LKN Communications, Inc. d/b/a ACN, Inc. v. Hye Ok, Lee
Claim Number: FA1004001320246
Complainant is LKN Communications, Inc. d/b/a ACN, Inc.,
represented by Henry B. Ward, of Moore & Van Allen PLLC, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <acn-korea.com>, registered with Today and Tomorrow Co. Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2010. The Complaint was submitted in both the Korean and English languages.
On April 21, 2010, Today and Tomorrow Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <acn-korea.com> domain name is registered with Today and Tomorrow Co. Ltd. and that Respondent is the current registrant of the name. Today and Tomorrow Co. Ltd. has verified that Respondent is bound by the Today and Tomorrow Co. Ltd. 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 May 4, 2010, the Forum served the Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of May 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@acn-korea.com by e-mail. Also on May 4, 2010, the Korean language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
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.
A. Complainant makes the following assertions:
1. Respondent’s <acn-korea.com> domain name is confusingly similar to Complainant’s ACN mark.
2. Respondent does not have any rights or legitimate interests in the <acn-korea.com> domain name.
3. Respondent registered and used the <acn-korea.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LKN Communications, Inc. d/b/a ACN, Inc., is one of the worlds largest direct selling telecommunications service providers and video phones. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ACN mark (e.g., Reg. No. 2,337,694 issued April 4, 2000).
Respondent, Hye Ok Lee, registered the <acn-korea.com> domain name on January 19, 2010. Respondent’s disputed domain name resolves to a website that appears to be the website of Complainant, including links to Complainant’s products, events and employees.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
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 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.
Respondent, Hye Ok Lee, registered the <acn-korea.com> domain name on January 19, 2010. The Panel finds that Complainant has established rights in its ACN mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,337,694 issued April 4, 2000). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <acn-korea.com> domain name is
confusingly similar to Complainant’s ACN mark.
Complainant argues that adding a hyphen, the geographic term “
The Panel finds that Policy ¶ 4(a)(i) has been satisified.
Complainant maintains that Respondent does not have any rights or legitimate interests in the <acn-korea.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the <acn-korea.com> domain name pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized Respondent to use its ACN mark. The WHOIS information for the <acn-korea.com> domain name identifies, “Hye Ok Lee” as the registrant and Respondent offers no evidence to indicate that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent has made its website
resolving from the disputed domain name to appear as if Respondent is
Complainant. Complainant contends that
Respondent has created a website with links to Complainant’s business,
including its independent representatives and commercial activities. Complainant argues that this type of use
creates confusion as to the sponsorship and affiliation of the website and is
not sufficient to be a use in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use. Further,
Complainant contends that Respondent has also displayed various third-party
advertisements on its website, presumably for financial gain, and that such use
is further evidence that Respondent lacks rights and legitimate interests in
the disputed domain name. The Panel
finds that Respondent’s attempt to pass itself off as Complainant and post
various advertisements to third-party businesses is not a use in connection
with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum
Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain
name, confusingly similar to a registered mark, attempts to profit by passing
itself off as Complainant . . . .”); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb.
10, 2003) (holding that the respondent’s use of the disputed domain name to
host a series of hyperlinks and a banner advertisement was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed domain name to divert Internet users to its website that displays information on Complainant’s activities but also various advertisements, presumably for financial gain, is evidence of bad faith. Complainant argues that this use will cause confusion about the source of information and affiliation of the website. The Panel finds that Respondent’s misappropriation of Complainant’s ACN mark in order to display a website similar to Complainant’s website with various advertisements is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acn-korea.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 1, 2010
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