Alin
Cheie v. Hak
Jin, Kim c/o TTak Media
Claim Number: FA0903001254623
PARTIES
Complainant is Alin
Cheie (¡°Complainant¡±), represented by Alin Cheie, 2054
Parkside Dr., Park Ridge, IL 60068, USA.
Respondent is Hak Jin, Kim c/o TTak Media (¡°Respondent¡±), 501-709,
Hanju 4TH, 432-9, Howon-dong Uijeongbu Si, Gyeonggi-Do, 480020
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluestone.com>, registered with Korea Information Certificate Authority,
Inc. d/b/a
Domainca.com.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hong Oo Baak as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on
March 27, 2009;
the National Arbitration Forum received a hard copy
of the Complaint on March 27, 2009.
On April 1,
2009, Korea Information Certificate Authority, Inc. d/b/a
Domainca.com confirmed by e-mail to the National
Arbitration Forum that the <bluestone.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a
Domainca.com and that the Respondent is the current registrant
of the name. Korea Information Certificate Authority, Inc. d/b/a
Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a
Domainca.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 April 20, 2009 a Notification of Complaint and Commencement of Administrative
Proceeding (the ¡°Commencement Notification¡±), setting a deadline of May 15, 2009 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@bluestone.com.
Respondent filed a timely Response
on May
12, 2009.
Complaint filed a timely Additional Submission
on May 15, 2009.
On May 16, 2009, pursuant to
Complainant¡¯s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hong
Oo Baak as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES¡¯ CONTENTIONS
A.
Complainant
Comlainant contends as follows.
Complainant holds a service mark registration
with the United States Patent and Service mark Office (¡°USPTO¡±) for the
BLUESTONE mark with registration
number 3,402,791 in association with the construction
services. Complainant has filed the service mark application with USPTO on
April 15, 2007 and on the same date has registered a domain name, ¡®BluestoneBuilder.com¡¯.
Complainant has used the BLUESTONE mark in commerce in connection with the
construction services since May 1, 2007. Complainant has received the service
mark registration on March 25, 2008. Respondent has registered the Disputed
Domain Name Bluestone.com on September 20, 2008.
Complainant argues that Respondent¡¯s Disputed
Domain Name Bluestone.com domain is confusingly similar to Complainant¡¯s BLUESTONE
mark, in that the Disputed Domain Name is exactly identical to the Complainant¡¯s
dominant mark name BLUESTONE and simply adds the generic to-level domain ¡°.com¡±.
Complainant asserts that Respondent has no license, agreement or relationship
with Complainant authorizing Respondent to use the BLUESTONE mark, and before
any notice of the dispute was issued to the Respondent, the WHOIS information
as of March 20, 2009 identifies Respondent as ¡°Hak Jin Kim with TTAK Media¡±.
Thus, Respondent is not commonly known by the Disputed Domain Name, therefore
has not established rights or legitimate interest in the Disputed Domain Name.
Complainant contends that Respondent has registered and is using the Disputed
Domain Name in bad faith by diverting internet users seeking the Complainant¡¯s
mark to an advertising portal for commercial gain by generating pay-per-click advertising
revenues from third-party sources.
B.
Respondent
Respondent contends that the word ¡°Bluestone¡±
is a common term used in hundreds of service marks in
Respondent argues that Respondent has
legitimate interest in the Disputed Domain Name in that (i) Respondent has been
arranging plans to provide web-services by using the Disputed Domain Name since
Respondent purchased the Disputed Domain Name in September, 2007 at the website
of ¡®POOL.COM¡¯ while working as a web-agent; (ii) the legitimate interest in a
domain name comprised of a common or descriptive term should be found in an
intent itself to hold the domain name because an internet-based business that
makes commercial gains from internet advertisers by showing the advertisers¡¯
website to internet users who visit the Disputed Domain Name website is lawful
business as seen in other keyword search advertisements.
Respondent further asserts that Complainant has
failed in proving Respondent has not registered and is using the Disputed
Domain Name in bad faith because there is no objective evidence that
Complainant¡¯s service mark was well known in South Korea as well as in USA in
September 2007, at the time Respondent purchased the Disputed Domain Name,
adding that a service mark comprised of a common term such as Complainant¡¯s
service mark has to have achieved much stronger secondary meaning for its
protection than a service mark comprised of a coined term such as yahoo or
google. Respondent found that there was 2,140,000 search results when Respondent
searched for ¡®bluestone¡¯ at the website of ¡®google.co.kr¡¯ and only six results
were found in relation to Complainant¡¯s website, ¡®bluestonebuilder.com¡¯.
Respondent contends that Complainant¡¯s conduct
constitutes reverse domain name hijacking.
