DECISION

Tercent Inc. v. Lee Yi

Claim Number:  FA0301000139720

PARTIES

Complainant is Tercent Inc., Cambridge, MA, USA(“Complainant”) represented by John Neumann, of Tercent Inc. Respondent is Lee Yi, Yung Ho Tw 234, TAIWAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tercent.com>, registered with Stargate Communications, Inc.

PANEL

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

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 3, 2003; the Forum received a hard copy of the Complaint on January 6, 2003.

On January 6, 2003, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <tercent.com> is registered with Stargate Communications, Inc. and that Respondent is the current registrant of the name. Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, 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 January 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2003 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@tercent.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.

On February 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <tercent.com> domain name is identical to Complainant’s TERCENT mark.

2. Respondent does not have any rights or legitimate interests in the <tercent.com> domain name.

3. Respondent registered and used the <tercent.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Tercent Inc., holds the registered trademark TERCENT (U.S. Reg. No. 2,634,442). The mark was registered on October 15, 2002 with the Principal Register of the United States Patent and Trademark Office (“USPTO”) and was first used in commerce by Complainant in 1999. Complainant uses its mark in connection with, inter alia, its market research, web hosting, and computer programing services. Complainant uses the mark both domestically and internationally, with customers in nations such as the United States, New Zealand, Hong Kong, Singapore, and elsewhere.

In addition to its registered mark, Complainant registered the <tercent.com> on December 2, 1999 with NameIT (now AIT Domains). It used the domain name for communication with customers, vendors, investors, and the general public. Ongoing advertising campaigns, printed materials, and other communciations still in circulation refer persons seeking Complainant or its product to the <tercent.com> domain name.

On January 1, 2003, Complainant’s registration of the <tercent.com> domain name expired. Respondent, Lee Yi, subsequently registered the domain name on January 2, 2003. Respondent uses the disputed domain name to host a webpage featuring an advertisement for an online casino, and a series of links to various other websites.

Prior to this dispute, Respondent has been involved in several situations where an actively used domain name registration that had lapsed was quickly acquired by Respondent, and used to host a pay-per-click website with pop-up advertisements and a notification that the domain name was for sale. The <blueabuse.com>, <hoopla.com>, and <reelriverfishing.com> domain name registrations each lapsed during the summer of 2002 and each domain name was being actively used and developed at the time that the domain name registration expired. The <blueabuse.com> and<reelriverfishing.com> were registered by a person or entity going by the same name as Respondent, and all three domain names currently host the same general webpage, a webpage that is similar to the page that is now displayed at the <tercent.com> domain name. The Panel finds that the opportunistic Registrant in each of these cases is Respondent in this dispute.

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 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 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 rights in the TERCENT mark through registration with the Principal Register of the USPTO, as well as through use of the mark in commerce.

Respondent’s <tercent.com> domain name is identical to Complainant’s TERCENT mark. The only difference between the domain name and Complainant’s registered mark is the addition of the top-level domain “.com,” and this difference is inconsequential for purposes of analysis under Policy ¶ 4(a)(i). 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that the <tercent.com> domain name is identical to Complainant’s TERCENT mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

Furthermore, the Panel views Respondent’s lack of a response as evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

In these circumstances, the Panel is unwilling to find that Respondent’s use of the disputed domain name, which features nothing other than a series of hyperlinks and a banner advertisement, equates to a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name as stated in Policy ¶ 4(c)(iii). As such, neither of these enumerated examples demonstrating rights or legitimate interests in a domain name apply to Respondent. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Likewise, nothing in Respondent’s WHOIS information implies that Respondent is “commonly known by” the disputed domain name. In light of the nature of Respondent’s acquisition of the domain name registration, the Panel concludes that Policy ¶ 4(c)(ii), the Policy’s third enumerated “safe harbor,” is also inapplicable to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <tercent.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

On three previous occasions, Respondent has opportunistically registered domain name registrations from Registrants who had previously hosted active websites at those domain names. Each of these domain names had developed considerable popularity and generated considerable goodwill by the time the domain name registrations expired and were quickly registered by Respondent. Through this pattern of preventing Registrants from reflecting their previously utilized marks online, Respondent exposed itself to attack under Policy ¶ 4(b)(ii), and its activity in this dispute equates to bad faith use and registration of the <tercent.com> domain name pursuant to that provision. See Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where the Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

The Panel need not look only at the provisions of Policy paragraph 4(b) in determining whether Respondent’s behavior evidences bad faith use and registration of the domain name. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); 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”).

Prior to this dispute, Complainant had a fully functional website located at the disputed domain name, a website that reflected its registered trademark and that Complainant used to promote its bona fide business. Granted, that domain name registration was permitted to expire due to inadvertence by Complainant. However, this does not mean that any Registrant is permitted to swoop in and acquire the registration. In light of the Panel’s finding that Respondent has no rights or legitimate interests in the disputed domain name, the Panel finds that Respondent’s registration and use of the <tercent.com> domain name, with full knowledge of Complainant’s previous rights in domain name, evidences bad faith. See Savage Sys., Inc. v. Lorna Kang, FA 102480 (Nat. Arb. Forum Dec. 31, 2001) (inferring that Respondent had knowledge that the <savagearchery.com> domain name previously belonged to Complainant when Respondent registered said domain name the very same day Complainant’s registration lapsed); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name).

The Panel thus finds that Respondent registered and used the <tercent.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

James A. Crary, Panelist

Dated:  February 10, 2003

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