Essex Group, Inc. v. Dongil Song
Claim Number: FA0206000114664
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”)
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.
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 email@example.com 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
For the reasons that follow the Panel finds that the Complainant has not proven its case and the Complaint is dismissed.
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.
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
Dated: January 20, 2002
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