national arbitration forum

 

DECISION

 

Nexcess.net L.L.C. v. Hochul Jung

Claim Number: FA1203001436101

 

PARTIES

Complainant is Nexcess.net L.L.C. (“Complainant”), represented by George T. Schooff of Harness, Dickey & Pierce, P.L.C., Michigan, USA.  Respondent is Hochul Jung (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2012; the National Arbitration Forum received payment on March 26, 2012. The Complaint was submitted in both English and Korean.

 

On March 26, 2012, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <nexess.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 has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.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 March 30, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of April 19, 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@nexess.com.  Also on March 30, 2012, 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 April 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant makes the following contentions:

1.         Complainant has rights in the NEXCESS mark which it uses in connection with goods and services related to computer hosting software applications;

2.         Complainant registered its NEXCESS mark (Reg. No. 3,947,991 filed November 5, 2010; registered April 19, 2011) with the United States Patent and Trademark Office (“USPTO”);

3.         Complainant  has common law marks rights in the NEXCESS mark;

4.         The <nexess.com> domain name is confusingly similar to the NEXCESS mark;

5.         Respondent is not commonly known by the <nexess.com> domain name;

6.         The <nexess.com> domain name resolves to a website used only to offer the <nexess.com> domain name for sale;

7.         Respondent has made a pattern of registering and using domain names in bad faith;

8.         Respondent registered and is using the <nexess.com> domain name primarily for the purpose of selling the disputed domain name for more than the out-of-pocket costs.

 

B. Respondent

Respondent failed to submit a Response in this proceeding but the Panel notes that Respondent registered the disputed domain name on April 20, 2008.

 

 

FINDINGS

 

1. Complainant is a United States company that has been engaged in computer hosting and related activities since 2000;

2. Complainant registered its NEXCESS mark (Reg. No. 3,947,991 filed November 5, 2010; registered April 19, 2011) with the United States Patent and Trademark Office (“USPTO”);

3. Complainant has had common law trademark rights in the NEXCESS mark since 2000;

4. Complainant has also registered the <nexcess.com> and <nexcess.net> domain names that resolve to a website that it uses in its business.

5. Respondent registered the disputed domain name on April 20, 2008. It resolves to a website used only to offer the <nexess.com> domain name for sale.

 

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

         

The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings Korean.

 

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.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, Complainant contends that it has rights in the NEXCESS mark. Complainant submits that it registered, through the USPTO, the NEXCESS mark (Reg. No. 3,947,991 filed November 5, 2010; registered April 19, 2011). Panels have found that, regardless of the location of the parties, the registration of a mark is sufficient evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel finds that Complainant has rights in the NEXCESS mark pursuant to Policy ¶ 4(a) (i), dating back to November 5, 2010.

 

Complainant also contends that it has common law rights in the NEXCESS mark in addition to its rights to the registered trademark. Complainant alleges that the NEXCESS mark has become famous and distinctive and that it has extensively and exclusively used the mark. Complainant contends that the NEXCESS mark has become well and favorably known to the public and has also said in the Amended Complaint that “No later than 2000, well before the acts that are the subject of this proceeding, Complainant Nexcess.net L.L.C. (“Nexcess”) first began promoting its goods and services throughout the United States, Canada and the world using its NEXCESS mark….(that the) NEXCESS mark allowed consumers to readily identify and distinguish its goods and services from those of others…” and that ” Nexcess’ extensive and exclusive use of its NEXCESS mark has generated common law rights in the mark (“Common Law Mark”).” The    evidence of the use of the NEXCESS mark prior to its trademark registration is the listing of a first use date on the trademark registration of October 30, 2000. Complainant has also put in evidence that its own domain names <nexcess.com> and <nexcess.net> resolve to its website and on that basis the Panel has deemed it appropriate to examine that website. It is apparent from the website that Complainant has used the name Nexcess since the year 2000 as its name and that the name has clearly come to be identified as the source of the goods and services that Complainant provides.

 

On the basis of the foregoing, the Panel finds that Respondent has established common law  trademark rights in the NEXCESS mark under Policy ¶ 4(a)(i) dating back to October 30, 2000. 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 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 ).

 

The next question is whether the <nexess.com> domain name is confusingly similar to Complainant’s NEXCESS mark and Complainant submits that it is. The Panel determines that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a) (i) analysis and that view is consistent with many UDRP decisions. 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel also finds that Respondent’s deletion of the letter “c” from Complainant’s mark in the disputed domain name fails to distinguish the <nexess.com> domain name from Complainant’s NEXCESS mark as such a minor change has never been accepted as negating confusing similarity that otherwise exists. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered GRANAROLO mark). Therefore, the Panel finds that Respondent’s addition of a gTLD and deletion of one letter fails to negate a finding of confusing similarity and that the <nexess.com> domain name is confusingly similar to Complainant’s NEXCESS mark pursuant to Policy ¶ 4(a) (i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

 It is now well established that 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.”).

