Essex Group, Inc. v. Dongil Song
Claim Number: FA0206000114664
PARTIES
Complainant
is Essex Group, Inc, Fort Wayne, IN,
USA (“Complainant”) represented by Michael
A. Lisi, of Rader, Fishman &
Grauer PLLC. Respondent is Dongil Song, Pohang-City, Gyeongsandbuk-Do,
SOUTH KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <essex.biz>,
registered with RGNames.com.(“the
Domain Name”)
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Ms
Dawn Osborne, Mrs Young Kim and Honorable Carolyn M Johnson (Ret.) as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 21, 2002; the Forum received a hard copy of the
Complaint on June 20, 2002. An Amended Complaint was submitted on 24 October
2003.
On
September 22, 2002, RGNames.com confirmed by e-mail to the Forum that the
domain name <essex.biz> is
registered with RGNames.com and that the Respondent is the current registrant
of the name. RGNames.com has verified
that Respondent is bound by the RGNames.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
November 4, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 25, 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@essex.biz by e-mail.
A
timely Response was received and determined to be complete on November 22, 2002.
On January 8,
2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Ms Dawn Osborne, Mrs Young Kim and
Honorable Carolyn M Johnson (Ret.) as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant has continuously used its ESSEX Mark since 1930 when it commenced
business in Detroit, Michigan, USA.
Today,
the Complainant is one of the world’s largest producers of electrical wire and
cable and is included in the Fortune 1,000 list of industrial and service
companies.
The
Complainant has affiliate operations in Canada, Mexico, the United Kingdom, and
the United States employing over 3,000 people.
ESSEX
is the primary trademark and service mark of the Complainant. The ESSEX name and mark is used on all the
Complainant’s products, in promotion and advertising, in trade shows around the
world and on the Internet.
The
Complainant owns approximately 25 registrations and 4 pending applications for
its ESSEX mark and variations thereof, including a registration in South Korea
in classes 6, 9 and 17.
The
ESSEX mark has achieved a reputation in its field. The Complainant considers that its mark is famous.
The
Complainant has registered a number of Internet domain names incorporating
ESSEX marks. Its main domain name
<essexgroup.com> had been held since 1995. The web site attached is an online information resource for the
Complainant’s customers.
The
Domain Name is identical to the Complainant’s mark.
The
Respondent and RGNames have no legitimate right or interest in respect of the
name. In particular, Respondent has
never offered bona fide goods or services under the ESSEX name, has never been
commonly known by the name and is not making non-commercial or fair use of it.
At
the time the Complainant originally filed this matter on June 19, 2002, the
Whois data listed Woohoo T & C Limited d/b/a rgnames.com as the registrant
of the Domain Name. It is still the
Registrar for the name. Upon receipt of
the Complaint on or about June 20 2002, the Forum requested that RGNames
confirm the registrant’s identity and lock the domain name pending the UDRP
decision in the normal course of things.
After some delay, RGNames claimed the registration data had been
inaccurate as of the date of the original Complaint. They had in fact, the Complainant discovered, changed the
registrant to Dongil Song the Respondent on September 18. As advised by the Forum the Complainant
refiled the Complaint against the Respondent.
The Complainant does so under protest as it believes RGNames abused its
power as registrar by changing the name of the registrant after being served
with a Complaint, which indicates bad faith.
The Complainant maintains that RGNames is the actual registrant and Dongil
Song is an alias or contributing party to RGNames’ bad faith.
RGNames
has registered the name and thereby deprived the Complainant from using its
exact ESSEX mark in its corresponding domain name. It has engaged in a pattern of bad faith conduct, including,
registering domain names containing famous marks including
<pradacosmetics.com>, <pradacosmetics.biz>, <and
microsoftplus.biz>. RGNames is an
ICANN-accredited registrar of top level domains and therefore has an ethical,
fiduciary as well as contractual responsibility to preserve the integrity of
the domain name system and to refrain from any activities that would constitute
or suggest impropriety on its part.
RGNames
did not respond to the Complainant’s request for details of any legitimate
rights RGNames may have in the Domain Name and has refused to transfer the
Domain Name to the Complainant. The
Complainant submits that this also indicates bad faith.
The
Respondent and RGNames had constructive notice of the Complainant’s
intellectual property rights through its worldwide trademark registrations,
including South Korea for the ESSEX mark.
B.
