national arbitration forum

 

DECISION

 

ESPN, Inc. v. Minsung Kim

Claim Number: FA1103001375960

 

PARTIES

Complainant is ESPN, Inc. (“Complainant”), represented by R. Holland Campbell of ESPN, Inc., Connecticut, USA.  Respondent is Minsung Kim (“Respondent”), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <espnpokerclub.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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2011; the National Arbitration Forum received payment on March 4, 2011. The Complaint was submitted in both Korean and English.

 

On March 3, 2011, Korea Information Certificate Authority Inc d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <espnpokerclub.com> domain name is registered with Korea Information Certificate Authority Inc d/b/a Domainca.com and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 14, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of April 4, 2011 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@espnpokerclub.com.  Also on March 14, 2011, 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 April 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 (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 a 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <espnpokerclub.com> domain name is confusingly similar to Complainant’s ESPN mark.

 

2.    Respondent does not have any rights or legitimate interests in the <espnpokerclub.com> domain name.

 

3.    Respondent registered and used the <espnpokerclub.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, ESPN, Inc., is a multinational, multimedia sports entertainment company that produces magazines, cable television entertainment and sports programs, and computer and video game programs. Complainant owns multiple trademark registrations for the ESPN mark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 1,345,096  issued June 25, 1985;

Reg. No. 1,811,475  issued December 14, 1993;

Reg. No. 1,833,935  issued May 3, 1994; and

Reg. No. 2,147,722  issued March 21, 1998.

 

Respondent, Minsung Kim, registered the <espnpokerclub.com> domain name on February 23, 2006. The disputed domain name does not currently resolve to an active website.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registrations of its ESPN mark with the USPTO are sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not live or operate in the U.S. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). 

 

Respondent’s <espnpokerclub.com> domain name is confusingly similar to Complainant’s ESPN mark because the disputed domain name merely adds the generic terms “poker” and “club” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that the addition of a generic term to Complainant’s mark does not sufficiently distinguish a disputed domain name from a mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy   ¶ 4(a)(i)). The Panel also finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <espnpokerclub.com> domain name is confusingly similar to Complainant’s ESPN mark.

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain name.

 

Complainant asserts that Respondent has no authority, license, permission or other arrangement with Complainant to use Complainant’s ESPN mark.  The WHOIS information for the <espnpokerclub.com> domain name lists the registrant as “Minsung Kim,” which the Panel finds has no association with the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant states that Respondent’s <espnpokerclub.com> domain name does not currently resolve to an active website.  The Panel finds that such failure to make an active use of the disputed domain name is evidence of Respondent’s lack of rights and legitimate interests according to Policy ¶ 4(a)(ii) as is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).  

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

 

 

 

Registration and Use in Bad Faith

 

When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

Respondent is not actively using the <espnpokerclub.com> domain name as it does not resolve to an active website that displays any content. The Panel finds that this non-use of the disputed domain name is evidence of Respondent’s bad faith registration and use according to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <espnpokerclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  April 14, 2011

 

 

 

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