C. Additional Submissions by Complainant
In the Additional Submissions, Complainant
asserts that Respondent¡¯s argument that its domain name is comprised of a
common, descriptive term ¡°bluestone¡± and as such it cannot be identical to the
Complainant¡¯s mark is totally irrelevant because it is not an issue raised in
Complaint and the Paragraph 4(a)(i) of the Policy is mainly concerned only
whether the Complainant has rights in a service mark and whether the Disputed
Domain Name is identical or similarly confusing to it. In response to
Respondent¡¯s assertion that the Disputed Domain Name has been registered on
September, 2007, five months before the Complainant¡¯s service mark
registration, Complainant points out that the relevant date for establishing
rights in a registered mark is the filing date. Complainant adds that Complainant
uses the coined and arbitrary BLUESTONE mark for its construction services.
FINDINGS
1.
Complainant has filed a service mark application for ¡®BLUESTONE¡¯
with USPTO on April 15, 2007 in association construction services and on the
same date has registered a domain name, ¡®BluestoneBuilder.com¡¯. Complainant has
used the BLUESTONE mark in commerce in connection with the construction
services since May 1, 2007. Complainant has received the service mark
registration (registration 3,402,791) on March 25, 2008.
2.
Respondent registered the Disputed Domain Name <bluestone.com> on September 20,
2007.
3.
Designated services of the Complainant¡¯s service mark
are: Construction and renovation of buildings; construction services, namely,
planning, laying out and custom construction of residential and commercial
communities; custom construction and building renovation; Custom construction
of homes; General construction contracting; Residential and commercial building
construction, in class 37.
4.
The Disputed Domain Name < bluestone.com > is used by Respondent to divert Internet users to other commercial websites for businesses
related to airline tickets, hotels, car rental, flights, south beach hotels,
free credit report, online payment, credit card application, car insurance,
health insurance, foreclosures, houses for sale, mortgage, people search, real
estate training for Respondent¡¯s own commercial gain.
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 service mark 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 ¡®BLUESTONE¡¯ service mark (USPTO Registration Number 3,402,791) is not
common or descriptive as far as it is concerned with the mark¡¯s designated
services related to construction services in classes 37. Thus, the service mark is entitled to protection.
The Disputed Domain Name <bluestone.com> comprises of two parts, ¡®bluestone¡¯ and ¡®.com¡¯. The word ¡°.com¡± is
descriptive because it is a well-known top level domain and indicates to most
people a company on the internet. The remaining part of the Disputed Domain
Name, i.e. ¡®bluestone¡¯ is identical to the Complainant¡¯s service mark. Thus, the Respondent¡¯s
Bluestone.com domain is confusingly similar to Complainant¡¯s BLUESTONE mark
Accordingly, the Panel finds that
Policy ¢Ò 4(a)(i) has been satisfied.
Respondent is not commonly known by the Disputed
Domain Name and Respondent¡¯s use of the Disputed Domain Name <bluestone.com> is to redirect Internet traffic to pay-per click
websites for Respondent¡¯s own commercial gain.
However, Respondent¡¯s operation of its website is not related to the mark¡¯s designated
services.
Complainant did not
satisfactorily meet its burden and has failed to establish that Respondent has no rights
or legitimate interests in the Disputed Domain Name.
Accordingly, the
Panel finds that Policy ¢Ò 4(a)(ii)
has not been satisfied
Although the
Respondent registered the Disputed
Domain Name five months after Complainant
has filed the BLUESTONE trademark, Respondent¡¯s
registration of the Disputed Domain Name was six months before the mark was registered with the USPTO.
There is no
evidence that Respondent knew the existence of the Mark at the time of
registration of the Disputed Domain Name.
There is no evidence that Respondent has attempted to sell, rent or otherwise transfer the Disputed Domain Name for profit, has
engaged in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, or has registered the Disputed
Domain Name primarily for the purpose of disrupting the business of a
competitor.
Since Respondent¡¯s operation of its
website is not related to the mark¡¯s designated services, it does not create a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of Respondent¡¯s web site or location or of a service on Respondent¡¯s web site or location.
Accordingly, the Panel finds that
Policy ¢Ò 4(a)(iii) has not been satisfied.
DECISION
As stated above,
Complainant has failed to establish
all three elements required under the ICANN Policy.
In addition, as for
the remedy Complainant sought, the transfer of the Disputed Domain Name to
Complainant should be reviewed in perspective of other businesses that uses the
term ¡°bluestone¡± as a part of their marks or trade names. The Disputed Domain Name is not ¡°BluestoneBuilder.com.¡± It is just ¡°bluestone.com.¡± From
the internet search, it was
found that there are several businesses that use ¡°bluestone¡± in their trade name. If that is the case,
there can be many business entities/individuals that want to register and use
the domain name ¡°bluestone.com¡± in their respective business fields. Merely the fact that Complainant submitted the Complaint ahead of other business entities/individuals
will not entitle the Complainant to monopolistically use the domain name ¡°bluestone.com¡± excluding all others. There should be
fair competition among all business entities/individuals in various fields that
are using or want to use ¡°bluestone¡±
in their trade name in respective fields.
Accordingly, it is ordered that Complainant¡¯s request for transfer of <bluestone.com> domain name be DISMISSED.
Hong Oo Baak, Panelist
Dated: May 29, 2009
National
Arbitration Forum
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