Mainsoft, Inc. v. Jinseok Yang a/k/a World Best Domainer
Claim Number: FA0203000105936
Complainant is Mainsoft, Inc., San Jose, CA (“Complainant”) represented by Rochelle D. Alpert, of Brobeck, Phleger & Harrison LLP. Respondent is Jinseok Yang a/k/a World Best Domainer, Seoul, SOUTH KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mainwin.com>, registered with Verisign - Network Solutions, Inc.
On April 16, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 19, 2002; the Forum received a hard copy of the Complaint on March 19, 2002.
On March 20, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <mainwin.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name. Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, 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 March 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 9, 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.
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 Respondent to Complainant.
1. The domain name <mainwin.com> is identical to Complainant’s federally registered MAINWIN mark.
2. Respondent is not commonly known as <mainwin.com>. Second, Respondent has not made a good faith intention of offering any product or services under the MAINWIN designation at the website connected with the disputed domain name. Third, by linking a pornographic website to the disputed domain name, Respondent does not have a legitimate right or interest in <mainwin.com>.
3. First, Respondent’s use of the domain name, namely connecting pornographic material to the disputed domain name, is evidence that Respondent is using <mainwin.com> in bad faith. Second, by using a domain name that is identical to Complainant’s mark, Respondent is creating a likelihood of confusion with Complainant as to the sponsorship of Respondent’s website. Finally, since Respondent provided false contact information to the registrar, Respondent has registered the disputed domain name in bad faith.
No Response was submitted.
Complainant registered its MAINWIN mark on November 7, 1995 with the United States Patent and Trademark Office, Registration Number 1,933,524. Since as early as 1993, Complainant has used its mark in connection with developing software which has been licensed to more than one million users.
Respondent registered the disputed domain name on May 17, 2001. Respondent uses the disputed domain name as a gateway to a pornographic website <sexyadong.com>. Complainant has attempted to contact Respondent and make a cease desist request of the disputed domain name. However according to Complainant, the telephone number listed on the WHOIS database for Respondent is inoperable, and there was no answer to Complainant’s letter.
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 to the MAINWIN mark by registering the mark with the USPTO and through its subsequent continuous use. Because the generic top-level domain “.com” does not distinguish <mainwin.com> from MAINWIN, the Panel finds that the disputed domain name is identical to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s POMELLATO mark because the generic top-level domain (gTLD) “.com” after Complainant’s mark is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response in this matter. Therefore, the Panel will presume that it has no rights or legitimate interests to <mainwin.com>. 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). Since no Response was filed, the Panel will presume that all allegations in the Complaint are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent has used the disputed domain name to transport Internet users to a website that provides pornographic material. Where the domain name in dispute is identical to Complainant’s mark, such activity by Respondent cannot be considered a bona fide offering pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark).
There is no evidence provided that Respondent has been known or is currently known as <mainwin.com>. Therefore, the Panel finds that Respondent is not commonly known as <mainwin.com> and can not satisfy Policy ¶ 4(c)(ii). See 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).
By diverting Internet users to a website that offers pornographic goods and services, Respondent has not engaged in a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has linked the disputed domain name to a website that offers adult material. Because the domain name is not only confusingly similar, but identical to Complainant’s MAINWIN mark, Respondent has registered and used <mainwin.com> in bad faith pursuant to Policy ¶ 4(b)(iv). See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site); see also 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 should be hereby granted.
Accordingly, it is Ordered that the <mainwin.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: April 18, 2002
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