Bacardi & Company Limited v. Park HyungJin
Claim Number: FA1111001415825
Complainant is Bacardi & Company Limited (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Park HyungJin (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bacarditogether.com>, registered with Megazone Corp. d/b/a HOSTING.KR.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2011; the National Arbitration Forum received payment on November 28, 2011. The Complaint was submitted in both Korean and English.
On November 16, 2011, Megazone Corp. d/b/a HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <bacarditogether.com> domain name is registered with Megazone Corp. d/b/a HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp. d/b/a HOSTING.KR has verified that Respondent is bound by the Megazone Corp. d/b/a HOSTING.KR 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 November 30, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of December 20, 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@bacarditogether.com. Also on November 30, 2011, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail 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 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 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 <bacarditogether.com> domain name is confusingly similar to Complainant’s BACARDI mark.
2. Respondent does not have any rights or legitimate interests in the <bacarditogether.com> domain name.
3. Respondent registered and used the <bacarditogether.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bacardi & Company Limited, began using its BACARDI mark in 1862 in connection with its alcoholic beverages and entertainment services. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BACARDI mark (e.g., Reg. No. 310,654 registered March 6, 1934).
Respondent, Park HyungJin, registered the <bacarditogether.com> domain name on October 16, 2011. The disputed domain name resolves to a parked website that contains hyperlinks that resolve to third-party websites, some of which are owned by Complainant’s competitors. Respondent has offered to sell the disputed domain name to Complainant.
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.
Complainant claims rights in its BACARDI mark under Policy ¶ 4(a)(i). Complainant supports this claim by presenting its trademark registrations with the USPTO for its BACARDI mark (e.g., Reg. No. 310,654 registered March 6, 1934). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels held that a trademark registration with the USPTO sufficiently demonstrated rights in a mark for the purposes of Policy ¶ 4(a)(i). Respondent does not reside or operate in the United States where Complainant owns its trademark registrations. However, in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels concluded that, under Policy ¶ 4(a)(i), it does not matter if the respondent resides or operates in the country where the complainant owns a mark as long as the complainant owns a national trademark registration. Thus, the Panel determines that Complainant satisfies the first portion of the Policy ¶ 4(a)(i) analysis: Complainant provides evidence of rights in its BACARDI mark.
Complainant contends Respondent’s <bacarditogether.com> domain name is confusingly similar to Complainant’s BACARDI mark. In comparing the domain name and Complainant’s mark, Complainant notes that the only difference between the two is the addition of the generic term “together.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), the panels found that the addition of a generic term did not remove a disputed domain name from the realm of confusing similarity. The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panels determined that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because all domain names require a top-level domain. Consequently, the Panel holds that Complainant satisfies the second part of the Policy ¶ 4(a)(i) analysis by proving that Respondent’s <bacarditogether.com> domain name is confusingly similar to Complainant’s BACARDI mark.
The Panel finds Complainant satisfies Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <watchgrammysonline.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues Respondent is not commonly known by the <bacarditogether.com> domain name and that Respondent does not operate a business or other organization under the disputed domain name. The WHOIS information identifies “Park HyungJin” as the registrant of the disputed domain name. Respondent did not respond to this case and did not provide evidence that it is commonly known by the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panels held that a respondent is not commonly known by a disputed domain name if the WHOIS information and the evidence in the record does not indicate such a fact. In light of this precedent and the evidence in the record, the Panel concludes that Respondent is not commonly known by the <bacarditogether.com> domain name and, therefore, did not establish rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <bacarditogether.com> domain name. Complainant claims that Respondent uses the disputed domain name to host third-party hyperlinks, some of which resolve to the websites of Complainant’s competitors. Complainant provides screen shot evidence of Respondent’s use. In ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panels found the hosting of competing hyperlinks does not evidence a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel agrees with this precedent and finds that Respondent does not own rights and legitimate interests in the <bacarditogether.com> domain name under Policy ¶¶ 4(c)(i) and (iii) because Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <bacarditogether.com> domain name.
According Complainant, Respondent contacted Complainant in an attempt to sell the <bacarditogether.com> domain name. Complainant argues that this offer to sell the domain name further evidences Respondent’s lack of rights and legitimate interests. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003), the panels agreed with Complainant by holding that a respondent’s general offer to sell the domain name to the complainant was evidence that the respondent lacked rights and legitimate interests in the domain name. Thus, the Panel holds that Respondent does not own rights and legitimate interests in the <bacarditogether.com> domain name for the purposes of Policy ¶ 4(a)(ii).
The Panel finds Complainant satisfies Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <bacarditogether.com> domain name for the purpose of selling the domain name to Complainant, which is evidence of bad faith registration and use. Complainant provides a copy of the e-mail Respondent sent to Complainant that purports to offer the domain name for sale. The correspondence from Respondent does not contain a price. However, the panels in Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002), and Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001), concluded that a general offer to sell a domain name to the complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(i). Consequently, the Panel finds that Respondent registered and uses the <bacarditogether.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant does not contend that Respondent registered and uses the <bacarditogether.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant does claim that Respondent hosts competing hyperlinks on the resolving website. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels determined that such a use disrupts a complainant’s business by redirecting potential customers from the complainant’s website to the competing websites. Based on this precedent, the Panel determines that Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use because Respondent disrupts Complainant’s business.
Moreover, Complainant asserts that Respondent attempts to commercially benefit from the confusion Respondent creates as to Complainant’s association with the disputed domain name. Complainant argues that Respondent creates confusion by registering the confusingly similar disputed domain name that contains Complainant’s BACARDI mark. Complainant claims that Respondent commercially benefits from the confusion by receiving click-through fees from the hyperlinks. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panels found that a respondent’s registration and use of a confusingly similar domain name to host a website hosting competing hyperlinks indicates that the respondent registered and uses the disputed domain name in bad faith. The Panel agrees with these holdings and concludes that Respondent registered and uses the <bacarditogether.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the BACARDI mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panels nonetheless found that the respondents registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii) because the respondents were found to have had actual notice of the complainant’s trademark rights. After examining the record, the Panel finds Respondent had actual notice of Complainant’s rights in the BACARDI mark and, therefore, registered and uses the <bacarditogether.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant satisfies 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 <bacarditogether.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 12, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page