YPlan, Inc. v. KIM, DONGJIN / DONGJIN KIM
Claim Number: FA1505001620559
Complainant is YPlan, Inc. (“Complainant”), represented by Eugene Rome of Rome & Associates, A.P.C., California, USA. Respondent is KIM, DONGJIN / DONGJIN KIM (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yplan.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2015; the Forum received payment on May 20, 2015.
On May 22, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <yplan.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2015 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 firstname.lastname@example.org. Also on May 26, 2015, 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.
A timely Response was received and determined to be complete on June 15, 2015.
On June 22, 2015 an Additional Submission from Complainant was received, particularly the Yplan Reply Memorandum in Support of Complaint, which was found to comply with Supplemental Rule 7.
Respondent submitted its Reply Memorandum in Support of Response on June 29, 2015. This submission is in compliance with Supplemental Rule 7.
On June 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s rights in the YPLAN mark date back to 2012 and are based on the registration of the word mark YPLAN in the United Kingdom, Reg. No. UK 2,633,280 and the US trademark application, Ser. No. 86,208,988. See Compl., at Attached Ex. B.
Complainant is the creator of the well-known and famous application based or mobile “app” based service called YPLAN.
Complainant further enjoys common law rights in the YPLAN mark, as established through its continuous use of the mark via the Internet since 2012 and its consumer recognition.
The <yplan.com> domain name is confusingly similar to the YPLAN mark. The domain name contains the Complainant’s mark in full and inserts the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never authorized Respondent to use Complainant’s YPLAN mark.
Respondent’s lack of rights or legitimate interests in the <yplan.com> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name resolves to a blank webpage. See Compl., at Attached Exs. D, E.
Furthermore, Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the disputed domain name.
Respondent has engaged in bad faith registration and use of the <yplan.com> domain name.
Respondent acquired the disputed domain by transfer in July 2014. See Compl., at Attached Exs. J. Registrant further renewed the disputed domain name in bad faith in 2014. See Compl., at Attached Ex. K for the purpose of selling or otherwise transferring the domain name to Complainant.
Additionally, Respondent is a serial cybersquatter who exhibits a pattern of practice in bad faith domain registration and use. Further, bad faith registration can be inferred from Respondent’s inactive use of the disputed domain name.
Respondent acquired the domain name <yplan.com> by registration on July 7, 2001. Respondent registered the domain name for noncommercial use to help Youth and young people to Plan their life.
Complainant is not the owner of the YPLAN mark, since the actual holder of the US trademark application and the UK registration referred to by Complainant is another entity, Lean Works Ltd.
Complainant could not have used the name “YPlan Inc” since 2012, as long as this company was registered only on January 30, 2013. See Compl., at Attached Ex. 1.
Complainant, or an entity known as “Lean Works Ltd” applied for trademark rights that are confusingly similar to Respondent’s domain name well after Respondent registered the <yplan.com> domain name. Complainant pretends to have superior rights in the YPLAN mark in a reverse domain name hijacking attempt.
Respondent has rights or legitimate interests in respect of the domain name because Respondent registered the disputed domain name on July 7, 2001, when there was no similar mark. Respondent uses the <yplan.com> domain name in connection with helping youth and young people to plan their lives, hence the use of the letter “y” and the word “plan.” Respondent is preparing a legitimate noncommercial and fair use of the domain name to help young people plan their lives. Respondent has made no attempts to commercially benefit through use of the <yplan.com> domain name.
The disputed domain name should not be considered as having been registered or used in bad faith. Respondent never tried to sell the disputed domain name, as confirmed by Complainant’s Attached Exhibit H, where a Sedo broker told Complainant that Respondent was not interested in selling the domain name and that Respondent never sells its domain names. Respondent is not a serial cybersquatter, as Respondent’s name is very common in Korea and there are about 10,000 people who have the same name in Korea. Further, Renewal and registrar change without ownership change is not an acquisition of a domain name, but rather management of a domain name. Finally, Respondent did not have notice of Complainant or Complainant’s mark before the initiation of the instant proceeding.
C. Additional Submissions
Respondent provides no support to his assertion on the purpose of the domain name registration. Respondent fails to controvert that the domain name has never been used for any purpose whatsoever.
The arguments brought by Respondent in respect of trademark ownership, particularly the entity that holds these rights, are irrelevant.
Complainant is licensed to assert its rights in the trademark by Lean Works Ltd. Therefore, Complainant is the right party to bring the Complaint.
Complainant met its initial burden of presenting a prima facie case showing that Respondent has no rights or legitimate interests with respect to the disputed domain.
Further, Complainant sent notices to Respondent using all available means, including both postal mail and email. See Reply Memorandum in Support of Complaint, at Attached Ex. O. However, Respondent created a barrier of proof that is insurmountable because the knowledge whether communications had been actually received is exclusively in Respondent’s possession.
Respondent renewed the domain name in bad faith after learning of Complainant’s trademark rights, which, coupled with bad faith warehousing of the domain and willful refusal to communicate with Complainant, demonstrate that Respondent acquired and used the domain name in bad faith to harm Complainant’s trademark rights.
Respondent exhibits a pattern of practice in bad faith domain registration and use.
Complainant Annex G proves that Respondent is the original domain owner as of July 7, 2001.
Complainant could not use the subject trademark in 2012, since the company did not exist then. Yplan Inc. was registered on January 30, 2013. See Reply Memorandum in Support of Response, at Attached Ex. 1.
