Cost Plus Management Services v. noorinet
Claim Number: FA1512001651641
Complainant is Cost Plus Management Services (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is noorinet (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <worldemarket.com> and <worldmarkt.com>, registered with Gabia, Inc. and Megazone Corp., dba HOSTING.KR.
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, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2015; the Forum received payment on December 9, 2015. The Complaint was submitted in both English and Korean.
On December 9, 2015, Gabia, Inc. confirmed by e-mail to the Forum that the <worldemarket.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 December 9, 2015 Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <worldmarkt.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 December 17, 2015, the Forum served the Korean Complaint and all Annexes, including a Korean Written Notice of the Complaint, setting a deadline of January 6, 2016 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@worldemarket.com, postmaster@worldmarkt.com. Also on December 17, 2015, the Korean 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns the WORLD MARKET mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2347302, registered May 2, 2000). Complainant uses the WORLD MARKET in connection with its business as a unique retailer selling imported special items such as selling home furniture, décor, curtains, rugs, gifts, apparel, coffee, wine, craft beer, home décor, and handcrafted case goods from global destinations. The disputed domain names are confusingly similar to the WORLD MARKET mark, as Respondent has simply added an “e” in one of the domain names and removed an “e” from one of the domain names, and both domain names have added the generic top-level domain (“gTLD”) “.com.”
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been licensed or authorized to use the WORLD MARKET mark. Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Rather, Respondent uses the disputed domain names to host competing hyperlinks.
iii) Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Respondent has listed the disputed domain names for sale, which is evidence of bad faith under Policy ¶ 4(b)(i). Respondent’s use of the disputed domain names to redirect Internet users to competitors of Complainant disrupts Complainant’s business, and can also be seen as evidence of bad faith under Policy ¶ 4(b)(iv). Finally, Respondent’s addition of a single letter and removal of a single letter are examples of typosquatting, which demonstrates bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <worldemarket.com> domain name was registered on January 11, 2009, and the <worldmarkt.com> domain name was registered on October 20, 2009.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. 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 shall be conducted in English.
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(f), 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 claims to own the WORLD MARKET mark through its trademark registrations with the USPTO (e.g., Reg. No. 2347302, registered May 2, 2000). Complainant uses the WORLD MARKET in connection with its business as a unique retailer selling imported special items such as selling home furniture, décor, curtains, rugs, gifts, apparel, coffee, wine, craft beer, home décor, and handcrafted case goods from global destinations. The Panel agrees that such registrations give Complainant rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant also argues that the disputed domain names are confusingly similar to Complainant’s WORLD MARKET mark, because Respondent has simply removed the letter “e” from one of the domain names and added the letter “e” to the other domain name. The Panel sees that Respondent has also attached the gTLD “.com” to the marks in each domain name. Previous panels have held that simple misspellings and the addition of a gTLD are insignificant under a Policy ¶ 4(a)(i) analysis. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that the disputed domain names are confusingly similar to the WORLD MARKET mark under 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 begins its argument on Respondent’s lack of rights or legitimate interests in the disputed domain names by arguing that Respondent is not commonly known by the disputed domain names. Complainant points to the available WHOIS information for the disputed domain names, which lists “noorinet” as registrant of the disputed domain names. Complainant also notes that Respondent has been neither licensed nor authorized to use the WORLD MARKET marks in any way. The Panel recalls that Respondent has failed to submit a response in this proceeding. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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).
Complainant also argues that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Rather, Complainant claims that Respondent uses the disputed domain names to host competing hyperlinks. As the Panel agrees with Complainant’s argument and evidence presented, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names per Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant urges that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant argues that the disputed domain names have been put up for sale, which demonstrates bad faith under Policy ¶ 4(b)(i). As the Panel agrees with Complainant’s submitted evidence and argument here, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Next, Complainant argues that Respondent uses the disputed domain names to redirect Internet users to competitors of Complainant. Complainant argues that this behavior disrupts Complainant’s business. Previous panels have held that the placement of competing hyperlinks on the website of a disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel agrees that Respondent is disrupting Complainant’s business in bad faith per Policy ¶ 4(b)(iii).
Third, Complainant posits that Respondent’s behavior is also evidence of bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent uses these competing hyperlinks for purposes of its own commercial gain. Generally, panels have held that such conduct is consistent with bad faith under Policy ¶ 4(b)(iv). 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.’”). As such, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent is typosquatting in bad faith. Complainant notes that Respondent has simply misspelled Complainant’s own marks by a single letter. Complainant argues that Respondent is attempting to capitalize on Internet users’ typographical errors. As the Panel agrees with Complainant’s argument, the Panel finds that Respondent is typosquatting, which is further evidence of bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldemarket.com> and <worldmarkt.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 19, 2016
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