Board of Regents, The University of Texas System v. Deggil Yi / ECL Technologies and Charles Cho/ Soonyoung Interaction
Claim Number: FA1202001428670
Complainant is Board of Regents, The University of Texas System (“Complainant”), represented by Jered E. Matthysse, Texas, USA. Respondent is Deggil Yi / ECL Technologies and Charles Cho/ Soonyoung Interaction (“Respondent”), represented by Charles Jo, Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utsystem.xxx>, registered with united-domains AG.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 9, 2012.
On February 10, 2012, united-domains AG confirmed by e-mail to the National Arbitration Forum that the <utsystem.xxx> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. united-domains AG has verified that Respondent is bound by the united-domains AG 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 February 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2012 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@utsystem.xxx. Also on February 10, 2012, 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.
A timely Response was received and determined to be complete on March 1, 2012.
Complainant submitted an Additional Submission on March 6, 2012 which was deemed to be in compliance with Forum Supplemental Rule 7.
On March 9, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainants
Complainant contends that the domain name <utsystem.xxx> is identical or confusingly similar to Complainant’s UT SYSTEM trademark because the litigious domain name consists entirely of the identical trademark with the addition of the gTLD .XXX. Complainant also proffers that the Respondent has no rights or legitimate interests in the domain name because, before the cease-and-desist letter was sent, the domain name was a non-resolving domain which redirects internet users on the website <sex.com> which happens to be an adult-content website which has not been endorsed by Complainant. Lastly, the disputed domain name is used in bad faith as Respondent requested the Complainant to pay an amount of $20 000 and threatened to post adult-oriented content if his request did not prosper. The use of the disputed domain name overtly tarnishes Complainant’s reputation in the education and medical realms.
B. Respondent
Firstly, Respondent asserts that it has no link with the former Registrant and that he never received Complainant’s cease-and-desist letter. Respondent contended that the acronym UT may have several meanings. Moreover, Respondent has no relation with Complainant’s activities because the content of the website to which the disputed domain name redirects is an adult content. As a result, there cannot be any risk of confusion between the disputed domain name and Complainant’s trademarks. Respondent does not use the website in such a way to let Internet users believe that it has received any endorsement or it has any link with Complainant. Respondent further asserts that trademark rights cannot interfere with a domain name registration. Respondent further underlined that he makes a fair use of the domain name even if the narrative is commercially sold because the domain name takes its original meaning to provide pornographic contents. Respondent purports that Complainant’s reputation is circumscribed to the United States. Lastly, Respondent highlights that he has never engaged in selling products, whether or not similar to the products of Complainant. Respondent alleges that Complainant’s contention amounts to a patent troll conduct.
C. Additional Submissions
Complainant’s Additional Submissions noted that Respondent attempted to mislead the National Arbitration Forum into thinking that he has no link with the first Registrant and that he was not aware of the dispute before the Complaint was filed. Respondent did not dispute that the Complainant has rights in the UT System Marks. According to the Complainant, there is no denying that the UT System Marks is portrayed as being famous for the public across the world as Complainant’s records clearly evidence. Complainant also underlines that the mere omission of a space between the word UT and SYSTEM must be disregarded in a finding of identicality. Respondent argued that the expression “distribution system” is translated by “UT-sistam” in Korean but he did not give any evidence in order to support this assertion. Secondly, Respondent has not shown it has any rights or legitimate interests in respect of the disputed domain name. Lastly, there is a bulk of evidences which show up that Respondent uses the domain name in bad faith. Respondent e-mails cast no doubt on the fact that he deliberately registered the domain name in order to derive economic profit of it in selling it to Complainant for a price exceeding by far its out-of-pocket costs.
Complainant is Board of Regents, The University of Texas, a state board established for the purpose of governing The University of Texas System (known under the coined expression of the “UT System”), which happens to be a system of highly regarded institutions of higher education. The UT system encompasses not less than nine universities and six health institutions. Education, medicine, scientific research and development, athletics are glimpses of the realms targeted by Complainant’s activities.
Complainant does not provide Online Adult Entertainment, Represent Providers, or Provide products or services to Providers and Representatives.
Complainant underlined that it has been using the UT SYSTEM Marks in association with its activities for more than a century and in addition to common law rights, has secured U.S trademark registrations for its marks. It further occurs that Complainant has established <utsystem.edu> as the primary domain name for its website where it mainly communicates on its activities.
Respondent does not seem to have any business relation or connection to Complainant. Respondent was firstly Charles Cho and Soonyoung Interaction which registered the domain name on December 9, 2011. The domain name redirects Internet users on the website <sex.com> which displays adult content. Then, the ownership of the domain name was allegedly altered but the e-mail of the administrative contact remained the same. Currently, the domain name still redirects Internet users on the website <sex.com>. According to Respondent, from the inception, the registration of the domain name was motivated by the creation of a business model focusing on the adult industry specifically targeting the Asian audience.
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."
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged both in the Complaint and Additional Submission that the entities which control the domain name at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends in its Additional Submission that the first registrant of the disputed domain name is the same entity as the individual claiming to be the “new” registrant of the disputed domain name. It has come to the attention of the Panel that the original e-mail address used for correspondence between the original registrant and Complainant is the same e-mail address currently being used by Respondent to communicate with Complainant and the FORUM. Complainant also notes that Respondent denies having knowledge of prior communications with Complainant because it was a different entity, but then explains what those prior communications were about. Complainant states that changes made to the registrant information by Respondent were a transparent attempt to try and avoid liability for its actions in this dispute.
