Sojag, Inc. v. Hong young jin
Claim Number: FA2010001918082
Complainant is Sojag, Inc. (“Complainant”), represented by Fatima Lahnin, Connecticut, USA. Respondent is Hong young jin (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sojag.com>, registered with Inames Co., Ltd..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2020; the Forum received payment on October 23, 2020. The Complaint was received in both Korean and English.
On October 27, 2020, Inames Co., Ltd. confirmed by e-mail to the Forum that the <sojag.com> domain name is registered with Inames Co., Ltd. and that Respondent is the current registrant of the name. Inames Co., Ltd. has verified that Respondent is bound by the Inames Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2020, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of November 23, 2020, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@sojag.com. Also on November 2, 2020, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 23, 2020.
On November 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Preliminary Issue: Language of the Proceedings
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Korean. However, Complainant has filed its Complaint in both English and Korean and Respondent’s Response to the Complaint was rendered in English. Therefore, and inasmuch as it is apparent that Respondent is proficient in English and has not expressed a preference as to the appropriate language of the proceeding, in the interest of economy and efficiency, this proceeding will be conducted in English. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a UDRP proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since 1993, Complainant, operating under the SOJAG mark, has developed and distributed sun shelters, solariums and outdoor furniture, which have been marketed throughout North America.
From 1993 to the present, Complainant has prominently and extensively promoted and advertised the SOJAG mark.
By virtue of these efforts, the SOJAG mark has become well-recognized by consumers as designating Complainant as the source of the outdoor furniture it provides to the marketplace.
Complainant holds a registration for the SOJAG trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,216,583, registered June 06, 2017.
Complainant also holds a registration for the SOJAG trademark, which is on file with the Canadian Intellectual Property Office (“CIPO”) as Registry No. TMA957726, registered December 12, 2012, with its first use in commerce reported as occurring in 2006.
Respondent’s <sojag.com> domain name is both substantively identical and confusingly similar to Complainant’s SOJAG mark.
Respondent has not been commonly known by the domain name.
Respondent has not been authorized by Complainant to use the SOJAG mark.
The domain name is being offered for sale by Respondent at prices ranging from $9,900 to $69,800, which is far in excess of Respondent’s out-of-pocket expenses to register and maintain it.
Respondent is not using the domain name in connection with a bona fide offering of goods or services.
Respondent employs the domain name to divert to a website controlled by Respondent Internet users looking for Complainant’s official website.
Respondent lacks both rights to and legitimate interests in the <sojag.com> domain name.
Respondent has been the subject several adverse UDRP rulings in which it was found to have registered and used domain names in bad faith.
Respondent registered and uses the <sojag.com> domain name in bad faith.
B. Respondent
The <sojag.com> domain name was first registered by Respondent on July 12, 2008.
Respondent was unaware that Complainant existed when Respondent registered the <sojag.com> domain name because this occurred many years before Complainant registered the SOJAG trademark in Canada in 2016, and in the United States in 2017.
Respondent could not have known of Complainant or its SOJAG mark prior to Respondent’s registration of the domain name because, while that mark may be well known in North America, it is not well known globally, or, in particular, in Respondent’s home country, South Korea.
The <sojag.com> domain name has been in operation for about ten years.
There are currently 37 other domain names featuring the term SOJAG.
Respondent also owns the domain names <sojag.net.org> and <sojag.co.kr>.
In South Korea, “sojag” is a common expression which has multiple meanings, and can be rendered in English as “cauterization,” or “tenant” or “miniaturization.”
Respondent has never tried to sell the <sojag.com> domain name to Complainant and has never tried to trade on the domain name.
Complainant has never attempted to advance any claim against or objection to the <sojag.com> domain name prior to the registration of the SOJAG trademark.
(1) the domain name registered by Respondent is both substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the SOJAG trademark which would normally suffice to establish Complainant’s standing to pursue its Complaint against Respondent under the terms of Policy ¶ 4(a)(i) by reason of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property office (“CIPO”). See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark]… demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
However, in the particular circumstances of this case, there is a difficulty with Complainant’s mark registration on the point of time priority. This is because the record before us reflects that, while Respondent first registered its <sojag.com> domain name on July 12, 2008, Complainant’s mark registration with the USPTO became effective much later, as of June 6, 2017, and Complainant’s registration of the same mark with the CIPO likewise became effective much later on December 12, 2012. On these facts, Complainant’s case for success in this forum lies in peril.
But registration of a mark with a competent trademark authority is not the only means by which Complainant may satisfy the requirement of Policy ¶ 4(a)(i) that it show that it has standing to pursue its Complaint under the Policy. This is because rights in a mark secured under the common law will also suffice for this purpose. See, for example, loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018):
Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the … marks [for purposes of demonstrating standing under Policy¶ 4(a)(i)].
