RF Micro Devices, Inc. v. eNIC.net
Claim Number: FA0201000103883
PARTIES
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.
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 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 postmaster@rfmicrodevices.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.
PARTIES’ CONTENTIONS
A. 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.
B.
Respondent
No
Response was received.
FINDINGS
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.
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 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.
DECISION
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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