Respondent
Essex
Group is not identical to Essex. Essex
is a County in England and widely known.
<Essex.biz> is a domain name consisting of a common noun
Essex that is listed in encyclopedias and dictionaries. The owner of a trademark right for ESSEX
cannot claim the right at any time and anywhere. The Complainant’s trademark is not registered all over the world. In any event many ESSEX trademarks are owned
by companies not associated with the Complainant in Korea, England and the
USA. The registration of a domain name
consisting of a common noun does not constitute any infringement on the
trademark rights of other persons.
The
Complainant’s trademark is not well known in Korea.
The
registrant of the Domain Name has always in truth been Dongil Song, a
government official who works at a meteorological observatory. The name of RGNames was mistakenly inserted
as registrant by their employee when registering the name on behalf of Dongil
Song. The administrative contact name
has always been listed as Dongil Song with the address and e-mail of those of
the Respondent. The address of the
Respondent is in Pohang City far away from Seoul where RGNames is based and the
address given for the Registrant has always been the Respondent’s address. The Respondent does not hold any interest in
RGNames. The ownership of the Domain
Name has not been deliberately transferred to Dongil Song, merely corrected to
the true position. This same mistake
occurred in a number of .biz domain name registrations made by RGNames on
behalf of customers at the same time.
The Respondent exhibits a statement from RGNames to this effect. The Respondent does not own
<pradacosmetics.com>, <radacosmetics.biz>, or <microsoftplus.biz>. The Respondent is not in a position to
comment on RGNames’ delay. The
Complainant thinks that RGNames is the Respondent when this is not the case.
The
Respondent was preparing for the operation of a shopping mall service, web
hosting service and e-mail forwarding service aimed at the global market
through the Domain Name. However,
NeuLevel suspended the use and it has only been a short time since the domain
name was registered and so the Respondent could not do business seriously. The Respondent has lawfully registered the
Domain Name.
The
Respondent has never illegally used the Domain Name. The Respondent has never caused confusion with or
misunderstanding with the Complainant or its trademark. The Respondent has never interfered with the
business of the Complainant.
The
Respondent has not used or registered the Domain Name in bad faith. The Policy is meant to deal with
cybersquatting, not simply where the Domain Name is identical or similar to a
trademark. The Respondent does not own
any of the domain names cited by the Complainant as registrations of other
third party trademarks. The Complainant
has not proved that the Respondent registered or used the Domain Name in bad
faith.
The
Complainant is reverse domain name hijacking.
The Complainant is trying to usurp a domain name consisting of a widely
known word.
FINDINGS
For the
reasons that follow the Panel finds that the Complainant has not proven its
case and the Complaint is dismissed.
DISCUSSION
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.
The
first question to be determined is the correct Respondent. Whilst Dongil Song
is named as the Respondent, the Complainant explains that it has taken this
course under protest and regards RGNames to be the true Respondent.
Section
8 (a) of the ICANN policy states “You [Registrant] may not transfer your domain
registration to another holder (i) during a pending administrative
proceeding. An “administrative
proceeding” is what the Complainant initiated upon filing its Complaint on June
19, 2002, the date at which RGNames was named as the registrant of the Domain
Name.
Dongil
Song says he was always the true Respondent and the registrant name was
incorrect although his address and administrative contact details were always
correct proving the truth of what he says.
It is true that while the name of the registrant has been changed, the
address details and the administrative details including e-mail and telephone
number were always those of the Respondent and different from RGNames. The Respondent claims he has no interest in
RGNames. RGNames has provided a
statement that it was a mistake re the name of the registrant whereby RGNames
appeared as the registrant, although the administrative contact and address details
were those of the true registrant. They
explain this mistake was unfortunately repeated in all registrations made at
the same time by RGNames. The Panel
notes that the registrations cited by the Complainant as being registrations of
other third parties trademarks are not inconsistent with this and therefore not
inconsistent with RGNames’ version of events.
RGNames also confirms in its statement that Dongil Song was merely its
customer. On balance the panel believes
Dongil Song and RGNames that it was a clerical error.
The
Panel has found the majority decision of Gloria-Werke H Schulte-Frankenfeld
GmbH & Co. v. Internet Development Corp., D2002 0056 (WIPO Apr.
