The Prudential Insurance Company of America v. Chae Hee Sung
Claim Number: FA0208000122147
Complainant is The Prudential Insurance Company of America, Newark, NJ, USA (“Complainant”) represented by Sue J. Nam. Respondent is Chae Hee Sung, Yonsu-gu, Incheon, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mylifeplanner.com>, registered with Tucows.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 20, 2002; the Forum received a hard copy of the Complaint on August 21, 2002.
On August 20, 2002, Tucows confirmed by e-mail to the Forum that the domain name <mylifeplanner.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 August 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 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 October 1, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Because Respondent is a Korean national and may have contracted with the registrar in Korean, Complainant enclosed Korean translations of all of the documents that were included in the Complaint. Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <mylifeplanner.com> domain name is confusingly similar to Complainant's LIFE PLANNER mark which is used in some non-English speaking markets.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant uses its LIFE PLANNER mark in connection with its non-U.S. life insurance business and holds trademark registrations in Korea (Respondent’s domicile), Chile, Japan and Mexico. As a result of its extensive use and promotion of the LIFE PLANNER mark with its other affiliated companies, Complainant’s mark has become a symbol of Complainant’s high-quality services and goodwill. Complainant prominently displays the mark in English (regardless of the country in which it is used) on all of its direct mail advertising, website, brochures and other promotional materials. The LIFE PLANNER mark is the considered to be the cornerstone of Complainant’s international insurance business.
Respondent registered the disputed domain name on April 26, 2002. Respondent does not have a license to use the LIFE PLANNER mark in Korea (Respondent’s domicile) or anywhere else in the world. Respondent has not established a website at the disputed domain name. Currently, the domain name page states that a website from Respondent is forthcoming in the near future. When Complainant enquired if the domain name was for sale, Respondent replied that it would sell <mylifeplanner.com> for $5000. Complainant’s counter-offer of $500 was refused by Respondent. Before registration of the <mylifeplanner.com> domain name, Respondent successfully sold <mylp.com> and <mylp.net> to Complainant.
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the LIFE PLANNER mark through its registration of the mark in Korea, Japan, Chile and Mexico as well as its extensive use of the mark in the international market. In these non-English speaking markets, the words “life planner” are not generic and have the power to uniquely identify Complainant’s services, hence the trademark registrations achieved in those countries. Although the Internet is ubiquitous, the power of trademarks to identify the source of particular goods and services is inherently territorial. In this case, the situs of Complainant’s trademark rights (Korea) is the same as the situs of Respondent’s infringing use. The power to uniquely identify apparently exists in Korea, although it would not in the United States where Life Planner would probably be regarded as generic or as a very weak mark.
Respondent’s <mylifeplanner.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the term “my” to the beginning. The addition of a generic/descriptive term such as “my” does not create a distinct mark capable of defeating a claim of confusing similarity. See Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to Complainant’s trade name and trademark NIIT”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).
Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
Respondent is not using the disputed domain name for any purpose other than the posting of a “coming soon” website. It can be inferred from Respondent’s lack of action, and its registration and sale of other domain names that referred to Complainant’s LIFE PLANNER mark that Respondent registered the disputed domain name in order to sell it to Complainant. If Respondent’s only use of a disputed domain name is the sale of the domain name itself, Respondent is not considered to be engaging in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Respondent is known to the Panel as Chae Hee Sung. There is no evidence on record, and Respondent has not come forward to establish that it is commonly known by anything other than Chae Hee Sung or by <mylifeplanner.com>. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent has sold two other domain names to Complainant that refer to Complainant’s LIFE PLANNER mark, it can be inferred that Respondent registered the <mylifeplanner.com> domain name in order to sell it to Complainant, for a price in excess of Respondent’s out-of-pocket expenses. Respondent did attempt to sell the disputed domain name to Complainant for $5000, which is obviously far above the amount Respondent paid to register the disputed domain name and maintain a “coming soon” website. Respondent’s behavior can therefore be considered to be evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration).
Respondent is domiciled in Korea, a place where Complainant’s LIFE PLANNER mark is registered. Furthermore, Respondent has registered and sold two other domain names to Complainant (<mylp.com> and <mylp.net>) that are abbreviations Complainant’s mark. Based on these facts it can be inferred that Respondent had actual notice of Complainant’s rights in the LIFE PLANNER mark when it registered <mylifeplanner.com>. Registration of a domain name despite notice of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
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 <mylifeplanner.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 5, 2002
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