Thus, the Panel finds that Complainant has presented sufficient evidence to establish that the disputed domain name is controlled by the same entity and thus proceed with the instant proceedings
Preliminary Issue: Non-UDRP Legal Arguments
Respondent argues various legal points pursuant to Korean trademark law as they may apply to the rights and legitimate it has in the disputed domain name, as well as the limited scope and application of Complainant’s rights in the UT mark. The Panel cannot but remind that the instant dispute is governed by the UDRP and not Korean law, so the Panel disregards these arguments. Again, while Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis is strictly confined to an analysis under the UDRP Rules and does not address any arguments made by either party with respect to Korean trademark law.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant contends that it has established its rights in the UT and Design mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,502,194 registered August 30, 1988). Complainant submits the trademark certificate that incorporates the UT and Design mark, as well as other trademark registrations used by Complainant for its higher education institution. Based upon the registrations provided, the Panel finds that Complainant has established its rights in the UT and Design mark under Policy ¶ 4(a)(i). See 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); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”).
Complainant also contends that it has established its common law rights in the UT SYSTEM mark as it’s been used in conjunction with its business for decades. Complainant states that the mark is used to portray its university system that operates in the state of Texas. Complainants submits multiple brochures and publications in both its Complaint and Additional Submission annexes to illustrate the pervasive use of the mark in association with its education business. Based upon the evidence provided the Panel finds that Complainant has established its rights in the UT SYSTEM mark under Policy ¶ 4(a)(i) by using it in conjunction with its education services continuously and in such a manner that the general public now associates the mark with its business. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant also asserts that Respondent’s disputed domain name is confusingly similar to its UT and Design mark, and in its Additional Submission it asserts that the domain is identical to the UT SYSTEM mark. Complainant states that the disputed domain name includes the entire UT mark, merely adding the descriptive term “system” and the top-level domain (“TLD”) “.xxx.” Complainant claims that the term “system” describes the University of Texas Education System and makes the domain identical to its UT SYSTEM mark, but for the space between terms. The Panel concludes that Respondent’s <utsystem.xxx> domain name is confusingly similar to Complainant’s UT mark under Policy ¶ 4(a)(i) or that the disputed domain name is identical to Complainant’s UT SYSTEM mark under Policy ¶ 4(a)(i). See 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.”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also 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”).
While Respondent contends that the <utsystem.xxx> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel cannot but underline that 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Deggil Yi / ECL Technologies.” The Panel notes that Respondent does not claim that it is commonly known by the disputed domain name nor does it offer evidence to support such a claim. Based upon the evidence provided, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also contends in its Complaint and Additional Submission that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent’s disputed domain name resolves to <sex.com>. Complainant states that <sex.com> is an adult-oriented website; however, Complainant fails to provide evidence of what content that website actually provides. Nonetheless, the Panel conducted researches and it occurs that <sex.com> domain name offers adult-oriented materials.
The purpose of the .xxx TLD is to provide adult-oriented materials, so the simple provision of adult-oriented materials on a .xxx site is not necessarily a lack of rights or legitimate interests. However the panel finds that Respondent is simply redirecting a domain name containing Complainant’s mark, which is not otherwise a common or generic term (particularly unassociated with any legitimate sexual connotation), to <sex.com> as a likely affiliate for payment. Respondent has not demonstrated a legitimate business scheme whereby “utsystem” would or should be associated with Respondent (and/or <sex.com>), rather than Complainant. Consequently, the Panel concludes that the disputed domain name is not being used to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
Complainant argues in its Complaint and Additional Submission that Respondent registered the disputed domain name for the sole purpose of selling it to Complainant, which demonstrates that Respondent lacks any rights or legitimate interests in the domain name. Complainant submits multiple e-mail conversations between it and Respondent where Respondent offers to sell the domain to Complainant for $20,000.00. One of these mails gives some hints that Respondent engaged himself in a cybersquatting pattern when Respondent in its e-mail dated of January 11, 2012 said that he has “negotiated deals with many other entities. The University of Texas won’t be alone” (Complainant’s Exhibit I). The Panel finds that Respondent’s attempts to sell the <utsystem.xxx> domain name to Complainant for such a large amount demonstrates a lack of rights or legitimate interests in the domain under Policy ¶ 4(a)(ii) on the part of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii));
Complainant contends in its Complaint and Additional Submission that Respondent registered the disputed domain name for the sole purpose of selling it back to Complainant for a fee exceeding by far his out-of-pocket costs. Complainant submits e-mail conversations it had with Respondent addressing the disputed domain name where Respondent does appear to offer the domain name to Complainant for $20,000.00. The Panel finds that this evidence indicates that Respondent was seeking to sell the disputed domain name to Complainant, demonstrating bad faith registration under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant also contends that Respondent registered the disputed domain name for its own commercial gain which constitutes bad faith registration and use. Complainant states that the disputed domain name redirects Internet users to the <sex.com> website. Complainant claims that the website offers adult-oriented material and that Respondent very likely collects affiliate fees from the <sex.com> website owner based on the diversion scheme. Therefore, the Panel finds that Respondent’s present use of the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(a)(i) because Respondent is attempting to gain commercially from the use of Complainant’s mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <utsystem.xxx> domain name be TRANSFERRED from Respondent to Complainant .
Nathalie Dreyfus, Panelist
Dated: March 23, 2012
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