26, 2002), to be of great assistance in deciding who shall be regarded as the
correct Respondent in a case of “cyberflying” as this phenomena has come to be
known. In that case the majority of the
panel found that in accordance with the Policy the original registrant must be
the primary Respondent as the registrant at the time when the Complaint was
filed. “The register must be taken as
reflecting the correct identity of the registrant of a domain name. There can be no room for a bare trustee or a
nominee or an agent holding on behalf of a beneficiary or principal, so far as
third parties are concerned…the register must be taken at its face value”. However, the majority of the panel in that
case found that the new registrant should also be joined as Respondent as she
was an interested party and had consented to this.
Accordingly,
the Panel finds that RGNames must be considered to be the primary Respondent as
the registrant of the Domain Name at the time the Complaint was filed. However, Dongil Song can be considered to be
an additional Respondent. He has
clearly consented to this by submitting a Response in the Proceedings.
Identical
and/or Confusingly Similar
The
Domain Name is identical to the Complainant’s ESSEX mark for which it has
trademark registrations and owns unregistered rights, save for the .biz element
of the domain name which is non distinctive.
The Respondents do not actually contest this.
Rights or Legitimate Interests
The majority of the Panel finds that the Respondents have no
rights or legitimate interest in the Domain Name. The Respondent RGNames expressly disclaims any. Although the Respondent Dongil Song asserts
that he has a right and legitimate interest as he wishes to use the name for a
“shopping mall service, web hosting service and e mail forwarding service” he
provides no evidence of the same. He
claims the use of the Domain Name has been suspended thus far, but currently
only transfer of the Domain Name, not its use, is frozen. The Respondent has not used the Domain Name
in connection with a bona fide offering of goods and services, has never been
commonly known by the name and is not using for non-commercial fair use.
Registration and Use in Bad Faith
However, the majority of the Panel finds
that the Complainant has failed to prove that the Respondents have registered
in bad faith.
On the issue of initial registration by
RGNames the majority of the Panel is satisfied that there is enough evidence
that the incorrect name registration was a clerical error. Since RGNames did not intend to register in
its own name it did not register in bad faith.
The majority of the Panel is of the
opinion that the Complainant has not proven its case that its trademark is well
known and should have been known to the Respondents in Korea. Various trademarks including “Essex” are
registered for different goods and services by a number of parties other than
the Complainant in Korea. The term
Essex is generally considered descriptive of the famous geographical area Essex
in England. The majority of the Panel
does not consider that the name is such that any registrant should have
conducted a trademark search before registering. There is no evidence that the Respondents targeted the
Complainant when they registered the Domain Name.
Reverse Domain Name Hijacking
The Panel does not consider that this is an appropriate case
for a finding of domain name hijacking.
The Complainant has a registered trademark for ESSEX in Korea. The registration by a domain name registrar
ostensibly owning other domain names containing famous trademarks and the
subsequent cyberflying to another party is sufficient to raise a reasonable suspicion
in the Complainant’s mind of bad faith.
Also as indicated in the Gloria-Werke H
Schulte-Frankenfeld GmbH & Co. case such a remedy is discretionary and
it is legitimate to look at the conduct of the parties. The transfer from the name of RGNames to
Dongil Song was clearly a wrongful breach of the Policy by both Respondents.
DECISION
The Panel considers that the Complaint
should be dismissed and makes no order for the transfer of the domain
<essex.biz>. The Panel declines
to make a declaration of reverse domain name hi-jacking against the
Complainant.
Dawn Osborne, Presiding Panelist
Mrs. Young Kim, Panelist (Concurring)
Dated: January 20, 2003
Essex Group, Inc. v. Dongil Song
Claim Number: FA0206000114664
I respectfully dissent from the Majority
Decision. The Majority concedes that
the domain name at issue, <essex.biz>
“is clearly confusingly similar to the Complainant’s ESSEX mark for which it
has trade mark registrations and owns unregistered rights.” Further, the Majority concedes that: “The
Respondents do not actually contest this.”
In addition, the Majority finds “that the
Respondents have no rights or legitimate interest in the Domain Name” and
notes, further that “Respondent RGNames expressly disclaims any.” Further, the Majority asserts that the
Respondent Dongil Song’s “right and legitimate interest” consisted of his
“wishes to use the name for a ‘shopping mall service, web hosting service and e
mail forwarding service’” but that he “provides no evidence of the same.”
The Majority also notes that: “The
Respondent has not used the Domain Name in connection with a bona fide offering
of goods and services, has never been commonly known by the name and is not
using for non commercial fair use.”
