Polydeck Screen Corporation v. Hochul Jung
Claim Number: FA1210001466223
Complainant is Polydeck Screen Corporation (“Complainant”), represented by Neil M. Batavia of Dority & Manning, Attorneys at Law, P.A., South Carolina, USA. Respondent is Hochul Jung (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <polydeck.com>, registered with Inames Co., Ltd.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 9, 2012. The Complaint was submitted in both English and Korean.
On October 8, 2012, Inames Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <polydeck.com> domain name is registered with Inames Co., Ltd. and that Respondent is the current registrant of the name. Inames Co., Ltd. has verified that Respondent is bound by the Inames Co., Ltd. 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 October 10, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of October 30, 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@polydeck.com. Also on October 10, 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 November 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 issues 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 will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
a) Policy ¶ 4(a)(i): Complainant’s rights and the identical nature to the <polydeck.com> domain name.
a. Complainant has rights in the POLYDECK mark which Complainant uses in connection with synthetic screen media to the coal, aggregate, and mining industries. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the POLYDECK mark (e.g., Reg. No. 3,646,657 registered June 30, 2009).
b. The <polydeck.com> domain name is identical to the POLYDECK mark. The only change made to Complainant’s mark in the disputed domain name is the addition of the generic top-level domain (“gTLD”) “.com.”
b) Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <polydeck.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. The disputed domain name resolves to a website which is being passively held so that Respondent may display a notice that the <polydeck.com> domain name is for sale.
c) Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <polydeck.com> domain name.
a. Respondent is attempting to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs. The <polydeck.com> domain name resolves to a website which displays a message that the domain name is for sale. When Complainant contacted Respondent about buying the disputed domain name, Respondent requested $7,000 in exchange for the <polydeck.com> domain name.
b. Respondent had actual or constructive knowledge of Complainant’s rights in the POLYDECK mark. Complainant’s mark is recognized worldwide and has been registered with the USPTO as well as other trademark authorities throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reason set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Finding for Complainant
Complainant contends that it has rights in the POLYDECK mark which Complainant uses in connection with synthetic screen media to the coal, aggregate, and mining industries. Complainant argues that it is the owner of the USPTO registrations for the POLYDECK mark (e.g., Reg. No. 3,646,657 registered June 30, 2009). The Panel finds that, despite Respondent’s location as listed outside of the country in which the POLYDECK mark is registered, Complainant’s demonstration of rights in the POLYDECK mark satisfies the required showing of Policy ¶ 4(a)(i). 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also asserts that the <polydeck.com> domain name is identical to the POLYDECK mark. Complainant contends that the only change made to its mark in the disputed domain name is the addition of the gTLD “.com.” The panel in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), found that gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <polydeck.com> domain name is identical to Complainant’s POLYDECK mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Finding for Complainant
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 lacks rights and legitimate interests in the <polydeck.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record for the <polydeck.com> domain name lists “Hochul Jung” as the domain name registrant. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that the WHOIS record for a disputed domain name is illustrative of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <polydeck.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s lack of rights and legitimate interests is further demonstrated by Respondent’s use of the <polydeck.com> domain name. The Panel notes that Respondent uses the disputed domain name for no active purpose, simply passively holding the domain name as it displays a notice that the <polydeck.com> domain name is for sale. Panels have found that the passive holding of a website without any active use is evidence of a lack of rights and legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). If the Panel finds that Respondent has made an inactive use of the disputed domain name, the Panel finds that Respondent’s inactive holding of the <polydeck.com> 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.
Complainant argues that Respondent’s willingness to sell the disputed domain name similarly obviates rights and legitimate interests. Complainant notes that the <polydeck.com> domain name’s resolving website displays a notice that says “This Domain is for SALE” and a direction of purchase offers. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel held 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. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <polydeck.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Finding for Complainant
Complainant alleges that Respondent registered and is using the <polydeck.com> domain name in bad faith. Complainant argues that bad faith is demonstrated as a result of Respondent’s intent to sell the disputed domain name. Complainant notes that Respondent displays on the <polydeck.com> domain name that the domain name is for sale and invites Internet users to contact Respondent with offers for the purchase of the <polydeck.com> domain name. Complainant provides the Panel with evidence of Respondent’s response to Complainant’s offer in which Respondent requires a minimum sum of $7,000 in exchange for the transfer of the <polydeck.com> domain name. In World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), the panel found that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs. Therefore, the Panel finds that Respondent registered and is using the <polydeck.com> domain name in bad faith in order to sell the domain name pursuant to Policy ¶ 4(b)(i).
Complainant contends that Respondent’s bad faith is clear from the inactivity of the <polydeck.com> domain name. Complainant notes that the disputed domain name resolves to a website which does not have any active use beyond the passive display of a message that the domain name is for sale. Therefore, the Panel finds that Respondent registered and is passively holding the <polydeck.com> domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant contends that Respondent had actual or constructive knowledge of Complainant’s rights in the POLYDECK mark when it registered the <polydeck.com> domain name. Complainant argues that its mark is recognized worldwide and has been registered with the USPTO as well as other trademark authorities throughout the world. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <polydeck.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant has proven this element.
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 <polydeck.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 14, 2012
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