OTEX Corporation Limited v. Wongi Lee
Claim Number: FA0206000114688
PARTIES
Complainant
is OTEX Corporation Limited, Galway,
IRELAND (“Complainant”). Respondent is Wongi Lee, Sungbukgu, Seoul, SOUTH
KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <otex.com>,
registered with Hangang Systems.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 25, 2002; the Forum received a hard copy of the
Complaint on June 26, 2002.
On
June 26, 2002, Hangang Systems confirmed by e-mail to the Forum that the domain
name <otex.com> is registered
with Hangang Systems and that Respondent is the current registrant of the
name. Hangang Systems has verified that
Respondent is bound by the Hangang Systems 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
July 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 22,
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@otex.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.
On
July 31, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The <otex.com> domain name
is identical to Complainant’s OTEX mark.
Respondent has no rights or legitimate
interests in the <otex.com> domain name.
Respondent registered and used the <otex.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant owns trademark Reg. No.
2,277,365 with the United States Patent and Trademark Office (“USPTO”) for
OTEX. Complainant also registered the
OTEX mark with the European Community (Reg. No. 000930370).
The OTEX mark received trademark
approval by the USPTO on June 22, 1999.
The date of first use for the OTEX mark is specified as June 22,
1998.
The OTEX mark is a coined term by
Complainant that has no generic quality to it.
The mark was derived from the logical operators OR NEGATE
and XOR, which are some of the fundamental blocks in computers and
software.
Complainant originally registered the <otex.com>
domain name in 1997. On June 12, 2002
Complainant’s registration rights in the domain name inadvertently
expired. Complainant realized that its
domain name registration expired on June 13, 2002 when it had trouble accessing
its website. Complainant’s
investigation revealed that the Respondent registered the expired <otex.com>
domain name on the same day of expiration.
Complainant communicated with Respondent
in order to structure a manner to obtain control of the <otex.com>
domain name. Respondent claimed there
were no Korean trademarks for the OTEX mark and that the ICANN Policy and Rules
do not apply. Subsequently, Respondent
registered <otex.co.kr> and created a website that claimed to be under
development. Respondent linked <otex.com>
to this website and also attached meta-tags to the website, which indicate
Respondent is in the business of selling domain names.
Complainant expressed its desire to
purchase rights to the <otex.com> domain name from Respondent for
“out-of-pocket” costs. Respondent
claimed to have suffered great expenses in acquiring the domain name but could
not put an exact figure on the expenses.
Complainant, therefore, offered to pay US$500 in exchange for the rights
to the <otex.com> domain name.
Respondent countered by stating that it would not accept anything less
than US$4,000. Complainant then broke
off dialogue with Respondent.
DISCUSSION
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
to draw such inferences as it considers appropriate pursuant to paragraph 14(b)
of the Rules.
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 to 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 established in this
proceeding that it has rights in the mark that is contained in its entirety in
the <otex.com> domain name through registration with the USPTO and
European Community.
The domain name registered by Respondent,
<otex.com>, contains Complainant’s entire OTEX mark. Since the addition of the generic top-level
domain “.com” is inconsequential in a Policy ¶ 4(a)(i) “identical” analysis,
Respondent’s 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 mark because the generic top-level
domain “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent did not submit a Response in
this proceeding. Due to the lack of a
Response and Complainant’s assertion that Respondent has no rights or
legitimate interests in the <otex.com> domain name, the Panel is
permitted to presume that Respondent has no such rights or legitimate interests
in the domain name. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist).
Furthermore, where Respondent fails to
submit a Response, the Panel is permitted to make all reasonable inferences in
favor of Complainant. 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’s <otex.com>
domain name leads to a website that claims to be under development. The website that <otex.com>
links to is located at <otex.co.kr>, which is a domain name that was
registered by Respondent the day after Complainant informed Respondent of its
rights in the OTEX mark. The evidence
suggests that Respondent opportunistically registered the <otex.com> domain
name, because Respondent registered the domain name the same day that
Complainant accidentally lost registration of the domain name. Respondent then
demanded a premium transfer price of US$4,000.
Based on these facts, the Panel finds that Respondent does not have rights
or legitimate interests in the mark contained in its entirety within the <otex.com> domain name pursuant
to Policy ¶¶ 4(c)(i) and (iii). See
Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that Complainant’s prior registration of the same domain name is a
factor in considering Respondent’s rights or legitimate interest in the domain
name); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell domain name suggests it has no
legitimate use).
Moreover, Respondent did not come forward
to establish that it is commonly known by OTEX or the <otex.com>
domain name. Complainant never
authorized Respondent’s use of the OTEX mark; in fact, Complainant accidentally
lost registration of the domain name and immediately contacted Respondent about
its infringing conduct. Therefore,
Respondent has no rights or legitimate interests in the <otex.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant; (2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests where Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights and legitimate interests in the <otex.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
When making a bad faith determination the
Panel should look not only to Policy ¶ 4(b) but also to the totality of the
circumstances. See Educ. Testing Serv. v. TOEFL, D2000-0044
(WIPO Mar. 16, 2000) (finding that the Policy “[i]ndicates that its listing of
bad faith factors is without limitation”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”).
Complainant inadvertently lost
registration of the <otex.com> domain name on June 12, 2002, and
Respondent registered the domain name that same day. Complainant used the <otex.com> domain name for five
years prior to losing its registration rights.
Complainant derived the domain name from its OTEX mark, which is a mark
that Complainant crafted. The OTEX mark
is unique to Complainant and the Panel may infer that Respondent’s registration
of a domain name using the entire mark on the same day Complainant’s
registration rights accidentally expired is more than mere coincidence. Thus, the evidence suggests Respondent
registered the domain name with knowledge of Complainant’s interest,
representing bad faith registration. See
InTest Corp. v. Servicepoint, FA
95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has
been previously used by Complainant, subsequent registration of the domain name
by anyone else indicates bad faith, absent evidence to the contrary); see
also BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of the Complainant’s failure to renew a domain name).
Further evidence of Respondent’s
opportunistic bad faith may be gleaned from Respondent’s use of the domain
name. Respondent links the <otex.com>
domain name to a website located at <otex.co.kr>, which was registered
after Complainant notified Respondent of its infringing behavior. The <otex.co.kr> website contains a
message that the website is under development.
However, Complainant discovered that the website’s meta-tags indicate
that Respondent is in the business of selling domain names. Moreover, Respondent demanded US$4,000 from
Complainant when Complainant notified Respondent that it was interested in
purchasing the rights to <otex.com> for Respondent’s
“out-of-pocket” costs. Therefore, it is
evident that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(i). See
Dollar Rent A Car Sys. Inc. v. Jongho,
FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated
bad faith by registering the domain name with the intent to transfer it to
Complainant for $3,000, an amount in excess of its out of pocket costs); see
also Moynahan v. Fantastic Sites, Inc.,
D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered
to sell the Domain Name to the Complainant for $10,000 when Respondent was
contacted by Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <otex.com> be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 14, 2002.
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