Bowlmor AMF Corp. v. P J-seon
Claim Number: FA1306001506185
Complainant is Bowlmor AMF Corp. (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is P J-seon (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bowlmoramf.com>, registered with Hangang Systems, 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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 21, 2013. The Complaint was submitted in both Chinese and English.
It appears that the <bowlmoramf.com> domain name was originally registered by “Li Shoumei” through Registrar eName Technology Co. Ltd., on May 21, 2013. The Complaint was originally levied against the <bowlmoramf.com> domain name’s original registrant, Li Shoumei, at which point the domain was locked by the registrar. The original registrant of the disputed domain name then asked to be able to transfer the domain to Complainant. Accordingly, Complainant and the original registrant submitted a joint motion to stay the proceedings to permit transfer of the disputed domain name to Complainant. Though the Forum instructed the registrar that the domain should only be transferred to Complainant, the domain was then transferred to the current Respondent, “P J-seon” of South Korea, through Registrar Hangang Systems, on July 31, 2013. The domain was again locked, and remains locked pending the outcome of this dispute.
On August 12, 2013, Hangang Systems, Inc. confirmed by e-mail to the National Arbitration Forum that the <bowlmoramf.com> domain name is registered with Hangang Systems, Inc. and that Respondent is the current registrant of the name. Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, 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 August 19, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of September 9, 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@bowlmoramf.com. Also on August 19, 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 September 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant, Bowlmor AMF Corp., is the largest operator of bowling centers in the world, with 7,500 employees, 272 bowling centers and combined annual revenue of approximately $450 million.
b. Complainant is the surviving entity from the July 1, 2013 merger of “two giants in the bowling industry”- AMF Bowling Worldwide, Inc. and Strike Holdings LLC d/b/a Bowlmor.
c. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the AMF mark (e.g., Reg. No. 714,104 registered April 18, 1961) and the BOWLMOR & Design mark (Reg. No. 3,579,942 registered February 24, 2009).
d. The <bowlmoramf.com> domain name consists of Complainant’s BOWLMOR and AMF marks, and is confusingly similar to each.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by any name related to either the BOWLMOR or AMF mark, as confirmed by the WHOIS information.
i. Complainant has never granted Respondent any license or other rights to use either the BOWLMOR or AMF mark.
ii. The combination of Complainant’s two marks, as found in the <bowlmoramf.com> domain name, has no meaning other than as a combined indicator of source for AMF Bowling Worldwide, Inc. and Strike Holdings LLC d/b/a Bowlmor combined corporate entity.
b. Since taking control of the disputed domain name, Respondent has yet to post any website at the domain whatsoever and has instead focused its efforts on extracting money from Complainant. Respondent’s inactive holding of the disputed domain does not constitute a bona fide use.
i. Respondent’s first activity related to the domain was to contact Complainant, soliciting “bids” for the domain.
3. Policy ¶ 4(a)(iii)
a. Respondent has offered to sell the disputed domain name.
i. Within days of taking control of the <bowlmoramf.com> domain name, Respondent contacted Complainant directly claiming to have received bids for the domain already and asking if Complainant was interested in purchasing the domain. See Complainant’s Exhibit H (E-mail from Respondent dated August 1, 2013).
ii. More recently, Respondent sent Complainant a follow-up email that purports to forward on a chain of emails between Respondent and an interested bidder in which Respondent seeks $1,200 from Complainant for the domain. See Complainant’s Exhibit I (E-mail from Respondent dated August 7, 2013).
b. Respondent has a history of registering domains that correspond to proposed merger or joint venture announcements, evidencing a pattern of cybersquatting. See Complainant’s Exhibit J.
c. Respondent’s registration of the <bowlmoramf.com> domain name represents opportunistic bad faith.
i. Respondent took ownership of the domain on July 21, 2013, just three weeks after the merger creating Bowlmor AMF was announced on July 1, 2013.
d. Respondent knew of Complainant and its rights in the AMF and BOWLMOR marks prior to Respondent’s registration of the disputed domain name.
i. The merger of AMF Bowling Worldwide, Inc. and Strike Holdings LLC d/b/a Bowlmor that resulted in the creation of Bowlmor AMF Corp. concluded, and was announced in the media, just three weeks prior to Respondent’s taking control of the disputed domain.
ii. Respondent took control of the disputed domain during a pending UDRP proceeding related to the domain in which Complainant was contesting the domain’s original registration based on Complainant’s rights in the AMF and BOWLMOR marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent, in the “Other Correspondence”, claims to have acquired the <bowlmoramf.com> domain name from its original registrant on July 31, 2013.
