La Marzocco International LLC v. han sangmyung
Claim Number: FA1212001476557
Complainant is La Marzocco International LLC (“Complainant”), represented by Mona Qureshi-Hart of Hart IP Law & Strategies LLC, Colorado, USA. Respondent is han sangmyung (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lamarzoccokorea.com>, registered with Gabia, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2012; the National Arbitration Forum received payment on January 23, 2013. The Complaint was submitted in both English and Korean.
On January 22, 2013, Gabia, Inc. confirmed by e-mail to the National Arbitration Forum that the <lamarzoccokorea.com> domain name is registered with Gabia, Inc. and that Respondent 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”).
On January 23, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of February 12, 2013 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@lamarzoccokorea.com. Also on January 23, 2013, 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 February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
· Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations for the LA MARZOCCO mark (Reg. No. 2,038,132 registered on Feb. 18, 1997). Complainant has also filed the LA MARZOCCO mark for registration with the Korea Intellectual Property Office (“KIPO”) (App. No. 4120110040144 published for opposition on September 10, 2012).
· Respondent’s <lamarzoccokorea.com> domain name is confusingly similar because it has merely tagged a geographic term, “korea,” to the LA MARZOCCO mark.
· Respondent has not been known by the <lamarzoccokorea.com> domain name. Respondent is not an employee, agent, contractor or distributor of Complainant, nor does Respondent hold any other type of relationship with Complainant.
· Respondent is using the disputed domain name to post a copy of Complainant’s website to Respondent’s website. Respondent’s use of the domain name is not in connection with any offering of goods or services and it diverts customers seeking a good or service in Korea from Complainant.
· Respondent is not making an active use of the disputed domain name as Respondent’s website merely contains a cached version of Complainant’s 2006 website.
· Respondent is clearly looking to sit on the resolving website and is not looking to do anything other than divert traffic or divest people away from websites.
· Respondent had knowledge of Complainant’s rights. Respondent’s <lamarzoccokorea.com> domain name consists of a cached 2006 version of Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LA MARZOCCO mark. Respondent’s domain name is confusingly similar to Complainant’s LA MARZOCCO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lamarzoccokorea.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant argues that it owns USPTO trademark registrations for the LA MARZOCCO mark (Reg. No. 2,038,132 registered on Feb. 18, 1997). Complainant notes that it has also filed the LA MARZOCCO mark for registration with the KIPO (App. No. 4120110040144 published for opposition on September 10, 2012). Complainant’s registration of the domain name with the USPTO is itself sufficient to satisfy a showing of rights under Policy ¶ 4(a)(i), even though Respondent is located in Korea. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant next alleges that Respondent’s <lamarzoccokorea.com> domain name is confusingly similar because it has merely tagged a geographic term, “korea,” to the LA MARZOCCO mark. Respondent has also deleted the spacing in the LA MARZOCCO mark and added the generic top-level domain (“gTLD”) “.com.” Neither spacing nor the gTLD is relevant to this analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel agrees with Complainant that the addition of a geographic descriptor such as “korea” does nothing to diminish the dominance of the LA MARZOCCO mark in the domain name. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Thus the Panel finds that the <lamarzoccokorea.com> domain name is confusingly similar to the LA MARZOCCO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has not been known by the <lamarzoccokorea.com> domain name. Complainant also asserts that Respondent is not an employee, agent, contractor or distributor of Complainant, nor does Respondent hold any other type of relationship with Complainant. The WHOIS information states that the domain name is registered to “han sangmyung.” When there is no evidence connecting a respondent to a disputed domain name, it can be determined that the respondent is not commonly known by the disputed domain name. See 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). The Panel therefore finds that Respondent is not commonly known as the <lamarzoccokorea.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is using the disputed domain name to post a copy of Complainant’s website to Respondent’s website. Respondent’s use of the domain name is not in connection with any offering of goods or services and it diverts customers seeking a good or service in Korea from Complainant. A respondent makes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of a disputed domain name, when it seeks to pass itself off as a complainant by adopting a website nearly identical to a complainant’s website. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel agrees with Complainant and finds that Respondent’s use of the <lamarzoccokorea.com> domain name to resolve to a cached version of Complainant’s website constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has an exact copy of Complainant’s website from 2006 posted at the resolving website from the disputed domain name. Complainant asserts that Respondent is clearly looking to sit on the website and is not looking to do anything other than divert Internet traffic away from Complainant. Respondent’s efforts to pass itself off as Complainant indicate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant argues that Respondent had knowledge of Complainant’s rights. Complainant bases this argument on the observation that Respondent’s <lamarzoccokorea.com> domain name consists of a cached 2006 version of Complainant’s own website. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name based upon Respondent’s use of Complainant’s own website, and that Respondent’s actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied 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 <lamarzoccokorea.com> domain name be TRANSFERRED from Respondent to Complainant
Bruce E. Meyerson, Panelist
Dated: February 23, 2013
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