DECISION

 

Richard Ravid, Inc. v. James Kang

Claim Number: FA0202000104997

 

PARTIES

The Complainant is Richard Ravid, Inc. of Normandy Court, Royal Oak, MI, USA (hereinafter, “Complainant”) and the Respondent is James Kang of Suji-Eup, Joogjeon-Ri, Yongin-Shi, Kyunggi-Do, Korea (hereinafter, “Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <focus21.com>, registered with Hangang Systems, Inc.

 

PANELIST

 

The following Panel has sworn that it is independent and has no connection whatsoever to the parties to the administrative proceedings of this case and that it will perform its work independently and impartially.

 

Panelist: Moon Sung Lee

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (hereinafter, “the Forum”) electronically on February 25, 2002; the Forum received a hard copy of the Complaint on February 25, 2002.

 

On February 26, 2002, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name <focus21.com> is registered with Hangang Systems, Inc. and that the Respondent is the current registrant of the name. Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, 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.

 

On March 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 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@focus21.com by e-mail.

 

A timely Response by the Respondent was received and determined to be complete on March 26, 2002.

 

Pursuant to Forum Supplemental Rule 7, Complainant submitted a timely additional submission regarding the above Response by the Respondent on March 29, 2002, and this was received by the Forum on April 1, 2002.

 

Furthermore, pursuant to Forum Supplemental Rule 7, Respondent submitted a timely additional submission regarding the above additional submission by the Complainant on April 4, 2002, and this was received by the Forum on the same day.

 

On April 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Moon Sung Lee as Panelist.

 

Pursuant to Article 15 of the Procedural Rules, a decision regarding the dispute must be made within 14 days of the date of appointing the panelist and so the decision of this case must in principle have been made by April 29, 2002. However, Article 15 of the Procedural Rules also stipulates that this time period for the decision may be extended due to special situations. Considering various circumstances, it was determined by the Panel that the time period for the decision must be extended and so the time period of April 18, 2000 for the decision was extended to May 9, 2002.

 

The language of administrative proceedings of this case is Korean, which, pursuant to Chapter 11 of the ICANN Rules, is the language of the registration agreement, and therefore this decision was prepared in Korean.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

 

A.  Complainant

 

(1) The Complainant contends that the domain name of this case is identical to the registered trademark of the Complainant or that it is similar enough to cause confusion.

 

(2) Furthermore, the Complainant contends that the Respondent should be regarded as not having any rights to or legitimate interest in the domain name of this case for the following reasons.

 

[i.]       Before being notified of the dispute regarding the domain name of this case, the Respondent was not using the domain name of this case or a name corresponding to such in order to provide goods or services, nor has he proven that he was making preparations for such use.

 

            [ii.]       The Respondent is not commonly known by the domain name of this case.

 

            [iii.]      The Respondent is not using the domain name of this case for a legitimate non-commercial purpose nor is he using it fairly.

 

(3)    The Complainant asserts that for the following reasons the domain name of this case was registered and is being used in bad faith.

 

[i.] The Respondent acquired the domain name of this case five days after the Complainant sent a written request to iContents, the previous registrant of the domain name of this case, to suspend use of the domain name and transfer it to the Complainant. Also, the Respondent has not provided any explanation whatsoever regarding the circumstances of the acquisition of the domain name of this case.

 

[ii.] The Respondent either knew or could have known about the registered trademark of the Complainant.

 

[iii] The Respondent is not using the domain name of this case to establish any Web site and, as the message “Cannot be Found on My Home Server” is shown when connecting to the domain name of this case on the Internet, this has brought about obstacles to the Complainant’s business.

 

B.   Respondent

 

 (1) The Respondent contends that the Complainant’s trademark is a combination of common nouns and, as the Complainant is not known widely around the world through this trademark, the Complainant cannot be recognized as having exclusive rights to the domain name of this case.

 

(2) The Respondent contends that “focus21” is not known as a trademark for hair products in Korea where the Respondent lives.

 

            (3) The Respondent contends that the purpose of the Complainant’s Complaint is to seize the domain name of this case unjustly.

 

FINDINGS

The registered trademark holder in the USA of “Focus21” was originally Focus 21 International, Inc. and the Complainant acquired “Focus21”, which was registered at the US Patent and Trademark Office under registration numbers 1639801, 1399155 and 1305646, from Focus 21 International, Inc. on March 24, 1998. The Complainant filed further trademarks for “FOCUS 21 FASHION SPLASH”, “FOCUS 21 CHANGES” and “FOCUS 21 FLEXIBLE SPLASH” to the US Patent and Trademark Office around January 2002. Also, the Complainant filed with the Canada Intellectual Property Office for trademark registration of “FOCUS 21” (application #1107089), “FOCUS 21 SPLASH” (application #1107076), “FOCUS 21 CHANGES” (application #1107085) and “FOCUS 21 FASHION SPLASH” (application #1107087).

