Corbis Corporation v. Hochul Jung
Claim Number: FA0301000140624
PARTIES
Complainant is Corbis Corporation, Seattle, WA, USA (“Complainant”) represented by David K. Tellkeson. Respondent is Hochul Jung, Hayand-up Kyongsan, SOUTH KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digitalstock.com>, registered with Hangang Systems, Inc. d/b/a Doregi.com.
The undersigned certifies that she 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 (the "Forum") electronically on January 8, 2003; the Forum received a hard copy of the Complaint on January 9, 2003. The Complaint was submitted in both Korean and English.
On January 8, 2003, Hangang Systems, Inc. d/b/a Doregi.com confirmed by e-mail to the Forum that the domain name <digitalstock.com> is registered with Hangang Systems, Inc. d/b/a Doregi.com and that Respondent is the current registrant of the name. Hangang Systems, Inc. d/b/a Doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. d/b/a Doregi.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 January 20, 2003, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 2003 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@digitalstock.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain name registered by Respondent, <digitalstock.com>, is identical to Complainant’s DIGITAL STOCK mark.
2. Respondent does not have any rights or legitimate interests in the <digitalstock.com> domain name.
3. Respondent registered and used the <digitalstock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns trademark rights in the DIGITAL STOCK mark pursuant to its registration with the United States Patent and Trademark Office (Reg. No. 2,161,155). Complainant’s DIGITAL STOCK mark is used to denote pre-recorded cd-rom discs containing a collection of commercial quality photographic images. Since at least as early as 1993, Complainant’s predecessor used the DIGITAL STOCK mark in connection with the sale of stock photo digital images nationally and internationally.
Complainant, as successor in interests to the DIGITAL STOCK mark, is well known in the digital images industry and has offices located throughout the United States and worldwide. Complainant has a collection of digital images that amount to the most definitive collection of news, editorial, sports, contemporary, historical, celebrity, and fine art imagery in the world. The DIGITAL STOCK mark is used to market a significant number of image products from Complainant’s collection.
Complainant previously held the domain name registration for <digitalstock.com>. Due to an oversight, however, the registration of the <digitalstock.com> domain name expired November 14, 2000. Before Complainant got a chance to renew the registration, Respondent registered the <digitalstock.com> domain name November 20, 2000. Complainant thereafter contacted Respondent to acquire the registration and Respondent demanded $30,000 for a domain name registration transfer.
Complainant refused to pay this excessive demand and subsequently filed a domain name dispute with the Forum. See Corbis Corp. v. Zest, FA 98441 (Nat. Arb. Forum Sept. 12, 2001). In the current dispute Respondent has a different name, Jung Hochul. However, it is clear that Jung Hochul is the owner of Zest because Jung Hochul submitted a declaration in response to the previous dispute stating, “I am the owner of Zest, Respondent in this proceeding.” Complainant lost the prior dispute for failure to show bad faith registration under Policy ¶ 4(a)(iii), but satisfied Policy ¶¶ 4(a)(i) and (ii). Since the dispute was decided, Complainant discovered additional evidence against Respondent, which Complainant believes is tantamount to bad faith use and registration. That evidence includes Respondent’s using the <digitalstock.com> domain name, in at least two separate instances, to divert potential customers of Complainant’s products and services to websites operated by Complainant’s direct competitors. Specifically, the <digitalstock.com> domain name was used to divert Internet traffic to websites owned by PhotoSpin, Inc., which sells stock photo digital images in direct competition with Complainant and to AGA Chemicals, Inc., which sells printing products and services for stock photo digital images.
Complainant notes that it first became aware of the diversion to PhotoSpin’s website when customers inquired as to Complainant’s affiliation with PhotoSpin and as to whether or not they should make purchases of digital image products through that website.
Moreover, Respondent has been a prior party in a domain name dispute wholly unrelated to the <digitalstock.com> domain name. See Club Med v. Jung Hochul, D2000-1427 (WIPO Jan. 25, 2001). Respondent lost that dispute because Respondent used the <clubmed.net> domain name, which was confusingly similar to Complainant’s CLUB MED mark, to divert those accessing the Internet to another website.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant has demonstrated in this proceeding that it has rights in the DIGITAL STOCK mark through proof of trademark registration with the U.S. Patent and Trademark Office.
