. James Kang
Claim Number: FA0202000104997
PARTIES
The
Complainant is Richard Ravid, Inc. of Normandy Court, Royal
Oak, MI, USA (hereinafter, “Complainant”) and the Respondent is James Kang of Suji-Eup, Joogjeon-Ri, Yongin-Shi, Kyunggi-Do, Korea (hereinafter, “Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <focus21.com>,
registered with Hangang Systems, Inc.
PANELIST
The following Panel has sworn
that it is independent and has no connection whatsoever to the parties to the
administrative proceedings of this case and that it
will perform its work independently and impartially.
Panelist: Moon
Sung Lee
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (hereinafter, “the Forum”) electronically on February 25, 2002; the Forum received a hard copy of
the Complaint on February 25, 2002.
On
February 26, 2002, Hangang Systems, Inc. confirmed by e-mail to the Forum that
the domain name <focus21.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.
On
March 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of March 26,
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@focus21.com by e-mail.
A
timely Response by the Respondent was received and determined to be complete on
March 26, 2002.
Pursuant
to Forum Supplemental Rule 7, Complainant submitted a timely additional
submission regarding the above Response by the Respondent
on March 29,
2002, and this was received by the Forum on April
1, 2002.
Furthermore, pursuant to Forum Supplemental Rule 7,
Respondent submitted a timely additional submission regarding the above
additional
submission by the Complainant on April 4, 2002, and this was
received by the Forum on the same day.
On April 15, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Moon Sung
Lee as Panelist.
Pursuant to Article 15 of the
Procedural Rules, a decision regarding the dispute must be made within 14 days
of the date of appointing
the panelist and so the decision of this case must in
principle have been made by April 29, 2002. However, Article 15 of the
Procedural
Rules also stipulates that this time period for the decision may be
extended due to special situations. Considering various circumstances,
it was
determined by the Panel that the time period for the decision must be extended
and so the time period of April 18, 2000 for
the decision was extended to May
9, 2002.
The
language of administrative proceedings of this case is Korean, which, pursuant
to Chapter 11 of the ICANN Rules, is the language
of the registration
agreement, and therefore this decision was prepared in Korean.
RELIEF SOUGHT
Complainant
requests that the domain name of this case be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
(1) The Complainant contends that the domain name of this case is
identical to the registered trademark of the Complainant or that
it is similar
enough to cause confusion.
(2) Furthermore, the Complainant contends that the Respondent should be
regarded as not having any rights to or legitimate interest
in the domain name
of this case for the following reasons.
[i.] Before being notified
of the dispute regarding the domain name of this case, the Respondent was not
using the domain name of this
case or a name corresponding to such in order to
provide goods or services, nor has he proven that he was making preparations
for
such use.
[ii.] The Respondent is not commonly known by
the domain name of this case.
[iii.] The Respondent is not using the domain
name of this case for a legitimate non-commercial purpose nor is he using it
fairly.
(3) The Complainant asserts that for the following reasons the domain name of
this case was registered and is being used in bad faith.
[i.] The Respondent acquired the
domain name of this case five days after the Complainant sent a written request
to iContents, the previous
registrant of the domain name of this case, to
suspend use of the domain name and transfer it to the Complainant. Also, the
Respondent
has not provided any explanation whatsoever regarding the circumstances
of the acquisition of the domain name of this case.
[ii.] The Respondent either knew or
could have known about the registered trademark of the Complainant.
[iii] The Respondent is not using
the domain name of this case to establish any Web site and, as the message “Cannot
be Found on My Home
Server” is shown when connecting to the domain name of this
case on the Internet, this has brought about obstacles to the Complainant’s
business.
B.
Respondent
(1) The
Respondent contends that the Complainant’s trademark is a combination of common
nouns and, as the Complainant is not known
widely around the world through this
trademark, the Complainant cannot be recognized as having exclusive rights to
the domain name
of this case.
(2) The Respondent contends that “focus21” is not known
as a trademark for hair products in Korea where the Respondent lives.
(3) The
Respondent contends that the purpose of the Complainant’s Complaint is to seize
the domain name of this case unjustly.
FINDINGS
The registered trademark
holder in the USA of “Focus21” was originally Focus 21 International, Inc. and
the Complainant acquired “Focus21”,
which was registered at the US Patent and
Trademark Office under registration numbers 1639801, 1399155 and 1305646, from
Focus 21
International, Inc. on March 24, 1998. The Complainant filed further
trademarks for “FOCUS 21 FASHION SPLASH”, “FOCUS 21 CHANGES”
and “FOCUS 21
FLEXIBLE SPLASH” to the US Patent and Trademark Office around January 2002.
