Advantest Corporation v. hyungkyu park
Claim Number: FA0601000634383
Complainant is Advantest Corporation (“Complainant”), represented by William F. Herbert, of Staas & Halsey, LLP, 1201 New York Avenue, Suite 700, Washington, DC 20005. Respondent is hyungkyu park (“Respondent”), 592-14 wolgok1-dong, gwangsan-gu, gwangju.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantest.net>, registered with Hangang Systems, Inc. d/b/a Doregi.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2006. The Complaint was submitted in both Korean and English.
On January 25, 2006, Hangang Systems, Inc. d/b/a Doregi.com confirmed by e-mail to the National Arbitration Forum that the <advantest.net> domain name is registered with Hangang Systems, Inc. d/b/a Doregi.com and that Respondent is the current registrant of the names. Hangang Systems, Inc. d/b/a Doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. d/b/a Doregi.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 31, 2006, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2006 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@advantest.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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.
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 makes the following assertions:
1. Respondent’s <advantest.net> domain name is identical to Complainant’s ADVANTEST mark.
2. Respondent does not have any rights or legitimate interests in the <advantest.net> domain name.
3. Respondent registered and used the <advantest.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advantest Corporation, first registered the word mark for the ADVANTEST mark in Korea on February 26, 2000 (Reg. No. 465809). Complainant also owns trademark registrations for the ADVANTEST mark in several other countries throughout the world, including Japan, the United States, Germany, the United Kingdom, China, Taiwan, Singapore, Malaysia, France, Italy, Norway, Hong Kong, Indonesia, and Thailand. Complainant registered the ADVANTEST mark with the United States Patent and Trademark Office (“USPTO”) on November 23, 2004 (Reg. No. 2,904,041). Complainant formerly operated under the name “Takeda Riken Industry, Co., Ltd.,” but changed its corporate name to “Advantest Corporation” on October 1, 1985. Complainant’s predecessor had used the ADVANTEST mark since about 1979 on its products, including in Korea since 1984.
Complainant has operations in 13 countries. Its Korean subsidiary, Advantest Korea Co., Ltd., was established on April 22, 1996. Complainant offers products for design, production and maintenance of electronic systems, including fiber optic and wireless communications equipment and digital consumer products. Complainant registered the domain name <www.advantest.com> in 1993, and has used the domain name to operate its corporate website since 1998.
Respondent registered the <advantest.net> domain name on May 21, 2002. Respondent has used the disputed domain name to operate a website that links to a generic “Under Construction” website of the domain name Registrar.
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 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.”).
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.
Complainant’s registrations of its ADVANTEST mark in Korea, as well as throughout the world, sufficiently establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Complainant has also demonstrated that Respondent’s <advantest.net> domain name is identical to Complainant’s ADVANTEST mark. Respondent’s <advantest.net> domain name is identical to Complainant’s mark, adding only the generic top-level domain name “.net.” See 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); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent does not have rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts to Respondent to establish that it has rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has presented a prima facie case and will evaluate whether the evidence on record demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The evidence on record does not suggest that Respondent is commonly known by the <advantest.net> domain name. The WHOIS information identifies Respondent as “hyungkyu park.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Furthermore, Respondent is using the disputed domain name to operate a website that only features a link to a generic “Under Construction” website of the registrar. The evidence on record does not indicate that Respondent has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or in making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when the respondent might be capable of doing otherwise); see also Franzus Co. v. Cotner, FA 125365 (Nat. Arb. Forum Nov. 7, 2002) (determining that after the respondent’s passive holding of the disputed domain name for five years, its “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect of the domain name at issue”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since 2002, Respondent has only utilized the <advantest.net> domain name to operate a website linking to a generic “Under Construction” website. Consequently, Respondent has passively held the disputed domain name for nearly four years and has not demonstrated any purpose behind the registration of the disputed domain name. Thus, Respondent’s passive holding of the <advantest.net> domain name indicates registration and use in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <advantest.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 14, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum