NICE CAR, INC. v. choi sung sik
Claim Number: FA1302001485765
Complainant is NICE CAR, INC. (“Complainant”), represented by Ancel W. Lewis, Colorado, USA. Respondent is choi sung sik (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name(s) at issue is/are <nicecar.com>, registered with HANGANG Systems,Inc. d/b/a doregi.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2013; the National Arbitration Forum received payment on February 19, 2013. The Complaint was submitted in both Korean and English.
On February 21, 2013, HANGANG Systems,Inc. d/b/a doregi.com confirmed by e-mail to the National Arbitration Forum that the <nicecar.com> domain name is registered with HANGANG Systems,Inc. d/b/a doregi.com and that Respondent is the current registrant of the names. HANGANG Systems,Inc. d/b/a doregi.com has verified that Respondent is bound by the HANGANG Systems,Inc. d/b/a doregi.com 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 4, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of March 25, 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@nicecar.com. Also on March 4, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese 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 makes the following assertions:
1. Respondent’s <nicecar.com> domain name is confusingly similar to Complainant’s NICE CAR mark.
2. Respondent does not have any rights or legitimate interests in the <nicecar.com> domain name.
3. Respondent registered and used the <nicecar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for its NICE CAR mark (Reg. No. 3,205,109 registered Feb. 6, 2007). Complainant has used the NICE CAR mark for vehicle repair services since 1975, and for motor vehicle sales since 1984.
Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant for excessive consideration (US $100,000).
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.”).
The Panel finds that Complainant’s registration of the NICE CAR mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel finds that Complainant’s rights date back to the filing date of the mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Accordingly, the Panel finds that Complainant has established rights in the NICE CAR mark for the purposes of Policy ¶ 4(a)(i) dating back to at least May 24, 2005.
Complainant also argues that it has been using the mark in relation to its motor vehicle business since about 1975, decades before Respondent’s registration of the disputed domain name. The Panel notes that length of usage is a factor indicating secondary meaning in support of common law rights in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel finds that, based on the entire record, Complainant has established secondary meaning in the NICE CAR mark, dating back to 1975, prior to the registration of the disputed domain name.
Respondent’s <nicecar.com> domain name is identical to Complainant’s NICE CAR mark, but for the deletion of the space between the words and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that these changes are insignificant for the purposes of Policy ¶ 4(a)(i). See 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims that Respondent is not commonly known by the disputed domain name and therefore has not established rights or legitimate interests under Policy ¶ 4(c)(ii). The WHOIS information for the <nicecar.com> domain name lists “choi sun sik” as the registrant. Past panels have found nominally unsupportive WHOIS information to be strong evidence that a respondent is not commonly known by a disputed domain name. Thus, the Panel finds that Respondent has not established rights or legitimate interests 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).
Complainant also alleges that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, and thus fails to establish rights under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant notes that Respondent has simply been offering the domain name for sale since at least February 2003. This is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. 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 also claims that Respondent has made no demonstrable preparations to use the disputed domain name in 13 years, further evidence that Respondent has not made a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)). Therefore, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(i) by acquiring the disputed domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs related to the domain name. Complainant states that Respondent is offering to sell the <nicecar.com> domain name for $100,000, an amount that surely exceeds respondent’s costs of maintaining the disputed domain name. Previous panels have found excessive offers to sale to represent bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel thus finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
The Panel finds that 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 <nicecar.com> domain name be TRNASFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 7, 2013
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