national arbitration forum

 

DECISION

 

Trace Foundation v. Trace Foundation Inc

Claim Number: FA1105001390623

 

PARTIES

Complainant is Trace Foundation (“Complainant”), represented by Wendy D’Amico, New York, USA.  Respondent is Trace Foundation Inc (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tracefoundation.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint, in both the Korean and English languages, to the National Arbitration Forum electronically May 25, 2011; the National Arbitration Forum received payment June 23, 2011

 

On June 24, 2011, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <tracefoundation.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name.  Inames Co., Ltd. d/b/a inames.co.kr verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 24, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 14, 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@tracefoundation.com.  Also on June 24, 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 July 19, 2011, 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 sits 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.

 

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.    The domain name that Respondent registered,  <tracefoundation.com> is identical to Complainant’s TRACE FOUNDATION mark.

 

2.    Respondent has no rights to or legitimate interests in the <tracefoundation.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, Trace Foundation, is a registered 503(c)(3) non-profit organization that is based out of New York City, New York.  Complainant uses its name and mark to support Tibetan culture and language while strengthening the ability of Tibetan communities to meet their own needs by providing grants to various individuals and groups.  Complainant has been using the TRACE FOUNDATION mark since 1993 in providing the above-identified services. 

 

Respondent, Trace Foundation Inc, registered the <tracefoundation.com> domain name August 1, 2010.  Respondent’s disputed domain name resolves to a website that features a search engine and various third-party links to unrelated businesses, as well as a hyperlink to make an offer to purchase the domain name for a minimum bid of $1,000.  When contacted by Complainant, Respondent stated that it would sell the domain name to Complainant for $10,000. 

 

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."

 

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 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 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.

 

Identical to and/or Confusingly Similar

 

Complainant does not own a trademark registration with any governmental trademark authority.  However, the Panel notes that Complainant need not own a valid trademark to establish rights under Policy ¶ 4(a)(i), where Complainant has provided sufficient evidence to establish common law rights.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant alleges that it began operating under the TRACE FOUNDATION mark in 1993.  Complainant submits evidence to show that on June 2, 1993, it registered itself with the Internal Revenue Service in New York, USA, thus beginning to operate as a non-profit, non-governmental organization.  Further, Complainant submits evidence to show that it currently owns twenty-three domain names that all resolve to its original website located at <trace.org>, which was originally registered by Complainant August 16, 1997.  Complainant also notes that it previously owned the disputed domain name, but inadvertently allowed the domain name to lapse in May 2010, and could not purchase it back in time.  The Panel finds that based upon the evidence submitted by Complainant, it has been continuously using its name and mark since 1993, and based on this proof, the Panel finds that Complainant established common law rights in the TRACE FOUNDATION mark that date back to June 2, 1993.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Goepfert  v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights.  The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).

 

Complainant contends, and the Panel agrees, that the domain name <tracefoundation.com> is identical to Complainant’s TRACE FOUNDATION mark.  The Panel notes that it has been long settled under the UDRP, that simply removing a space between the terms of a mark and adding a generic top-level domain (“gTLD”) such as “.com” is not sufficient to render the domain name distinct from the mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). 

 

Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent has no rights to or legitimate interests in the <tracefoundation.com> domain name.  Complainant is required to make a prima facie case to support these allegations under Policy ¶ 4(a)(ii).  Once the Complainant has made a prima facie case, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name.  See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). 

 

The Panel finds that Complainant made a prima facie showing.  Given Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name.  See 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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, this Panel still evaluates the evidence on record to determine whether it suggests that Respondent has rights and legitimate interests in the <tracefoundation.com> domain name under Policy ¶ 4(c). 

 

The WHOIS information for the <tracefoundation.com> domain name identifies “Trace Foundation Inc” as the registrant.  However, Complainant believes that Respondent simply used that name in the WHOIS to make it appear as though it was actually operating under that name.  Complainant argues that after investigating the address and contact information given in the WHOIS information, no company exists under the “Trace Foundation Inc,” identified; but that the address points to another company owned by the previously-listed Respondent in this dispute.  Based upon such information, and the lack of a response from Respondent, the Panel finds that Respondent is not commonly known by the <tracefoundation.com> domain name under a Policy ¶ 4(c)(ii) analysis.  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).

 

Further, Complainant submits screen shot evidence to show that Respondent is using the disputed domain name to resolve to a website that features a search engine, various third-party links to unrelated businesses, and a link to a portion of the website allowing Internet users to make a monetary offer to purchase the domain name.  Complainant contends that Respondent does not show rights or legitimate interests in the disputed domain name by featuring such links, especially where Respondent also is attempting to sell the domain name for a profit.  Further, Complainant contends that it previously owned the disputed domain name until May 2010, when the domain name inadvertently lapsed, allowing Respondent to register it.  The Panel finds that the circumstances surrounding the domain name, and Respondent’s use of the domain name, allow a finding that Respondent does not have rights or legitimate interests in the domain name. 

 

The Panel further finds that Respondent’s usage of the domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).

 

Further, Respondent advertises the domain name as being for sale for $1,000. as a minimum bid; however, Complainant submits evidence to show that when it contacted Respondent in an attempt to re-purchase the domain name,  Respondent quoted a price of $10,000. The Panel finds that such an offer to sell the disputed domain name to Complainant is evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See 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.”); see also 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).

 

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).

 

Registration and Use in Bad Faith

 

Complainant alleges, and submits evidence to show, that Respondent has been attempting to auction the disputed domain name to the highest bidder since registering the domain name.  Complainant further submits e-mail correspondence to show that when Complainant contacted Respondent regarding the purchase of the domain name that Respondent would not accept anything less than $10,000. from Complainant.  Therefore, Complainant argues that Respondent is attempting to sell the disputed domain name for an amount well in excess of its costs in obtaining the domain name, and that such evidence indicates Respondent’s bad faith registration and use.  The Panel agrees, and finds that Respondent’s attempts to auction the disputed domain name to Complainant, as well as to the general public, is evidence to support findings of bad faith registration and use under Policy ¶ 4(b)(i).  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 Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).

 

Complainant has also submitted evidence to show that Respondent is using the disputed domain name to resolve to a website that features a search engine and various third-party links to unrelated businesses and websites.  The Panel presumes that Respondent receives commercial compensation for its use of the domain name through its implied association with Complainant.  Therefore, the Panel finds that Respondent’s use of the domain name at issue is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith 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)).

 

Lastly, Complainant alleges that it had previously owned the disputed domain name until May 2010 when the domain name inadvertently lapsed in registration.  Complainant argues that it attempted to re-register the domain name immediately, but that it could not do so before Respondent obtained the domain name.  The Panel finds that Complainant’s previous registration of the domain name, coupled with the circumstances surrounding Respondent’s use of the domain name, are indicative of the fact that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).

 

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).

 

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 <tracefoundation.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: July 27, 2011.

 

 

 

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