British Columbia Life & Casualty
Company v. Jinsu Kim
Claim
Number: FA0505000473844
Complainant is British Columbia Life & Casualty
Company (“Complainant”), represented by David Crumpton, PO Box 7000,
Vancouver, BC, V6B4E1. Respondent is Jinsu Kim (“Respondent”), 502 Ho,
Taeseung Apt. 671-27, Naebalsandong, Gangseo-gu, Seoul, KR 157280.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bclife.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically May 9,
2005; the National Arbitration Forum received a hard copy of the Complaint May
9, 2005.
On
May 11, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <bclife.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that
Respondent is bound by the Network Solutions, Inc. registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
May 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of June 6,
2005, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@bclife.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
June 13, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson sits as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." 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. The domain name that Respondent
registered, <bclife.com>, is identical to Complainant’s BC LIFE
mark.
2. Respondent has no rights to or legitimate
interests in the <bclife.com> domain name.
3. Respondent registered and used the <bclife.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
British Columbia Life & Casualty Company (BC LIFE), is a full service
insurance company that sells life insurance, accidental death and dismemberment
insurance, short and long term disability coverage and other various types of
insurance.
Complainant has
provided these services under the BC LIFE mark since 1958 in British Columbia,
Canada.
Complainant
registered the BC LIFE mark with the Canadian Intellectual Property Office
(Reg. No. 512,162 issued May 25, 1999).
Respondent
registered the <bclife.com> domain name November 14, 2003. The
disputed domain name does not resolve to an active website and has not been
used by Respondent to market any bona fide goods or services. Respondent also offered to sell the disputed
domain name to Complainant for $15,000 or $1,000 per month for an undisclosed
period of time.
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."
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
will draw such inferences as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established using extrinsic proof in this proceeding that it has rights in the
BC LIFE mark through registration of the mark with the Canadian Intellectual
Property Office and by continuous use of the mark in commerce since 1958. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also KCTS
Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001)
(holding that it does not matter for the purpose of paragraph 4(a)(i) of the
Policy whether Complainant’s mark is registered in a country other than that of
Respondent’s place of business).
The disputed
domain name, <bclife.com>, is identical to Complainant’s BC LIFE
mark. The mere addition of the generic top-level domain “.com” is insufficient
to negate the identical nature between Respondent’s domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc.
v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of
the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants.”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed
domain name. Respondent failed to
respond to the Complaint. Thus, the
Panel accepts all reasonable allegations and assertions set forth by
Complainant as true and accurate. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); 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
asserts that Respondent has no rights or legitimate interests in the disputed
domain name and Respondent, in not submitting a response, failed to rebut this
assertion. Thus, the Panel interprets Respondent’s failure to respond as
evidence that Respondent lacks rights and legitimate interests in the <bclife.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Bank of Am.
Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent
registered the <bclife.com> domain name November 14, 2003, but has
not made any use of the disputed domain name.
This period of inactivity is sufficient to establish that Respondent has
no rights or legitimate interests in the domain name pursuant to Policy ¶¶
4(c)(i) and (iii). See Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy.”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding
no rights or legitimate interests where “Respondent registered the domain name
and did nothing with it”); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that
failure to provide a product or service or develop the site demonstrates that
Respondents have not established any rights or legitimate interests in the
domain name).
Respondent has
attempted to sell the disputed domain name to Complainant for $15,000. or for
$1,000 per month. Thus, this is further
evidence that Respondent does not have rights or legitimate interests in the <bclife.com>
domain name. See The American Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum March 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark.”); see also (finding evidence
that Respondent lacked rights or legitimate interests in the disputed domain
name after it sent several correspondences offering to sell its rights in the
domain name in exchange for 1,500 shares of Complainant’s stock to
Complainant).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <bclife.com>
domain name and Complainant alleges that it has not authorized Respondent to
register domain names featuring Complainant’s BC LIFE mark. Respondent has
offered no proof of rights or a license to use the mark. Thus, the Panel concludes that Respondent
has not established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith.
Respondent registered and used the <bclife.com> domain name
in bad faith pursuant to Policy ¶ 4(a)(iii) by failing to market any bona fide
goods or services since the domain name was registered. Respondent’s passive holding of the <bclife.com>
domain name, which is confusingly similar to Complainant’s BC LIFE mark,
evidences bad faith. See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); see
also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the
long use and fame of Complainant’s mark, Respondent’s conduct is evidence of
bad faith); see also Mondich &
Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(holding that Respondent’s failure to develop its website in a two year period
raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
Respondent
registered and used the <bclife.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii) by offering to sell the disputed domain name to
Complainant for $15,000. or $1,000. per month, an amount in excess of
Respondent’s out-of-pocket expenses. See
Am. Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where Respondent offered domain names for sale); see also
Little Six, Inc v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell
the domain name at issue to Complainant was evidence of bad faith); see also
Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name); see also World Wrestling Fed’n Entmt., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs).
Furthermore,
Respondent registered the <bclife.com> domain name with actual or
constructive knowledge of Complainant’s rights in the BC LIFE mark due to
Complainant’s extended use of and promotion of the mark in commerce. Registration of a domain name identical to a
mark, despite actual or constructive knowledge of another’s rights in the mark,
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <bclife.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 27, 2005
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