 

The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s well established NEXCESS mark and to incorporate it into his domain name, making only the minor change of deleting a single letter from the mark;

(b)  Respondent has then linked the domain name to a website where the only content is a statement in effect that the domain name is for sale;

(c)  Respondent has engaged in the foregoing activity without the approval or agreement of Complainant;

(d)  Complainant also relies on the fact that, as Complainant claims, Respondent is not commonly known by the <nexess.com> domain name. Complainant contends that Respondent has never used any trade or service marks which reflect the NEXCESS mark. The WHOIS record that Complainant provides to the Panel lists “Hochul Jung” as the domain name registrant for the <nexess.com> domain name. Panels have found that the contentions made by the complainant, as well as the WHOIS record, are often illustrative of whether the respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply); see also 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). The Panel therefore finds that Respondent is not commonly known by the <nexess.com> domain name pursuant to Policy ¶ 4(c) (ii).

(e)Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant contends that the <nexess.com> domain name resolves to a website which is used solely to offer the disputed domain name for sale. Complainant provides evidence of its correspondence with Respondent where Complainant offered to purchase the disputed domain name for $200 and Respondent countered with a demand of $5,500. Panels have found that an intent to sell a disputed domain name, especially for an amount in excess of out-of-pocket costs, is not a protected use of a disputed domain name. See 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); see also 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)). The Panel therefore finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use.

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to show that he has rights or legitimate interests in the disputed domain name, the Panel finds that he has not rebutted the prima facie case and that Respondent lacks rights and legitimate interests in the <nexess.com> domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

  

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant relies on Policy ¶ 4(b) (i). In support of that submission, Complainant argues that Respondent registered and is using the <nexess.com> domain name in bad faith. Complainant has established by evidence that Respondent uses the <nexess.com> domain name to display an offer to sell the <nexess.com> domain name and that this is evidence of Respondent’s true intent in registering and using the disputed domain name: to sell it for more than Respondent’s out-of-pocket costs. Complainant provides evidence that its offer of $200 to purchase the disputed domain name was countered with a demand from Respondent for $5,500 to sell it. Panels have found that the respondent’s willingness to sell a disputed domain name is evidence of bad faith registration and use. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b) (i).”). Therefore, the Panel finds that Respondent acted in bad faith by registering and using the <nexess.com> domain name in order to sell it pursuant to Policy ¶ 4(b) (i). 

 

Secondly, Complainant argues that Respondent has made a pattern of registering and using disputed domain names in bad faith. Complainant has submitted evidence that Respondent, Hochul Jung, has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants.  See Club Méditerranée S.A. v. Jung Hochul (a/k/a Hochul Jung), D2000-1427 (WIPO Jan. 25, 2001); see also Echelon Corp. v. Jung Hochul, D2001-0939 (WIPO Oct. 4, 2001); see also Biohit Oyj v. Hochul Jung, D1208-1548 (WIPO Jan. 19, 2009). Despite the transposition of the first and last name of the Respondent in the prior UDRP decisions and the current dispute, Complainant presents Respondent as being the same as the respondents in the past disputes. The Panel, based on Complainant’s presumptions and the inclusion of the “a/k/a Hochul Jung” in the Club Méditerranée S.A., supra, dispute, finds that Respondent is the same respondent as those listed in the prior UDRP cases that Complainant cites. Panels have found that multiple adverse UDRP proceedings constitute evidence of a respondent’s serial cybersquatting and are evidence of the respondent’s bad faith registration and use under Policy ¶ 4(b) (ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Thirdly, having regard to the totality of the evidence, the submissions of Complainant and the fact that Respondent has not given any explanation for using Complainant’s trademark in its domain name without permission, the Panel finds that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

In this regard, the Panels notes that although the disputed domain name was registered on April 20, 2008 and the NEXCESS trademark was registered after that date, namely on April 19, 2011, with effect from November 5, 2010 registered, Complainant’s common law trademark rights were established as from the year 2000 and thus preceded the registration of the disputed domain name. Complainant thus had rights in the mark before the disputed domain name was registered.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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

 

 

The Honourable Neil Anthony Brown QC  

Panelist

Dated:  April 27, 2012

 

 

 

 

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