Complainant established that it had rights in the marks contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent registered and used the disputed domain names 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 decides 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, Bowlmor AMF Corp., states that it is the surviving entity from the July 1, 2013 merger of “two giants in the bowling industry”- AMF Bowling Worldwide, Inc. and Strike Holdings LLC d/b/a Bowlmor. Complainant provides that AMF Bowling Worldwide, Inc. had done business under the AMF mark, while Strike Holdings LLC d/b/a Bowlmor had done business under the BOWLMOR mark. Complainant claims that its combined entity is now the largest operator of bowling centers in the world, with 7,500 employees, 272 bowling centers and combined annual revenue of approximately $450 million. Based on its holding of various USPTO trademark registrations, Complainant claims rights in the AMF mark (e.g., Reg. No. 714,104 registered April 18, 1961), as well as the BOWLMOR mark & design (Reg. No. 3,579,942 registered February 24, 2009). Past panels have found that registration with the USPTO is sufficient to demonstrate rights for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel rules that Complainant’s USPTO registrations for the AMF and BOWLMOR marks establishes Complainant’s rights in the marks under Policy ¶ 4(a)(i), the fact that Respondent operates outside of the United States notwithstanding. See 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 next notes that Respondent’s <bowlmoramf.com> domain name consists of Complainant’s BOWLMOR and AMF marks, arguing that the domain is confusingly similar to each. The Panel notes that in addition to incorporating both marks in their entirety, the disputed domain name also affixes the generic top-level domain (“gTLD”) “.com.” Previous panels have held that neither the combination of multiple marks owned by complainant nor the affixation of a gTLD is sufficient to create a distinct, non-infringing domain name. SeeYahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also 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.”). Accordingly, the Panel concludes that Respondent’s <bowlmoramf.com> domain name is confusingly similar to Complainant’s BOWLMOR and AMF marks pursuant to Policy ¶ 4(a)(i).
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 posits that Respondent is not commonly known by any name related to the either the BOWLMOR or AMF mark, as confirmed by the WHOIS information. The Panel notes that the WHOIS information lists Respondent as “P J-seon,” suggesting that Respondent is in fact known by this name, and not a name approximating either mark. Complainant asserts that it has never granted Respondent any license or other rights to use either the BOWLMOR or AMF mark. Complainant urges that the arbitrary combination of its BOWLMOR and AMF marks, as found in the <bowlmoramf.com> domain name, has no meaning other than as an indicator of source for Complainant’s combined, post-merger entity. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), found that the respondent in that case was not commonly known by the disputed domain name where there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. In light of the facts of the instant case, the Panel here likewise concludes that Respondent is not commonly known by the <bowlmoramf.com> domain name within the meaning of Policy ¶ 4(c)(ii).
Complainant also contends that Respondent lacks rights and legitimate interests in the disputed domain name based on Respondent’s use of the domain. According to Complainant, Respondent has yet to post any content at the resolving website whatsoever since taking control of the disputed domain name. Complainant claims that Respondent has instead focused its efforts on extracting money from Complainant, as Respondent’s first activity related to the domain was to contact Complainant soliciting “bids” for the domain. See Complainant’s Exhibits H & I. The Panel determines that Respondent’s attempts to immediately sell the disputed domain name to Complainant demonstrate a lack of rights and legitimate interests in the domain. 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 further argues that Respondent’s inactive holding of the disputed domain does not constitute a bona fide use pursuant to Policy ¶ 4(c)(i). The Panel agree, finding that Respondent’s failure to make an active use of the disputed domain name following its July 31, 2013 acquisition of the domain shows that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <bowlmoramf.com> domain name pursuant to Policy ¶ 4(c)(iii). 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).
Complainant contends that Respondent registered and used the <bowlmoramf.com> domain name in bad faith by offering to sell the domain name to Complainant. Complainant says that within days of taking control of the <bowlmoramf.com> domain name, Respondent contacted Complainant directly claiming to have received bids for the domain already and asking if Complainant was interested in purchasing the domain. See Complainant’s Exhibit H (E-mail from Respondent dated August 1, 2013). Complainant claims that Respondent later sent Complainant a follow-up email that purports to forward on a chain of emails between Respondent and an interested bidder in which Respondent seeks $1,200 from Complainant for the domain. See Complainant’s Exhibit I (E-mail from Respondent dated August 7, 2013). Past panels have found bad faith where a respondent registers a domain name for the primary purpose of reselling the domain to the complainant. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Given that the disputed domain name is comprised of a combination of Complainant’s marks, the Panel finds that Respondent registered and used the <bowlmoramf.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) by immediately offering to sell the domain name to Complainant.
Complainant alleges that the timing of Respondent’s registration of the <bowlmoramf.com> domain name represents opportunistic bad faith. Complainant claims that Respondent took ownership of the disputed domain name on July 21, 2013, just three weeks after the merger creating Complainant, Bowlmor AMF, was announced on July 1, 2013. The Panel notes that the WHOIS information indicates that Respondent actually acquired the disputed domain on July 31, 2013. In any event, the Panel determines that Respondent’s acquisition of the disputed domain name, which is comprised solely of the marks of the two companies which were to be merged, followed the announcement of the merger that would create Complainant too closely in time to be purely coincidental. Accordingly, the Panel finds that Respondent registered the <bowlmoramf.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii), given the conspicuously opportunistic timing of Respondent’s registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Finally, Complainant alleges that Respondent’s bad faith is evidenced by the fact that Respondent knew of Complainant and its rights in the AMF and BOWLMOR marks prior to Respondent’s registration of the disputed domain name. Complainant again notes that Respondent took control of the disputed domain shortly after the announcement of the merger creating Complainant. Moreover, Complainant notes that Respondent took control of the disputed domain during a pending UDRP proceeding related to the domain in which Complainant was contesting the domain’s original registration based on Complainant’s rights in the AMF and BOWLMOR marks. Based on this circumstantial evidence of Respondent’s knowledge of Complainant’s rights in the marks, coupled with the fame and notoriety Complainant’s marks have achieved, the Panel finds that Respondent had actual knowledge of Complainant and its rights in the AMF and BOWLMOR marks at the time Respondent registered the disputed domain name. The Panel further finds that Respondent registered the <bowlmoramf.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <bowlmoramf.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: September 25, 2013
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