Hoar Construction, LLC v. Jinsu Kim
Claim Number: FA0710001093845
Complainant is Hoar Construction, LLC (¡°Complainant¡±), represented by Michael S. Denniston, of Bradley Arant Rose & White LLP, 1819 Fifth Avenue North, Birmingham, AL 35203. Respondent is Jinsu Kim (¡°Respondent¡±), 1113-1406 GreenVille Jugong Apt. 11 Choji-dong, Danwon-gu, Ansan, Gyeonggi-Do 425-873, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hoar.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2007.
On October 12, 2007, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <hoar.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that the Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com 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 October 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the ¡°Commencement Notification¡±), setting a deadline of November 12, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 12, 2007.
Complainant submitted a timely Additional Submission that was received and determined to be complete on November 19, 2007.
On November 26, 2007, pursuant to Complainant¡¯s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i) The disputed domain name is confusingly similar to Complainant¡¯s HOAR and HOAR CONSTRUCTION marks.
ii) Respondent has no rights or legitimate interests in respect of the domain name.
iii) Respondent registered, used, and continues to use the disputed domain name in bad faith.
iv) And thus, the domain name in dispute should be transferred to Complainant.
i) Complainant does not have either registered or common-law rights in HOAR mark. Complainant is attempting ¡°reverse domain name hijacking.¡±
ii) Respondent has rights or legitimate interests in respect of the domain name in dispute because he has registered and intended to use the domain name for his business purposes, while admitting he registered the domain name as part of a ¡°keyword search advertisement¡± scheme. Respondent has registered or acquired a few domain names as they helped increase the number of Internet users visiting its advertisement website. The domain name in dispute, which was obtained by paying a considerable amount of money, is one of those domain names.
iii) He did not acquire and use the disputed domain name in bad faith.
C. Additional Submissions
Complainant has asserted in the Additional Submission to the effect that:
i) Respondent¡¯s claim that Complainant does not have either statutory or common-law rights in HOAR, HOAR CONSTRUCTION, is simply wrong as a matter of law, and Complainant submitted evidence supporting its common law rights in the mark or name HOAR and HOAR CONSTRUCTION,
ii) Respondent¡¯s claim that ¡°hoar¡± allegedly is a common word is irrelevant,
iii) Respondent¡¯s Response shows that he has no rights or legitimate interests in the domain name by admitting he is not now using or commonly known under, never have used or been commonly known under the name ¡®HOAR,¡¯
iv) Respondent also has no rights because the use of a domain name to display a series of hyperlinks unrelated to the Complainant¡¯s business ¡°does not constitute a bona fide offering of goods and services,¡±
v) Respondent knows from another panel decision, ¡°Respondent¡¯s use of linking a pornographic website to the disputed domain name is not a legitimate noncommercial, or fair use of the disputed domain name,¡±
vi) Using someone else¡¯s mark to offer directory services is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name),
vii) The fact that Respondent is using Complainant¡¯s HOAR mark to attract Internet users and profit by it also is evidence of his bad faith,
viii) There is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant¡¯s trademarks, actually or constructively, and
ix) The existence of relevant metadata shows Respondent¡¯s actual knowledge of Complainant.
Complainant and its predecessor have used the HOAR and HOAR CONSTRUCTION marks in interstate commerce to identify construction services since at least 1940.
The disputed domain name was registered on February 28, 1995. Respondent concedes that on April 9, 2006 he acquired the domain name in dispute at an auction site by way of competition for the purpose of his business gaining profits by attracting Internet users to the advertisement or other commercial service site to which the disputed domain name is linked.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.¡±
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.
contends that Complainant does not
have either registered or
common-law rights in the mark ¡®HOAR in
It is now well established that the Policy protects rights in
unregistered trademarks: see: Bennett Coleman & Co. Ltd. v. Steven
S. Lafwani, D2000-0014 (WIPO March 11, 2000); SeekAmerica Networks Inc.
v. Tariq Masood, D2000-0131 (WIPO Apr. 13, 2000); and the cases cited by
Complainant, Brisbane City Council v. Warren Bolton Consulting Pty Ltd.,
D2001-0047 (WIPO May 7, 2001) and
However, the fact that an unregistered trademark is sufficient to bring the proceedings does not necessarily mean that a Panel will automatically accept that there is an unregistered trademark in any particular case simply because a complainant asserts that there is. The question is what evidence will enable a panel to conclude that the evidence establishes the existence of an unregistered trademark. The answer to this question is to be found in the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Consensus view on what needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ¡°secondary meaning¡± includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant¡¯s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Uitgeverij Crux v. Isler, D2000-0575 (WIPO Oct. 30, 2000); Skattedirektoratet v. Eivind Nag, D2000-1314 (WIPO Dec. 18, 2000); Amsec Enters., L.C. v. McCall, WIPO D2001-0083 (WIPO Apr. 3, 2001); Australian Trade Comm¡¯n v. Reader, D2002-0786 (WIPO Nov. 12, 2002).