Also, the Complainant filed with the Canada
Intellectual Property Office for
trademark registration of “FOCUS
21” (application #1107089),
“FOCUS 21 SPLASH” (application #1107076),
“FOCUS 21 CHANGES” (application #1107085)
and “FOCUS 21 FASHION SPLASH” (application #1107087).
The original registrant
of the domain name of this case was iContents, which registered the domain name
of this case on September
17, 2000. In addition to this domain name, iContents
also registered various other domain names that were identical to trademarks
in
which rights were held by third parties and has proposed their sale to the
public.
On February 14,
2002, the Complainant sent a written request to iContents to suspend use of the
domain name of this case and transfer
it to the Complainant. The Respondent then acquired the domain name
of this case on February 19, 2002.
GROUNDS FOR DECISION
Article
4, Paragraph (a) of the ICANN Rules requires that the Complainant prove each of
the following three elements to obtain an
order that a domain name 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 to the domain name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
There is no doubt that <focus21.com> which is the domain
name of this case and “FOCUS21” which is the trademark in which the Complainant
hold rights in the USA are the
same. The Respondent contends that “FOCUS21” cannot
be protected as a trademark because it is the combination of a common noun and
number. However, the combination of a common noun and number can also be
protected and registered as a trademark and so this contention
of the
Respondent is not accepted.
Therefore, the domain name of this case is judged to
satisfy the condition of being identical and/or confusingly similar.
Rights or Legitimate Interests
The Respondent is not known widely to ordinary people
by the domain name of this case and has not proven that he was using the domain
name of this case to provide goods and services before receiving notification
of this dispute regarding the domain name. Also, as
the Respondent is not using
the domain name of this case for a legitimate non-commercial purpose or using
it fairly, the Respondent
is evaluated as not having any rights to or
legitimate interest in the domain name of this case.
Registration and Use in Bad Faith
Article 4, Paragraph (b) of the ICANN Policy provides
four examples of cases where the purpose of registration or use a domain name
can be judged to be in bad faith.
Article
4, Paragraph (b), Item (i) of the ICANN Policy is regarding the acquisition of
a domain name for the purpose of selling it.
Article 4, Paragraph (b), Item
(ii) of the ICANN Policy is regarding the acquisition of a domain name in order
to prevent the Complainant
from using it. Article 4, Paragraph (b), Item (iii)
of the ICANN Policy is regarding interference in the business of a competitor.
Article 4, Paragraph (b), Item (iv) of the ICANN Policy is regarding the use of
a domain name with the purpose of confusing visitors
into thinking that the
online location of the Respondent is a location related to the Complainant.
The Complainant has not been able to prove that the acquisition and use
of the domain name by the Respondent applies to any one of
the above four
cases. Of course, the list in Article 4, Paragraph (b) of the ICANN Policy does
not limit the cases where use in bad
faith is recognized and use in bad faith
can be recognized for other situations too. Therefore, even if the activity of the
Respondent
does not apply directly to the above four cases, it is still
possible to determine that the domain name was acquired and is being
used in bad
faith.
However, in this case, the Panel determines that it has not been proven
that the Respondent acquired and is using the domain name
in bad faith for the
following reasons.
The most important basis for being able to presume use in bad faith by
the Respondent is regarding the timing of the Respondent’s
acquisition of the
domain name of this case. Namely, based on the fact that the Respondent
acquired the domain name of this case
just five days after the request by the
Complainant to iContents to suspend use of the domain name and transfer it, it is
possible
to infer that the Respondent knew or could have known the fact that
the domain name of this case infringed on the rights of the Complainant
at the
time of acquiring the domain name of this case. However, this is purely an
assumption and does not constitute proof. Even
though the Respondent was
transferred the domain name of this case from iContents, as long as the
Respondent did not have a particular
relationship with iContents or did not
receive an explanation of the trademark rights of the Complainant from
iContents at the time,
it cannot be known for sure that the facts of the
infringement of the domain name on the rights of the Complainant were known.
That
is because there is adequate possibility that, after iContents received
the request for transfer from the Complainant, iContents
did not inform the
Respondent about the existence of the Complainant’s rights while transferring
the domain name of this case. The
Complainant has not proven its position
regarding this at all.
If the Complainant was widely known globally or in Korea where the
Respondent lives through the trademark “FOCUS21” or had an existence
that could
be easily searched on the Internet, there would be a high possibility that the
Respondent would have known about the rights
of the Complainant at the time of
acquiring the domain name of this case. However, the Complainant has not
provided any proof of
this point either. The fact of the Complainant simply
holding the “FOCUS21” trademark in the US and Canada does not constitute proof
that the trademark was commonly known. Also, the Complainant is only contending
that it is selling products through the trademark
“FOCUS21” and is not
providing any contention or proof of the specific facts about what the product
is known for, such as its range,
by whom it is used and how much has been sold.