Apparently realizing this, Complainant asserts in its Complaint that:
1. since 1993, Complainant, operating under the SOJAG mark, has developed and distributed sun shelters, solariums and outdoor furniture, which have been marketed throughout North America;
2. from 1993 to the present, Complainant has prominently and extensively promoted and advertised the SOJAG mark; and
3. by virtue of these efforts, the SOJAG mark has become well-recognized by consumers as designating Complainant as the source of the outdoor furniture it provides to the marketplace.
Respondent does not contest these assertions. We therefore conclude that Complainant has made a satisfactory showing of “secondary meaning” in its SOJAG mark, i.e.: a distinctive connection, in the public's mind, between a mark tied to a product and a specific manufacturer or marketer that renders the mark protectable under law. It follows that Complainant has adequately shown that it has standing under Policy ¶ 4(a)(i), dating from 1993, to pursue its Complaint in this proceeding.
Respondent resists this conclusion by declaring that, while the SOJAG mark may be well known in North America, it is not well known globally or in Respondent’s home country, South Korea. This objection is of no consequence to our analysis. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017), sec. 1.3:
[T]he fact that secondary meaning may exist only in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
The further significance of time and its effects on the comparative rights of the parties will be taken up in the discussion of Policy ¶ 4(a)(ii) [Rights or Legitimate Interests] below. For now, we turn to the central question posed by Policy ¶ 4(a)(i), i.e.: the point of impermissible identity or confusing similarity. In so doing, we conclude from a review of the record that Respondent’s <sojag.com> domain name is substantively identical and confusingly similar to Complainant’s SOJAG trademark. The domain name incorporates the mark in its entirety, merely adding the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017):
When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.
And, if it is substantively identical, it is, perforce, confusingly similar.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <sojag.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. We will therefore examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not affiliated with Complainant, that Respondent has not been commonly known by the <sojag.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SOJAG mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Hong young jin,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark).
We next observe that Complainant asserts that the <sojag.com> domain name resolves to a website the sole function of which is to offer domain name for sale at a price greatly in excess of its costs to obtain and maintain the domain name. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Reese v. Morgan, FA 917029 (Forum April 5, 2007) (finding that a UDRP respondent’s efforts to sell a contested domain name for more than its out-of-pocket costs to obtain and maintain it provided evidence that that respondent had no rights to or legitimate interests in the domain name).
Finally, under this head of the Policy, we take note of Respondent’s contention that it was unaware of Complainant or its SOJAG mark prior to Respondent’s registration of the domain name because, while that mark may be well known in North America, it is not well known elsewhere, and, in particular, in Respondent’s home country, South Korea. When we consider that Respondent does not contest Complainant’s allegation that the SOJAG mark has been used in commerce in association with its products from as early as 2006, together with Respondent’s assertion that it owns the domain name <sojag.co.kr>, this contention does not ring true. It is well known that the domain extension “.co” is frequently employed by businesses to stand for “company,” while the top level domain “.kr” is the country code for South Korea. Thus Respondent has plainly demonstrated that it has targeted the company identified with the SOJAG mark by way of its ties to Korea while at the same time protesting both that it did not know of Complainant or its mark and that the mark has no currency in Korea.
The Panel therefore finds that Complainant has adequately satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent knew of Complainant and its SOJAG mark when it registered the challenged <sojag.com> domain name. This illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a complainant’s mark at the time a UDRP respondent registered a confusingly similar domain name, and therefore its bad faith in registering it] through the name used for the domain and the use made of it.
It also appears from the evidence that Respondent has been a party respondent in several other UDRP proceedings in which it was found to have registered and used domain names in bad faith. See, for example, Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum September 1, 2016); Pearson Education Limited and Pearson plc v. Hong young jin, FA 1704957 (Forum January 9, 2017); Patties Foods Pty Ltd v. Hong Young Jin, D2019-0713 (WIPO May, 11, 2019); Forest Laboratories UK Limited v. Hong young jin, WIPO Case No. D2016-2023 (WIPO December 3, 2016); and ShopInvest NV v. Hong Young Jin, D2015-1224 (WIPO September 15, 2015). This pattern stands as proof of Respondent’s bad faith in both registering and using the <sojag.com> domain name. See Policy ¶ 4(b)(ii) and the discussion above regarding Respondent’s registration of the domain name <sojag.co.kr>, which registration prompts the question: Why did Respondent register that domain name, if not to disadvantage Complainant, as by inducing Complainant to buy one or more domain names from Respondent at exorbitant prices?
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <sojag.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 2, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page