Complainant is involved in an attempt of a Reverse Domain Name Hijacking, since Complainant alleges that it had been using the company name since 2012, although the company itself was registered on January 30, 2013. Furthermore, Complainant does not own trademark rights, although it declares having such rights.
Respondent acquired the domain name by registration on July 7, 2001, namely 11 years earlier than Lean Works Ltd started using its mark. Lean Works Ltd. applied the trademark which is identical or confusingly similar to the domain name in which Respondent has had rights since July 7, 2001.
Since Respondent registered the domain name when there were no similar trademarks, he has rights in this domain dating back to July 7, 2001. Respondent is preparing a legitimate noncommercial and fair use of the domain name. There has been no attempt to misleadingly divert consumers or to tarnish the trademark at issue.
Renewal and Register change without ownership change can not constitute bad faith as long as the latter are related to domain management, Furthermore, Respondent’s registration of the disputed domain name long before Complainant’s first use of the mark indicates that Respondent did not register this domain name in bad faith. The lack of bad faith is also confirmed by communication between Sedo and Viktoras of Complainant, which shows that Respondent did not register that domain name for the purpose of selling, renting or otherwise transferring the domain name registration.
Preliminary Issue: Deficient Response
The Response was received in a timely manner, however the exhibits were submitted in a file type not accepted by the Forum, therefore Respondent is not considered to be incompliance with ICANN Rule #5 (a) and/or the Annex to the Supplemental Rules. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The Panel believes that the deficient annexes, which resulted from a likely technical error, are not a sufficient cause to reject the submission which was timely received as provided by the Rules. Therefore, the Panel has decided to review this response. At the same time, since the Panel is restricted only with the evidences on the case records, only those arguments on the merits of the case, which are not based on the annexes, will be reviewed.
The entity, Lean Works Ltd, allegedly being a parent company to Complainant, holds trademark rights in the United Kingdom, dating back to December 14, 2012, which is 11 years after Respondent acquired his domain name through registration. Lean Works Ltd is also an applicant in the pending US trademark application, Ser. No. 86,208,988 filed on March 3, 2014.
Respondent acquired the domain name by registration on July 7, 2001. Evidences on the record show that there was no ownership transfer, while the domain was managed by its registrant through renewals and registrar changes (transfers), involving the same registrant, i.e. Respondent. See Compl., at Attached Ex. J.
The case records contain no evidence in support of the allegation of common law rights in the subject trademark. There is no evidence that Complainant has used the name “Yplan” since 2012 as stated in the Complaint. At the same time, as follows from evidences in the case, Complainant was registered as a legal entity only on January 30, 2013.
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.
Before proceeding with the analysis of the three elements of the Policy, the Panel has to establish whether Complainant holds valid rights in a trademark on which a Complaint is based.
As already mentioned, the case records show that Lean Works Ltd holds trademark rights in the United Kingdom, dating back to December 14, 2012, which is 11 years after Respondent acquired his domain name through registration. Lean Works Ltd is also an applicant in the pending US trademark application, Ser. No. 86,208,988 filed on March 3, 2014.
Respondent acquired the domain name by registration on July 7, 2001. There is no ground to state that Respondent acquired his domain in July 2014 through transfer, since as clearly follows from Complainant’s attached Exhibit G, the transfer involved the same registrant, namely Respondent. Thus, Respondent benefits from earlier rights in his domain name.
Furthermore, the case records contain no evidence in support of the allegation of common law rights in the subject trademark, predating the date on which the disputed domain name was registered. There is even no evidence that Complainant has used the name “Yplan” since 2012 as stated in the Complaint. At the same time, as follows from evidences in the case, Complainant was registered as a legal entity only on January 30, 2013.
Even if the Panel accepts the Declaration of Patrick Flatcher, attached to Reply Memorandum in Support of Complaint and confirming that Complainant is a licensee of Lean Works Ltd., as a due evidence, this still cannot change the fact that Complainant has not established that it has either registered or common law rights pre-dating the Respondent’s domain name registration.
In view of these circumstances, the Panel believes that Complainant has failed to establish rights in the mark that are superior to Respondent’s rights in the disputed domain name under Policy ¶ 4(a)(i). See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).
Based on the finding that Complainant failed to satisfy the requirements of Policy¶ 4(a)(i), and taking into account the requirement of the Policy that Complainant must prove each of the three elements, the Panel has decided not to inquire into the Respondent’s rights and legitimate interests and the bad faith issue. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Before proceedings to a decision in this case, the Panel has to decide on the issue of Reverse Domain Name Hijacking.
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The application of this definition has been discussed in a large number of cases.
In a number of cases, panels have particularly noted that allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.
In the present case, the domain name was registered in 2001. The earliest date of any registration or use of the mark relied upon in the Complaint was in 2012. In view of this, the registration of the domain name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint.
In paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions it is noted that “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” Furthermore, on this point the UDRP reflects a widely applied principle of trademark and other laws, that priority generally prevails.
Under the current circumstances of the present case, understanding that priority generally prevails, Complainant should have realized that there was no way to prevail on this Complaint. In Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, the Panel noted that in deciding on the Reverse Domain Name Hijacking, “whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.’”
Under these circumstances, pursuant to Rule 15(e), the Panel finds that the Complaint was brought in bad faith primarily to deprive a registered domain-name holder of a domain name and constitutes an abuse of the administrative proceeding.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <yplan.com> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: July 10, 2015
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