The Majority also finds that both
Respondent RGNames and Dongil Song “clearly wrongfully” breached the policy
with the manner in which they transferred the name, relying on Gloria-Werke
H Schulte-Frankenfeld GmbH & Co. v. Internet Development Corp.,
D2002 0056 (WIPO Apr. 26, 2002).
Then, however, the Majority concludes:
“However, the Complainant has failed to prove that the Respondents have
registered in bad faith.” The Majority
found that Complainant’s trademark was not well known in Korea, although no
evidence supports this finding and that a number of other marks include the
“Essex” name in Korea and that these facts permitted Respondent to use the
Essex name as well.
Although I agree with the majority that
Complainant presented no evidence that Respondents specifically targeted this
Complainant when registering the domain name in dispute, the nature of “.biz”
filings suggests that Respondents knew of Complainant’s rights in its mark
prior to the filing and that Respondents had information about the rights of
others but filed, nonetheless, the disputed domain name, which is confusingly
similar to Complainant’s trademark that Complainant has used more than seventy
years, in which Respondent has no rights or interests, by which Respondent is
not commonly known and of which Respondent has not made a bona fide legitimate
use.
Complainant
argues that Respondent registered the <essex.biz> domain name in order to prevent
Complainant from reflecting its ESSEX mark in a corresponding domain name. Complainant asserts that Respondent has
engaged in a pattern of registering domain names with distinctive marks in
them. Complainant claims that
Respondent has registered domain names reflecting the PRADA and MICROSOFT
marks. These past domain name
registrations containing marks of other entities allow an inference that
Respondent was aware of the value of Complainant’s ESSEX mark at the time of
registration. Such knowledge is further
evidence of bad faith under Policy ¶ 4(b)(ii).
See Armstrong Holdings,
Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that
Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names
which infringe upon others’ famous and registered trademarks); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (finding that Respondent violated ¶ 4(b)(ii),
as revealed by the number of other domain name registrations incorporating
others’ trademarks and the fact that the domain names in question do not link
to any on-line presence or website).
Furthermore,
Complainant asserts that Respondent’s transfer of the registration rights in
the <essex.biz> domain name subsequent to the initiation
of this dispute suggests bad faith.
Complainant argues that Respondent owes an “ethical, fiduciary as well
as contractual responsibility to preserve the integrity of the Internet domain
registration system” and Respondent’s actions that ignored the Policy
constituted an attempt to “thwart accountability for its actions.” See Quixtar Inv., Inc. v. Smithberger & QUIXTAR-IBO, D2000-0138
(WIPO Apr. 19, 2000) (finding that use of false registration information
constitutes bad faith); see also The Trustees of the Trust Number
SR-1 v. Turnberry, Scotland Golf and Leisure, FA 122224 (Nat. Arb. Forum
Nov. 3, 2002) (“The register maintained by an ICANN registrar must provide
accurate information as to the identity of domain registrants. The human person or other legal entity shown
as the registrant must be assumed to be such by third parties seeking to
ascertain a registrant’s identity by such means as a Whois search. There is no place for the registration of
bare trustees or agents for unnamed beneficiaries, principals or would-be
purchasers. . .the register is everything: no unregistered interests can
prevail against the interests of bona fide third parties relying on information
available on the register for all the world to see”).
Respondent
argues that Complainant’s bad faith argument does not have any merit in
relation to its actions since Respondent was not the entity that previously
registered other domain names comprised of other entities’ marks. Respondent maintains that bad faith cannot
be found where Respondent registered the <essex.biz> domain name to reflect a common
noun. Respondent argues that
Complainant is attempting to reverse-highjack the subject domain name because
Complainant already owns a valid domain name that reflects its business
identity, <essexgroup.com>.
Respondent pleads that bad faith cannot be found in relation to its
actions because Respondent registered the <essex.biz> domain
name based on its generic value and in connection with its business interests.
Unlike
the Majority, I do not believe that Essex is generic and have seen it used
generally as a proper noun. There are
Lords, Earls, Counties, Cities and businesses, including Complainant, bearing
the Essex name but Respondent is not one of these and has not used the Essex
name, proper noun or not.
Taking all the circumstances into
consideration, I find it appropriate to infer bad faith. I would order the transfer of the disputed
domain name to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 20, 2002
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