Wellco Enterprises, Inc. v. TaeYoung.Jung
Claim Number: FA1011001356262
Complainant is Wellco Enterprises, Inc. (“Complainant”), represented by David M. Carter of Carter, Schnedler & Warnock, P.A., North Carolina, USA. Respondent is TaeYoung.Jung (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellco.net>, registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DO.
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 electronically November 3, 2010; the National Arbitration Forum received payment November 4, 2010.
On November 5, 2010, KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DO confirmed by e-mail to the National Arbitration Forum that the <wellco.net> domain name is registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DO and that Respondent is the current registrant of the name. KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DO verified that Respondent is bound by the KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DO registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@wellco.net. Also on November 12, 2010, the 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 December 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <wellco.net>, is identical to Complainant’s WELLCO mark.
2. Respondent has no rights to or legitimate interests in the <wellco.net> domain name.
3. Respondent registered and used the <wellco.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wellco Enterprises, Inc., manufactures military type boots. Complainant sells its military type boots under the WELLCO mark. In addition, Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLCO mark (e.g., Reg. No. 3,073,345 filed March 29, 2005; issued March 28, 2006).
Respondent, TaeYoung.Jung, registered the <wellco.net> domain name January 7, 2006. The disputed domain name resolves to a website that displays hyperlinks that resolve to third-party websites that offer military type boots for sale in competition with Complainant’s products. Respondent offered to sell the disputed domain name to Complainant for $3,000.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant asserts rights in the WELLCO mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,073,345 filed March 29, 2005; issued March 28, 2006). The Panel finds this trademark registration establishes Complainant’s rights in the WELLCO mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel also finds that Complainant’s rights in the WELLCO mark date back to the filing date of Complainant’s trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant urges that Respondent’s <wellco.net> domain name is identical to its WELLCO mark. Respondent fully incorporates Complainant’s mark in the disputed domain name and then merely attaches the generic-top level domain (“gTLD”) “.net” to the mark. The Panel finds that the addition of a gTLD to a mark is irrelevant under a Policy ¶ 4(a)(i) analysis. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark).
The Panel finds that the disputed <wellco.net> domain name is identical to Complainant’s WELLCO mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie case to supports its allegations that Respondent has no rights to or legitimate interests in the <wellco.net> domain name under Policy ¶ 4(a)(ii). Once Complainant does so, the burden of proof then shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name. The Panel may find that Respondent’s failure to submit a Response is evidence that Respondent lacks rights or legitimate interests. 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 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.”). However, despite Respondent’s failure to respond, this Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists “TaeYoung.Jung” as the registrant of the disputed domain name, which the Panel finds is not nominally similar to the <wellco.net> domain name. Without evidence to the contrary, 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that the <wellco.net> domain name resolves to a website that provides links that resolve to third-party websites that offer military type boots for sale in competition with Complainant’s business. A screen shot of the resolving website shows hyperlinks with titles like “Combat Boots,” “Buy Military Boots,” “Tan Desert Combat Boots,” and “Police & Tactical Boots.” The Panel is permitted to make an inference that Respondent receives commercial gain from its use of the disputed domain name through the receipt of click-through fees. Therefore, the Panel determines that Respondent does not use the <wellco.net> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) and does not use it for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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 also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
In addition, Complainant claims that Respondent offered to sell the <wellco.net> domain name to Complainant for $3,000. The Panel finds that this amount likely exceeds Respondent’s out-of-pocket costs. Accordingly, the Panel finds that Respondent’s offer provides additional evidence that Respondent lacks right and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant for more than its out-of-pocket costs supports findings that Respondent registered and used the domain name in bad faith under a Policy ¶ 4(b)(i) analysis. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
The Panel also finds that Respondent’s domain name redirects Internet users seeking Complainant’s products to a website that provides links to Complainant’s competitors. Accordingly, the Panel finds that the <wellco.net> domain name disrupts Complainant’s business, conduct that also supports findings of registration and use in bad faith under a Policy ¶ 4(b)(iii) analysis. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent intentionally has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, the Panel presumes that Respondent uses the disputed domain name to profit from click-through fees. Moreover, Respondent’s <wellco.net> domain name is identical to Complainant’s WELLCO mark. Therefore, the Panel agrees with Complainant and finds that Respondent’s behavior qualifies as registration and use in bad faith under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellco.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 21, 2010.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page