OTEX Corporation Limited v. Wongi Lee
Claim Number: FA0206000114688
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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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