In addition, registration of the trademark by the Complainant in Canada occurred
as
recently as June 2001. Therefore, it is difficult to say that the Respondent
knew or could have known about the rights of the Complainant
at the time of
acquiring the domain name of this case.
Regarding this, the Complainant contends that trademarks protected by
UDRP are not strictly limited to trademarks that are commonly
known. The Panel
also agrees with this contention of the Complainant. However, in cases such as
this where there is not enough basis
for recognizing use in bad faith by the
Respondent, the common knowledge of the trademark held by the Complainant can be
applied
as the decisive factor in recognizing bad faith by the Respondent. First
Conference Ltd. v. Ecorp.com, D2000-1797 (WIPO Mar. 23, 2001). In addition,
the domain name of this case combines the ordinary nouns of “FOCUS” with “21”
which
is associated with the 21st century and is something that
anyone could consider using. Therefore, as long as it is not recognized that the
trademark of the Complainant
is commonly known and that there is a high
possibility that the Respondent knew of its existence, it cannot be concluded
that the
choice of the domain name of this case, which is a combination of
common nouns, by the Respondent and its acquisition and use is
use in bad
faith. Rio Globo S.A. v. The Paradigm Corporation, 2000-1704 (WIPO Jan.
31, 2001). The Complainant has not been able to present any evidence that the
Respondent could have known about
the trademark rights of the Complainant. In
fact, the Complainant has not even been able to prove that the trademark of the
Complainant
was widely known within the USA.
While contending that the fact that the Respondent obtained the domain
name of this case five days after the request for suspension
of use and
transfer of the domain name reached iContents is proof of bad faith by the
Respondent, the Complainant mentions the case
of Marriott v. John Marriot,
FA 94737 (Nat. Arb. Forum June 15, 2000). However, the above case has nothing
to do with the contention of the Respondent. And,
in WIPO precedent, the
continuous change of registrant of a domain name can be said to be proof of bad
faith Banco Mercantil del Norte, S, A, v. Servecios de Communicacion En Linea,
2000-1215 (WIPO Nov. 23, 2000), but this cannot be uniformly applied in cases
such as this where the change of registrant of the
domain name only occurred
one time. Furthermore, in this case, as mentioned above, it is difficult to say
that this situation was
one where the Respondent knew or could have known about
the trademark. Therefore, it cannot be concluded that the Respondent acted
in
bad faith based only on a situation where there is simply suspicion regarding
the timing of the domain name transfer.
The Complainant asserts that the Respondent’s failure to explain the
circumstancs of the acquisition of the domain name of this case
constitutes
proof that the Respondent acted in bad faith. However, bad faith by the
Respondent is something that must be proven by
the Complainant and the
Respondent does not have to prove that he did not act in bad faith. However,
the fact that the Respondent
acquired the domain name of this case while
knowing that it infringed the rights of the Complainant is something that the
Complainant
must prove and is not something that the Respondent has a burden to
disprove. Therefore, the fact that the Respondent acquired the
domain name of
this case while knowing that it infringed the rights of the Complainant must be
proven by the Complainant. However,
the Complainant has not given any
particular proof that its trademark could have been known to the Respondent. In
this situation,
it is thought unreasonable to put the burden of proof on the
Respondent.
Also, the Complainant contends that the Responded acted in bad faith
because he did not establish a web site using the domain name
of this case. Of
course, there are cases where bad faith can be presumed based on the fact that
no web site was established through
the domain name. However, it is not
possible to recognize bad faith in this case based only on the fact that no web
site was established.
Such would only be possible by appropriately considering
it together with other circumstances. However, in this case, there are no
other
special situations to consider together with the fact that the Respondent did
not establish a web site in order to presume
bad faith on the part of the
Respondent. Furthermore, the transfer of the domain name of this case by the
Respondent occurred on
February 19, 2002 and so it is difficult to say that
there was enough time to establish such web site before this Complaint.
By putting these points together, this Panel determines that the
Complainant has failed to prove that the Respondent obtained and
is using the
domain name of this case in bad faith.
On the other hand, the Respondent contends that the Complaint by the
Complainant is an attempt to seize the domain name unjustly;
but this Panel
determines that there is no basis for this contention by the Respondent.
DECISION
Therefore, pursuant to all the above reasons, it is
determined that the domain name of this case, <focus21.com>,
should not be transferred to the Complainant.
Moon Sung
Lee, Panelist
Dated: May 8, 2002
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