RF Micro Devices, Inc. v. eNIC.net
Claim Number: FA0201000103883
Complainant is RF Micro Devices, Inc., Greensboro, NC (“Complainant”) represented by Benjamin Withrow of Withrow & Terranova, PLLC. Respondent is eNIC.net, Kwangju, South Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rfmicrodevices.com>, registered with DomainDiscover.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 17, 2002; the Forum received a hard copy of the Complaint on January 17, 2002.
On January 18, 2002, DomainDiscover confirmed by e-mail to the Forum that the domain name <rfmicrodevices.com> is registered with DomainDiscover and that Respondent is the current registrant of the name. DomainDiscover has verified that Respondent is bound by the DomainDiscover 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 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 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 email@example.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 18, 2002, 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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
1. The domain name in dispute <rfmicrodevices.com> is identical to Complaintant’s mark RF MICRO DEVICES. The only difference between the mark and disputed domain name is the spaces between the words have been deleted in the domain name.
2. Apparently offering to sell the disputed domain name and currently allowing advertising banners on the website in connection with the domain name is not a bona fide offering of goods or services and is not a legitimate or fair use. Respondent has never been known by the domain name, therefore, Respondent does not a have a legitimate interest in the domain name <rfmicrodevices.com>.
3. By offering to sell the disputed domain name on its website, Respondent has registered the domain name to draw potential customers, including Complainant, to sell the domain name for an amount that exceeds out-of-pocket expenses and thus Respondent has registered and has used <rfmicrodevices.com> in bad faith.
No Response was received.
Complainant is a well-established company in the field of integrated circuit design for the wireless telecommunications industry. Complainant has three registrations of the trademark RF MICRO DEVICES with the United States Patent and Trademark Office. The first mark was registered on September 12, 1995, Registration Number 1,917,661. Complainant not only sells its product in the United States, but also sells its product internationally and is in the process of securing trademark rights in many other countries including South Korea, home country of Respondent.
Respondent registered disputed domain name on March 5, 2001. After using the domain name (in Korean) in connection with what was believed to be pornography, Respondent now uses the domain name (in English) in connection with a website that displays approximately thirty banners that advertise various products from flowers to gambling to escort services and sexual stimulants and aids. The initial banner offers the user a chance to purchase the domain name. When the user clicks on the link “Make an Offer” for the domain name, an e-mail is created to send to the administrative contact for Respondent.
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 in RF MICRO DEVICES through federal registration and continuous use. Further the domain name <rfmicrodevices.com> is identical with Complainant’s mark. The only difference between the mark and domain name is that the domain name does not incorporate the spaces which are included in the mark. Since it is not possible to incorporate spaces between the words of Complainant’s mark in the domain name, the Panel finds that the mark and domain name are identical. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding that the domain name <sydneyoperahouse.net> is essentially identical to the complainant’s famous trademark SYDNEY OPERA HOUSE); see also Martin v. MDD, Inc, AF-0310 (eResolution Oct. 4, 2000) (finding that the domain name <blueridgeknife.com> is identical to Complainant’s registered marks BLUE RIDGE KNIVES).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its legal rights in RF MICRO DEVICES. Respondent has failed to file a Response in the matter. It is well established that when Respondent fails to file a Response, the Panel will presume that Respondent 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 Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent is currently using <rfmicrodevices.com> with the attempt to sell the domain name and is not a bona fide offering of goods and services and therefore, Respondent has failed to satisfy Policy ¶ 4(c)(i). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
There is no evidence provided that Respondent is now commonly known or has been commonly known as <rfmicrodevices.com>, therefore, Respondent fails to satisfy 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 a domain name when Respondent is not known by the mark).
The first advertising banner encountered by a user is an offer by Respondent to sell the disputed domain. This activity is not evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name and Respondent has therefore, not satisfied 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
In connection with <rfmicrodevices.com>, Respondent has a general offer on its website for anyone to purchase the domain name in dispute. Such a general offer is evidence that Respondent has registered <rfmicrodevices.com> with the intent of transeferring the disputed domain name registration to Complainant for consideration in excess of its out-of-pocket costs. Thus, Respondent’s registration is in bad faith as outlined in Policy ¶ 4(b)(i). See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
By using the a domain name that is identical to Complainant’s mark in connection with banner advertisements that include offers of sexually related goods and services, Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between Complainant’s mark as to the source or sponsorship of the disputed domain name. Thus, Respondent’s use is in bad faith pursuant to Policy ¶ 4(b)(iv). See 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <rfmicrodevices.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 25, 2002
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