Hoya Corporation v. Hoya.com
Claim Number: FA0710001105524
Complainant is Hoya Corporation (“Complainant”), represented by R.
Flynt Strean, of Alston & Bird, LLP, Bank of America
Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hoya.com>, registered with Network Solutions, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 26, 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 postmaster@hoya.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <hoya.com> domain name is identical to Complainant’s HOYA mark.
2. Respondent does not have any rights or legitimate interests in the <hoya.com> domain name.
3. Respondent registered and used the <hoya.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hoya Corp., is a worldwide manufacturer of
optical products. Complainant is the
world’s leading provider of mask blanks and photomasks used in the production
of semiconductors and LCD panels, glass disks used in hard disk drives, optical
lenses for digital cameras, cornea examination instruments, high quality
eyeglass lenses, and intraocular lenses used in the treatment of
cataracts. Complainant also produces a
variety of consumer goods including clocks, glass and crystal items, table
lamps, and contact lens solution. Since
1950, Complainant has continuously and exclusively used the HOYA mark in
commerce in the
Respondent registered the <hoya.com>
domain name on
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant holds numerous registrations for the HOYA mark with the USPTO and with the Korean Intellectual Property Office, and therefore has established rights to the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant contends that Respondent’s mark is identical to
the HOYA mark because the disputed domain name incorporates the entire HOYA mark. Respondent’s addition of the generic
top-level domain (“gTLD”) “.com” to the mark does not distinguish the <hoya.com> domain name from the HOYA
mark because all domain names are required to have a top-level domain. Thus, the Panel finds that the disputed
domain name is identical to Complainant’s HOYA mark pursuant to Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant claims that Respondent has no rights or
legitimate interests in the <hoya.com> domain
name. Complainant has the initial burden
of showing that Respondent lacks all rights and legitimate interests in the
disputed domain name. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case and shown that
Respondent lacks rights and legitimate interests in the <hoya.com> domain name pursuant to
Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Respondent’s failure to respond to the Complaint creates a presumption that Respondent lacks all rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Despite Respondent’s failure to respond, the Panel will consider all evidence in the record to determine if Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been authorized to use the HOYA mark, and has never been and is not commonly known by the disputed domain name. In addition, the WHOIS information does not indicate that Respondent is commonly known by the <hoya.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Respondent is not using the disputed
domain name for a bona fide offering
of goods or services or making a legitimate noncommercial or fair use of the <hoya.com> domain name. The disputed domain name resolves to a
website which displays links, mostly in the Korean language, to information
pages unrelated to Complainant’s products.
Respondent, until recently, displayed Complainant’s HOYA mark on the
website that resolves from the disputed domain name. The Panel finds that such use thus does not constitute
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking Complainant's
website to a website of Respondent and for Respondent's benefit is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the Policy).
Respondent also currently advertises the disputed domain
name for sale, and provides a link to a website that estimates the asking price
for the disputed domain name at $140,462.00.
The Panel finds that this indicates that Respondent lacks rights and
legitimate interests under Policy ¶ 4(a)(ii). See Am.
Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)
(“Respondent’s lack of rights and legitimate interests in the domain name is
further evidenced by Respondent’s attempt to sell its domain name registration
to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
the respondent’s apparent willingness to dispose of its rights in the disputed
domain name suggested that it lacked rights or legitimate interests in the
domain name);
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is commercially benefiting by using the <hoya.com> domain name to display
links to websites unrelated to Complainant’s business. Respondent’s use of Complainant’s HOYA mark in
the disputed domain name and former display of the HOYA mark on the website
that resolves from the disputed domain name is capable of creating confusion as
to Complainant’s source, sponsorship, affiliation, or endorsement of the <hoya.com>
domain name. The Panel finds that
Respondent’s commercial use of the HOYA mark is evidence of registration and
use in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
Further, the Panel finds that Respondent’s attempt to sell the <hoya.com> domain name for valuable consideration in excess of its out-of-pocket costs demonstrates registration and use in bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <hoya.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 11, 2007
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