Harry Soderstrom v. Linecom / Noorinet
Claim Number: FA1206001447235
Complainant is Harry Soderstrom (“Complainant”), represented by Stephen J. Stark, Tennessee, USA. Respondent is Linecom / Noorinet (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unibloc-pump.com>, registered with GABIA, INC., and <uniblocpump.com> and <uniblocpumps.com>, registered with NETPIA.COM, INC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 11, 2012. The Complaint was received in both Korean and English.
On June 6, 2012, GABIA, INC. confirmed by e-mail to the National Arbitration Forum that the <unibloc-pump.com> domain name is registered with GABIA, INC. and that Respondent, Linecom, is the current registrant of the name. GABIA, INC. has verified that Respondent is bound by the GABIA, INC. 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”).
After numerous requests, the Registrar, NETPIA.COM, INC., has not confirmed to the National Arbitration that the <uniblocpump.com> and <uniblocpumps.com> domain names are registered with NETPIA.COM, INC. or that the Respondents are the current registrants of the names. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On July 3, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 23, 2012 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@unibloc-pump.com, postmaster@uniblocpump.com, and postmaster@uniblocpumps.com. Also on July 3, 2012, the Korean language Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Having received no response from Respondents, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
Preliminary Issue: Language of the Proceedings
The Registration Agreement for the <unibloc-pump.com> domain name is written in Korean, thereby making the language of the proceedings in Korean. The Registrar for the <uniblocpump.com> and <uniblocpumps.com> domain names failed to confirm the information regarding the disputed domain names. The National Arbitration Forum’s policy, in the absence of verification from the registrar, is to conduct the proceedings in English. However, as the Registration Agreement for the <unibloc-pump.com> domain name is written in Korean and the location of the Registrar for the <uniblocpump.com> and <uniblocpumps.com> domain names is in Korea, and based on Complainant’s strong desire that the case proceed with all three domain names, the National Arbitration Forum determined that the language of the proceedings is Korean. The National Arbitration Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, to Respondents. Respondents did not respond to this case. Based on Respondents’ failure to respond, the Panel elects to make its decision in English. 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.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names 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 that the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names are controlled by a single entity. Complainant notes that the WHOIS information lists Respondent, Noorinet, as the registrant of the <uniblocpumps.com> domain name and Respondent, Linecom, as the registrant of the <unibloc-pump.com> domain name. The Panel notes that Respondent, Noorinet, is also listed as the registrant of the <uniblocpump.com> domain name. Complainant argues that the WHOIS information for all three of the disputed domain names lists the city of Gyeongsangbuk-do, Korea in the contact information. Complainant claims that the listed e-mail address for the <uniblocpumps.com> domain name is suda@dreamwiz.com and the e-mail address for the <unibloc-pump.com> domain name is auto@dreamwiz.com. The Panel notes that the listed e-mail address for the <uniblocpump.com> domain name is suda@dreamwiz.com. Complainant notes that the <uniblocpump.com> and <uniblocpumps.com> domain names are registered with the same registrar, feature identical websites, and host resolving websites that identify Respondent, Linecom, as the owner.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings. Throughout this Decision, the Respondents will be collectively referred to as “Respondents.”
A. Complainant
1. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the UNIBLOC mark (Reg. No. 1,969,508 registered April 23, 1996).
2. Respondents’ <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names are confusingly similar to Complainant’s UNIBLOC mark.
3. The <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names contain Complainant’s UNIBLOC mark, with the addition of the term “pump” or “pumps,” as well as the addition of the generic top-level domain (“gTLD”) “.com” and a hyphen added to the <unibloc-pump.com> domain name.
4. Respondents do not use any of the disputed domain names for a legitimate use.
5. Respondents have never been known by the UNIBLOC mark.
6. Respondents are not making a legitimate noncommercial or fair use of the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names.
7. Respondents are promoting the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names for sale.
8. Respondents have created a likelihood of confusion between Complainant’s UNIBLOC mark and the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names as to who registered, operates, or authorizes the resolving websites.
B. Respondents
Respondents have failed to submit a Response in this proceeding.
Complainant, Harry Soderstrom, owns a U.S. – based company, providing centrifugal and positive displacement pumps throughout the world. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the UNIBLOC mark (Reg. No. 1,969,508 registered April 23, 1996).
Respondents, Linecom / Noorinet, registered the disputed domain names no earlier than January 30, 2011. Respondents are promoting the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names for sale.
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 Respondents’ 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.”).
The Panel finds that Complainant has sufficiently established rights in the UNIBLOC mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 1,969,508 registered April 23, 1996). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant asserts that the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names all contain Complainant’s UNIBLOC mark and the gTLD “.com.” Complainant also states that the <unibloc-pump.com> and <uniblocpump.com> domain names contain the word “pump.” Complainant points out that the <uniblocpumps.com> domain name contains the word “pumps.” Complainant further shows that the domain name <unibloc-pump.com> contains a hyphen in addition to the previous listed variations. The Panel notes that these variations are insufficient to differentiate a disputed domain name from a registered mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondents lack rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondents to show they 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).
Complainant argues that Respondents have never been commonly known by the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names. The Panel notes that the WHOIS information for the disputed domain names list “Linecom / Noorinet” as the registrant. The Panel finds that there is no connection between Respondents and the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names or Complainant’s UNIBLOC mark. Therefore, the Panel finds that Respondents are not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant asserts that Respondents have no rights or legitimate interests in the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names as they do not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondents are offering to sell the disputed domain names to commercially gain from its profits. The Panel notes that the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names resolve to parked sites offering the domain names for sale. Complainant contends that Respondents are attempting to receive compensation by selling the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names. The Panel finds that Respondents’ attempt to sell the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Complainant argues that Respondents’ use of the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names to divert Internet customers seeking Complainant’s website to a website offering to sell the disputed domain names is prima facie bad faith pursuant to Policy ¶ 4(b)(i). Complainant argues that all of the disputed domain names resolve to websites that offer to sell the disputed domain names. The Panel finds that Respondents’ offers to sell the confusingly similar disputed domain names are evidence of bad faith registration and use under Policy ¶ 4(b)(i). See 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).”).
Complainant alleges that Respondents must have had constructive and/or actual notice of Complainant's rights in the UNIBLOC mark prior to registration of the disputed domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds that Respondents had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unibloc-pump.com>, <uniblocpump.com>, and <uniblocpumps.com> domain names be TRANSFERRED from Respondents to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 15, 2012
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