 

The original registrant of the domain name of this case was iContents, which registered the domain name of this case on September 17, 2000. In addition to this domain name, iContents also registered various other domain names that were identical to trademarks in which rights were held by third parties and has proposed their sale to the public.

 

On February 14, 2002, the Complainant sent a written request to iContents to suspend use of the domain name of this case and transfer it to the Complainant.  The Respondent then acquired the domain name of this case on February 19, 2002.

 

GROUNDS FOR DECISION

 

Article 4, Paragraph (a) of the ICANN Rules requires that the Complainant prove each of the following three elements to obtain an order that a domain name 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 to the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

There is no doubt that <focus21.com> which is the domain name of this case and “FOCUS21” which is the trademark in which the Complainant hold rights in the USA are the same. The Respondent contends that “FOCUS21” cannot be protected as a trademark because it is the combination of a common noun and number. However, the combination of a common noun and number can also be protected and registered as a trademark and so this contention of the Respondent is not accepted.

 

Therefore, the domain name of this case is judged to satisfy the condition of being identical and/or confusingly similar.

 

Rights or Legitimate Interests

 

The Respondent is not known widely to ordinary people by the domain name of this case and has not proven that he was using the domain name of this case to provide goods and services before receiving notification of this dispute regarding the domain name. Also, as the Respondent is not using the domain name of this case for a legitimate non-commercial purpose or using it fairly, the Respondent is evaluated as not having any rights to or legitimate interest in the domain name of this case.

 

Registration and Use in Bad Faith

Article 4, Paragraph (b) of the ICANN Policy provides four examples of cases where the purpose of registration or use a domain name can be judged to be in bad faith.

 

Article 4, Paragraph (b), Item (i) of the ICANN Policy is regarding the acquisition of a domain name for the purpose of selling it. Article 4, Paragraph (b), Item (ii) of the ICANN Policy is regarding the acquisition of a domain name in order to prevent the Complainant from using it. Article 4, Paragraph (b), Item (iii) of the ICANN Policy is regarding interference in the business of a competitor. Article 4, Paragraph (b), Item (iv) of the ICANN Policy is regarding the use of a domain name with the purpose of confusing visitors into thinking that the online location of the Respondent is a location related to the Complainant.

 

The Complainant has not been able to prove that the acquisition and use of the domain name by the Respondent applies to any one of the above four cases. Of course, the list in Article 4, Paragraph (b) of the ICANN Policy does not limit the cases where use in bad faith is recognized and use in bad faith can be recognized for other situations too. Therefore, even if the activity of the Respondent does not apply directly to the above four cases, it is still possible to determine that the domain name was acquired and is being used in bad faith.

 

However, in this case, the Panel determines that it has not been proven that the Respondent acquired and is using the domain name in bad faith for the following reasons.

 

The most important basis for being able to presume use in bad faith by the Respondent is regarding the timing of the Respondent’s acquisition of the domain name of this case. Namely, based on the fact that the Respondent acquired the domain name of this case just five days after the request by the Complainant to iContents to suspend use of the domain name and transfer it, it is possible to infer that the Respondent knew or could have known the fact that the domain name of this case infringed on the rights of the Complainant at the time of acquiring the domain name of this case. However, this is purely an assumption and does not constitute proof. Even though the Respondent was transferred the domain name of this case from iContents, as long as the Respondent did not have a particular relationship with iContents or did not receive an explanation of the trademark rights of the Complainant from iContents at the time, it cannot be known for sure that the facts of the infringement of the domain name on the rights of the Complainant were known. That is because there is adequate possibility that, after iContents received the request for transfer from the Complainant, iContents did not inform the Respondent about the existence of the Complainant’s rights while transferring the domain name of this case. The Complainant has not proven its position regarding this at all.

