The Boeing Company v. Kim Bum
Claim Number: FA1307001510222
Complainant is The Boeing Company (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Kim Bum (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boeingtotalaccess.com>, registered with REGISTERMATRIX.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2013; the National Arbitration Forum received payment on July 17, 2013.
On July 29, 2013, REGISTERMATRIX confirmed by e-mail to the National Arbitration Forum that the <boeingtotalaccess.com> domain name is registered with REGISTERMATRIX and that Respondent is the current registrant of the name. REGISTERMATRIX has verified that Respondent is bound by the REGISTERMATRIX 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 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@boeingtotalaccess.com. Also on August 2, 2013, the 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 August 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <boeingtotalaccess.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BOEING mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the largest manufacturer of commercial jetliners and began using the BOEING mark in 1917 and in 1923 began using it to identify its goods and services. Complainant holds over 60 trademark registrations for its BOEING mark in over 30 countries worldwide. Further, Complainant owns the <boeing.com> domain name from which it runs its official website. The term “Boeing Total Access” is the name for Complainant’s online program, providing employees with information relating to pay, pension, insurance and other employee benefits.
Respondent’s <boeingtotalaccess.com> domain name is confusingly similar to Complainant’s BOEING mark. Respondent has merely added the term “total access” to Complainant’s BOEING mark. Respondent has never been commonly known by the disputed domain name and Complainant has never licensed or authorized Respondent to use its mark in any way. Respondent registered the disputed domain name on November 28, 2004. It is clear that Respondent had both constructive and actual knowledge of Complainant’s rights in its BOEING mark at the time it registered the disputed domain name. Respondent has a pattern of bad faith domain name registrations. Respondent’s disputed domain name resolves to a website featuring links to third parties, presumably for Respondent’s financial gain.
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 is the largest manufacturer of commercial jetliners in the world and started using its BOEING mark in 1917, and in 1923 started using the mark to represent its goods and services. Complainant owns many registrations for the BOEING mark with the United States Patent and Trademark Office (“USPTO”), including the following: Reg. No. 882,041 registered December 9, 1969; Reg. No. 1,402,994 registered July 29, 1986; and Reg. No. 1,839,505 registered June 14, 1994.
Complainant also owns registrations with the Office for Harmonization in the Intentional Market (“OHIM”): Reg. No. 575,100 registered July 8, 2000; and
Reg. No. 3,200,003 registered June 2004. Evidence of a registration with a recognized authority is sufficient to indicate rights in a given mark under Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”); see also Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), established complainant’s rights in its mark under Policy ¶ 4(a)(i)). It is unimportant whether a complainant’s mark is registered in the location of respondent’s business, as long as complainant can establish rights in some location. 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). Based on Complainant’s evidence, the Panel finds that Complainant has rights in the BOEING mark under Policy ¶ 4(a)(i).
The <boeingtotalaccess.com> domain name is confusingly similar to Complainant’s BOEING mark. Respondent’s <boeingtotalaccess.com> domain name resembles the term “Boeing Total Access,” which is the name for Complainant’s online program that provides employees with information relating to pay, pension, insurance and other employee benefits. Respondent adds the term “Total Access” to Complainant’s registered BOEING mark and also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. These variations are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also 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)). Accordingly, the Panel finds that Respodent’s <boeingtotalaccess.com> domain name is confusingly similar to Complainant’s BOEING mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <boeingtotalaccess.com> disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain lists “Kim Bum” as the registrant. Complainant has never authorized or licensed Respondent to use its BOEING mark, and Respondent has never been known by the “boeingtotalaccess” name. Many UDRP panels have previously found that a respondent is not commonly known by a disputed domain name when there is no evidence on the record showing that the respondent was commonly known by the domain name, including in the WHOIS information. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <boeingtotalaccess.com> disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii), respectively. The disputed domain name resolves to a website featuring links to third parties offering services that compete with Complainant. The links compete with the services Complainant offers from its “Boeing Total Access” program and Respondent is financially profiting from the confusion as to the association with Complainant and the disputed domain name. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring links to third parties is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel thus finds that Respondent’s use of the disputed domain name to feature third-party links, some of which compete with Complainant’s business, and this does not convey rights or legitimate interests in the <boeingtotalaccess.com> disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant argues that Respondent has registered and is using the <boeingtotalaccess.com> domain name in bad faith because Respondent has a history of prior bad faith domain name registrations involving other well-known, third-party trademarks. Complainant provided the Panel a list of previous UDRP cases to evidence Respondent’s previous activity. See Ashley Furniture Indus., Inc. v. Kim Bum LLC/ Kim Bum, FA 1467301 (Nat. Arb. Forum Nov. 27, 2012); see also W.W. Grainger, Inc. v. Kim Bum LLC/ Kim Bum, FA 1470241 (Nat. Arb. Forum Dec. 26, 2012); see also LEGO Juris A/S v. PrivacyProtect.org/ Kim Bum, D2013-0402 (WIPO April 28, 2013). Previous panels have found that evidence of prior UDRP cases ordering the transfer of disputed domain names previously registered by a respondent indicates a pattern of bad faith behavior under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”) The Panel therefore finds that Respondent has a pattern of bad faith registration under Policy ¶ 4(b)(ii) based on evidence of prior UDRP cases ordering Respondent to transfer a disputed domain name.
Respondent registered and is using the disputed domain name in bad faith also under Policy ¶ 4(b)(iii) because it uses the associated website to compete with Complainant’s business. Respondent is misdirecting Internet users to other websites from Respondent’s <boeingtotalaccess.com> domain name, which features links to these third parties. Some of the links featured on Respondent’s resolving website compete with Complainant’s business and Complainant’s “Total Access” program. Previous panels have found that this type of use disrupts a complainant’s business, indicating bad faith use and registration. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
As noted, Respondent uses the confusingly similar domain name to resolve to a website featuring links to third-party businesses. The Panel presumes that Respondent is profiting from the presence of the third-party links on its resolving website. Previous panels have found bad faith use and registration when a respondent uses a confusingly similar domain name to cause confusion between the disputed domain name and a complainant’s registered mark, as to the source, sponsorship, affiliation, or endorsement of the resolving website, and respondent generates a commercial gain from that confusion. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel thus concludes that Respondent has registered and is using the <boeingtotalaccess.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant's trademark registrations for the BOEING mark existed well before Respondent’s registration of the <boeingtotalaccess.com> domain name. This fact indicates that Respondent had constructive knowledge of Complainant's rights in the mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark, and the use made of it on the resolving website, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boeingtotalaccess.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 30, 2013
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