DECISION

 

Verisoft Bilgi Islem Ticaret ve Sanayi Limited Sirketi v. Kim & Lee

Claim Number: FA0111000101790

 

PARTIES

Complainant is Verisoft Bilgi Islem Ticaret ve Sanayi Limited Sirketi, Sisli, Istanbul, TURKEY (“Complainant”), of Verisoft Bilgi Islem Ticaret ve Sanayi Limited Sirketi.  Respondent is Kim & Lee, ChoGaSamGan, KOREA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

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

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 5, 2001; the Forum received a hard copy of the Complaint on November 21, 2001.

 

On November 5, 2001, Stargate Communications Inc. confirmed by e-mail to the Forum that the domain name <verisoft.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 November 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 2001 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@verisoft.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 December 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Respondent ‘s <verisoft.com> domain name is identical to Complainant’s VERISOFT mark.

 

Respondent does not have any rights or legitimate interests in the domain name at issue.

 

Respondent regsitered and used the domain name at issue in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Complainant registered the VERISOFT trademark in Turkey, and has been using the mark in connection with its electronic payment systems, credit and debit cards, as well as its ATM and POS software and hardware products since 1984.

 

Additionally, Complainant has established a presence on the Internet with its <verisoft.net>, <verisoft.org>, <verisoft.net.tr>, and <verisoft.com.tr> domain names.

 

Respondent registered the domain name at issue on April 19, 2001.  Respondent has not developed the website.  Respondent’s web page explains that its website is “delayed because of financial difficulty”.  

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.

 

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;

(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 rights to the VERISOFT mark due to its registration of the VERISOFT mark in Turkey as well as its use of the mark since 1984.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

           

Respondent’s domain name is identical to Complainant’s mark because the top-level domain name “.com” does not sufficiently distinguish Respondent’s domain name from Complainant’s mark to defeat a claim that they are identical.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); 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).

           

Finally, Respondent’s domain name which incorporates Complainant’s mark in its entirety is confusingly similar to Complainant’s mark because it falsely implies an association between Respondent’s website and Complainant’s mark.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).

 

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent’s failure to provide a Response indicates that Respondent has no rights or legitimate interests.  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).

 

Because Respondent’s unauthorized use of Complainant’s registered mark is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), Respondent lacks rights and legitimate interests in the domain name.  See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant is that the Respondent lacks rights or legitimate interests in the domain name).

           

Respondent’s diversion of Complainant’s customer’s to its own undeveloped website indicates Respondent has no rights or legitimate interests because diverting customers and holding a passive website is not a bona fide offering of goods pursuant to Policy 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

 

Respondent is not commonly known by the domain name and as a result is not found to have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also 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).

 

Respondent’s link to another page displaying a FOR SALE sign indicates its intention to sell the domain name.  This does not constitute a noncommercial or fair use and therefore, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

 

           The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s failure to use the domain name for anything other than to offer it for sale constitutes bad faith use pursuant to Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

 

Moreover, Respondent’s passive holding of the domain name is evidence of bad faith use and registration.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith).

 

Finally, Respondent has disrupted Complainant’s business by advertising the message “delayed because of financial difficulties” on its website.  Confused Internet users and investors think that Respondent and Complainant are affiliated and presume that Complainant is having financial difficulties.  As a result, the website has the effect of turning Internet customers away from Complainant because they believe Complainant is having financial difficulties and the domain name is likely turning them to competitors of Complainant.  This is bad faith use pursuant to Policy 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from the Complainant to a competitor’s website in violation of Policy 4(b)(iii)).

 

           The Panel has found 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 shall be hereby granted.  Accordingly, it is Ordered that the domain name <verisoft.com>  be hereby transferred from Respondent to Complainant.

                                                                       

 

John J. Upchurch, Panelist

 

Dated:  January 8, 2002