 

If the Complainant was widely known globally or in Korea where the Respondent lives through the trademark “FOCUS21” or had an existence that could be easily searched on the Internet, there would be a high possibility that the Respondent would have known about the rights of the Complainant at the time of acquiring the domain name of this case. However, the Complainant has not provided any proof of this point either. The fact of the Complainant simply holding the “FOCUS21” trademark in the US and Canada does not constitute proof that the trademark was commonly known. Also, the Complainant is only contending that it is selling products through the trademark “FOCUS21” and is not providing any contention or proof of the specific facts about what the product is known for, such as its range, by whom it is used and how much has been sold. In addition, registration of the trademark by the Complainant in Canada occurred as recently as June 2001. Therefore, it is difficult to say that the Respondent knew or could have known about the rights of the Complainant at the time of acquiring the domain name of this case.

 

Regarding this, the Complainant contends that trademarks protected by UDRP are not strictly limited to trademarks that are commonly known. The Panel also agrees with this contention of the Complainant. However, in cases such as this where there is not enough basis for recognizing use in bad faith by the Respondent, the common knowledge of the trademark held by the Complainant can be applied as the decisive factor in recognizing bad faith by the Respondent. First Conference Ltd. v. Ecorp.com, D2000-1797 (WIPO Mar. 23, 2001). In addition, the domain name of this case combines the ordinary nouns of “FOCUS” with “21” which is associated with the 21^st century and is something that anyone could consider using. Therefore, as long as it is not recognized that the trademark of the Complainant is commonly known and that there is a high possibility that the Respondent knew of its existence, it cannot be concluded that the choice of the domain name of this case, which is a combination of common nouns, by the Respondent and its acquisition and use is use in bad faith. Rio Globo S.A. v. The Paradigm Corporation, 2000-1704 (WIPO Jan. 31, 2001). The Complainant has not been able to present any evidence that the Respondent could have known about the trademark rights of the Complainant. In fact, the Complainant has not even been able to prove that the trademark of the Complainant was widely known within the USA.

 

While contending that the fact that the Respondent obtained the domain name of this case five days after the request for suspension of use and transfer of the domain name reached iContents is proof of bad faith by the Respondent, the Complainant mentions the case of Marriott v. John Marriot, FA 94737 (Nat. Arb. Forum June 15, 2000). However, the above case has nothing to do with the contention of the Respondent. And, in WIPO precedent, the continuous change of registrant of a domain name can be said to be proof of bad faith Banco Mercantil del Norte, S, A, v. Servecios de Communicacion En Linea, 2000-1215 (WIPO Nov. 23, 2000), but this cannot be uniformly applied in cases such as this where the change of registrant of the domain name only occurred one time. Furthermore, in this case, as mentioned above, it is difficult to say that this situation was one where the Respondent knew or could have known about the trademark. Therefore, it cannot be concluded that the Respondent acted in bad faith based only on a situation where there is simply suspicion regarding the timing of the domain name transfer.

 

The Complainant asserts that the Respondent’s failure to explain the circumstancs of the acquisition of the domain name of this case constitutes proof that the Respondent acted in bad faith. However, bad faith by the Respondent is something that must be proven by the Complainant and the Respondent does not have to prove that he did not act in bad faith. However, the fact that the Respondent acquired the domain name of this case while knowing that it infringed the rights of the Complainant is something that the Complainant must prove and is not something that the Respondent has a burden to disprove. Therefore, the fact that the Respondent acquired the domain name of this case while knowing that it infringed the rights of the Complainant must be proven by the Complainant. However, the Complainant has not given any particular proof that its trademark could have been known to the Respondent. In this situation, it is thought unreasonable to put the burden of proof on the Respondent.

 

Also, the Complainant contends that the Responded acted in bad faith because he did not establish a web site using the domain name of this case. Of course, there are cases where bad faith can be presumed based on the fact that no web site was established through the domain name. However, it is not possible to recognize bad faith in this case based only on the fact that no web site was established. Such would only be possible by appropriately considering it together with other circumstances. However, in this case, there are no other special situations to consider together with the fact that the Respondent did not establish a web site in order to presume bad faith on the part of the Respondent. Furthermore, the transfer of the domain name of this case by the Respondent occurred on February 19, 2002 and so it is difficult to say that there was enough time to establish such web site before this Complaint.

 

By putting these points together, this Panel determines that the Complainant has failed to prove that the Respondent obtained and is using the domain name of this case in bad faith.

 

On the other hand, the Respondent contends that the Complaint by the Complainant is an attempt to seize the domain name unjustly; but this Panel determines that there is no basis for this contention by the Respondent.

 

DECISION

Therefore, pursuant to all the above reasons, it is determined that the domain name of this case, <focus21.com>, should not be transferred to the Complainant.

 

 

 

Moon Sung Lee, Panelist
Dated:  May 8, 2002

 

 

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