Respondent’s <digitalstock.com> domain name contains Complainant’s entire DIGITAL STOCK trademark. The addition of a generic top-level domain is not a distinguishing characteristic when determining that a domain name and a mark are identical. Hence, the focus of the Policy ¶ 4(a)(i) “identical” analysis is on the second level domain, which in the present case is “digitalstock.” That the second level domain does not contain a space between the words in Complainant’s trademark is irrelevant because spaces are impermissible in second level domains. Therefore, Respondent’s domain name is identical to Complainant’s DIGITAL STOCK mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
While the prior decision regarding both Complainant and Respondent over the <digitalstock.com> domain name held that Respondent had no rights or legitimate interests in the domain name, the Panel adjudicates the merits of the present case on the facts and circumstances plead in the present dispute. This ensures that Respondent is given the fullest opportunity to challenge the Complaint and present new facts or circumstances that it may find pertinent. Complainant presented a prima facie case and Respondent failed to respond to it. Thus, the Panel accepts all reasonable allegations as true and will draw all rational inferences in Complainant’s favor. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Prior to the previous action that Complainant filed against Respondent, Respondent had not actively used the <digitalstock.com> domain name. Respondent had held the <digitalstock.com> domain name registration for nearly a year, without using the domain name. However, since the conclusion of the previous dispute, Respondent has used the subject domain name to divert Internet traffic to Complainant’s competitors on two separate occasions. Respondent first diverted potential customers to PhotoSpin, Inc. and then rerouted those who accessed the domain name to a website representing a division of AGA Chemicals, Inc. Both companies offer products and services that are similar to those offered by Complainant, specifically digital images. Moreover, Complainant has presented evidence that Respondent financially benefits from the increased traffic to the competitor’s websites that the <digitalstock.com> domain name generates. Respondent’s initial failure to use the <digitalstock.com> domain name for a valid business purpose and subsequent use to direct Internet traffic to websites of Complainant’s competitors demonstrates a lack of rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Furthermore, all facts point to Respondent’s identity as being Jung Hochul, who responded with a declaration in the prior case filed by Complainant. Respondent has not presented any evidence that would suggest otherwise and Respondent has certainly not argued that it is commonly known by <digitalstock.com>. Therefore, the Panel determines that Respondent has no rights or legitimate interests in the <digitalstock.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <digitalstock.com> domain name and Policy ¶ 4(a)(ii) has been satisfied.
Using a domain name that reflects another entity’s trademark to divert Internet traffic to websites in competition with that entity is a classic example of bad faith under Policy ¶ 4(b)(iv). Respondent used the <digitalstock.com> domain name in that way since the previous domain name dispute filed by Complainant. Since the prior dispute put Respondent on actual notice of Complainant’s business interest in the DIGITAL STOCK trademark and Respondent directly profits from its use of the subject domain name, the Panel finds that the current circumstances warrant a finding of bad faith use and registration under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
Two other circumstances evidence bad faith. First, Respondent offered to transfer the <digitalstock.com> domain name registration rights to Complainant in initial correspondence for $30,000, which was prior to ever using the domain name and is evidence of bad faith. See Randstad Gen. Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000). Second, Respondent previously lost a domain name dispute, not involving Complainant, where Respondent was the infringing party. This prior dispute concerned the use of the well-known CLUB MED mark and the current dispute centers on Respondent’s infringing use of Complainant’s DIGITAL STOCK mark. This prior unrelated circumstance permits the inference that Respondent has an intent to prevent Complainant from reflecting its DIGITAL STOCK trademark in a corresponding domain name. Respondent’s actions are especially egregious because Complainant had inadvertently lost registration rights in the <digitalstock.com> domain name six days prior to Respondent’s registration. Hence, the Panel finds Respondent acted in bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <digitalstock.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 14, 2003.
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