Complainant and its predecessor have used the HOAR and HOAR CONSTRUCTION marks in interstate commerce to identify construction services since at least 1940. In light of the length of using over sixty (60) years of Complainant¡¯s and its predecessor¡¯s service marks HOAR and HOAR CONSTRUCTION especially on construction services, its business performance of billions of dollars worth of general contracting and construction services, and the advertisement expenditure of hundreds of thousands of dollars on advertising its services, using the HOAR name and mark, its ranking as one of the top ten healthcare facilities contractors and one of the top 125 in the United States overall and one of the 50 Best Small & Medium Companies to Work for in America, it is found that Complainant owns common law rights in the marks HOAR and HOAR CONSTRUCTION, prior to the registration and acquisition of the domain name in dispute.
Although Respondent also contends that the word ¡®hoar¡¯ is a common dictionary word, it is not considered as being descriptive in respect of construction services or Internet advertisement services. As such, the Panel finds that Respondent¡¯s argumentation on the ¡®reverse domain name hijacking¡¯ on the basis of Complainant¡¯s lack of rights and non-distinctiveness of the word ¡®hoar¡¯ is groundless.
It is undisputed that the domain name in dispute is identical with or confusingly similar to Complainant¡¯s marks HOAR and HOAR CONSTRUCTION.
Respondent contends that he has conducted the business by offering the domain name in dispute for the domain traffic advertisement and gaining profits in return by way of offering the domain name in dispute at commercial advertisement sites, and further contends that such a domain traffic advertisement is a rightful business. As such, he has rights or legitimate interests for the domain name in dispute.
The Panel, however, finds it unlawful to utilize and offer the domain name for the monetization of the site under that domain name, which is confusingly similar to a third party¡¯s mark and its use is not authorized by the third party. Such an act also constitutes a violation of ICANN policy where the domain name of the monetized site is confusingly similar to a third party¡¯s mark and its use is not authorized by the third party (ICANN Policy 4(b)(iv)). Therefore, the Panel cannot recognize that the traffic advertisement business (irrespective of direct or indirect) offered by Respondent is lawful, and concludes that Respondent has no rights or legitimate interests in the domain name in dispute. 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 the complainant¡¯s mark), see also Hewlett-Packard Co. v. Jinsu Kim, FA 98012 (Nat. Arb. Forum Sept. 5, 2001) (finding that it is not a bona fide offering of goods or services for a respondent to link the disputed domain name to a website that offers pornographic material.).
Respondent contends to the effect that i) he acquired the disputed domain name for his own business not for sale and that he acquired the disputed domain name at the auction site for domain names by way of a fair competition, and ii) Complainant¡¯s mark is neither well known around the world especially in Korea nor considered as having obtained a secondary meaning, and thus he did not know the existence of the mark ¡®HOAR,¡¯ and thus he did not register or use the disputed domain name in bad faith.
On the other hand, Respondent concedes that he had acquired the domain name in dispute for the purpose of his business turning profit by attracting Internet users to the advertisement or other commercial service site to which the disputed domain name is linked. As such, it is constructively noted that Respondent found the value of the disputed domain name being useful to attract Internet users to its linked sites thereby increasing his commercial gains because the word ¡®hoar¡¯ would not be useful in that it is not considered as being popular or attractive enough to be used as an Internet keyword by Internet users in terms of the connotation of the word unless otherwise having been well known as a trademark or service mark. As such, it is highly probable that Respondent was aware of the existence of Complainant¡¯s mark being well known enough to be used to attract Internet users.
Furthermore, in light of the length of use over sixty (60) years of Complainant¡¯s and its predecessor¡¯s service marks HOAR and HOAR CONSTRUCTION especially on construction services, its business performance of billions of dollars worth of general contracting and construction services, and the advertisement expenditure of hundreds of thousands of dollars on advertising its services, using the HOAR name and mark, its ranking as one of the top ten healthcare facilities contractors and one of the top 125 in the United States overall and one of the 50 Best Small & Medium Companies to Work for in America, it is recognized that Complainant¡¯s marks HOAR and HOAR CONSTRUCTION had been well known at least in the United States prior to the registration and acquisition of the disputed domain name. It is not necessarily required to enjoy the remedies under the Policy that Complainant¡¯s mark should be well known or registered in the territory where Respondent resides. The circumstances above enable the Panel to assume Respondent¡¯s prior knowledge and intent to trade on Complainant¡¯s marks.
The Panel finds that Respondent has allowed the domain name in dispute to be used for diverting Internet traffic that was initially intended for Complainant to online advertisement site which was subsequently linked to a website containing pornographic materials and to profit from such traffic. Respondent knows from prior panel decisions where Respondent himself is a party: Respondent¡¯s use of the disputed domain name to redirect Internet users to a website containing pornographic material is evidence of bad faith. (Hewlett-Packard Co. v. Jinsu Kim, FA 98012 (Nat. Arb. Forum Sept. 5, 2001).
(On this kind of bad
faith behavior, see Microsoft
Corporation v. Mindkind,
D2001-0193 (WIPO Apr. 20, 2001); Tata Sons Ltd. v. Advanced
Info. Tech. Ass¡¯n, D2000-0049 (WIPO Apr. 4, 2000); Am. Online, Inc. v. Exit
As such, the Panel concludes that Respondent registered and used the domain name in dispute in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hoar.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Dated: December 10, 2007
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