National Arbitration Forum

 

DECISION

 

MySpace, Inc. v. L. Asher Corson

Claim Number: FA0603000664417

 

PARTIES

Complainant is MySpace, Inc. (“Complainant”), represented by Ian Ballon of Greenberg Traurig, LLP, 2450 Colorado Avenue, Suite 400, Santa Monica, CA 90404.  Respondent is L. Asher Corson (“Respondent”), represented by Richard J. Gurak, of Welsh & Katz, Ltd., 120 S. Riverside Plaza, 22nd Fl., Chicago, IL 60606.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <myspcae.com> and <myspae.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.

 

PANEL

The undersigned Daniel B. Banks, Jr., as Panelist, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 24, 2006.

 

On April 3, 2006, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <myspcae.com> and <myspae.com> domain names are registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that the Respondent is the current registrant of the name.  Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.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 April 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 25, 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@myspcae.com and postmaster@myspae.com by e-mail.

 

A timely Response was received and determined to be complete on April 24, 2006.

 

An Additional Submission was received from Complainant on May 1, 2006 and is considered timely in accordance with The Forum’s Supplemental Rule #7.

 

On May 3, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of the MYSPACE trademark and has obtained a federal trademark registration from the United States Patent and Trademark Office reflecting such ownership.  Complainant’s website at <myspace.com> has been overwhelmingly successful and has become the second most visited website in the world. 

 

Respondent purchased the infringing domain names from Park Minwoo, their prior registrant.  Both names are common misspellings of MYSPACE.com.  At the time the Respondent took possession of the names, they were already the subject of this UDRP action.  Respondent’s father, ostensibly acting on behalf of his son, contacted counsel for Complainant seeking $70,000 in ransom for the domain names. 

 

The infringing domain names are confusingly similar to Complainant’s federally registered trademark since they are obvious typographical variations of the Complainant’s MYSPACE mark. 

 

Respondent had no rights or interests in the infringing domain names.  Complainant has not consented, licensed or authorized Respondent to register and maintain the domains; Respondent is not commonly known by the names; and, Respondent has redirected the domain names to commercial sites unaffiliated with Complainant for his own commercial gain.

 

The names were registered and are being used in bad faith.  Attempting to sell an infringing domain name to the mark owner is prima facie evidence of bad faith.  Also, the practice of intentionally misspelling words “with intent to intercept and siphon off traffic from its intended destination” is known as “typosquatting” which is inherently parasitic and of itself evidence of bad faith.  Furthermore, the Respondent redirected the infringing domain names to websites offering services that directly compete with the services offered by Complainant, namely online dating.  They also contained links to “Myspace Friend Adder,” a software program that uses bots or automated scripts to automatically add friends for users of MySpace.com. 

 

B. Respondent

Respondent contacted Minwoo Park on March 13, 2006 regarding the purchase of the domain name, myspae.com.  On March 16, 2006, the transaction was initiated through Escrow.com for a purchase price of $40,000 USD.  On March 29, 2006, Mr. Park agreed to add the domain name myspcae.com to the transaction for an additional $10,000 USD.  On March 30, 2006, the domain names myspae.com and myspcae.com were transferred and registered in Respondent’s name.  The names were “parked” on Sedo.com during the Escrow.com inspection period.

 

On March 31, 2006, I learned that there was a dispute pending against both domain names.  I immediately cancelled the transaction through Escrow.com in accordance with their procedure.  I understood that DomainCA.com, the Korean registrar, should never have transferred the domain names to me because at the time of the transfer there was a pending complaint against the owner.  I  tried to transfer the domain names back to Mr. Park but was not able to do so because he did not respond to attempts to reach him.

 

On April 4, 2006, my father spoke with Complainant’s attorney.  He was not authorized to speak on my behalf and, from what I understand, certain statements may have been misunderstood or misconstrued.  As I understand it, there was no attempt to “ransom” the domain names back to MySpace.com. 

 

DomainCA.com has refused to transfer the domain names back to Mr. Park, apparently because they realized their error of transferring the names to me in the first place and because of the Complaints filed by MySpace.com. 

 

I do not want control of these domain names but cannot voluntarily transfer the domain names to MySpace.com because by doing so, Escrow.com would view that transfer as a completion of the purchase transaction from Mr. Park and would transfer my escrow money to Mr. Park.  I am currently seeking return of my escrow money from Escrom.com.

 

C. Additional Submissions from Complainant

There was no “misunderstanding” the aggressive hard-line position taken by Respondent’s father who demanded payment of $70,000 within a few hours under the threat of transferring the domain names offshore-to their prior registrant in Korea.  Tellingly, Respondent now admits that he paid $50,000 for the domain names – not the $70,000 that he and his father alleged they paid prior to the filing of this action.  Clearly, they were attempting to blackmail MySpace in order to realize a quick $20,000 profit.  This demonstrates bad faith. 

 

FINDINGS

In its Response, Respondent has failed to dispute any of the material allegations and evidence presented by Complainant.  In effect, Respondent disclaims any interest in the disputed domain names except as it relates to his attempts to recover his escrow payments.  Respondent states, “I do not want control of these domain names but I cannot voluntarily transfer the domain names to MySpace.com because by doing so, Escrow.com would view that transfer as a completion of the purchase transaction from Mr. Park, and would thus transfer my escrow money to Mr. Park.”  The Panel interprets Respondent’s failure to dispute the Complaint and evidence and his statement as acquiescence  in Complaint’s request to transfer the <myspcae.com> and <myspae.com> domain names to Complainant in satisfaction of Complainant’s requested remedy.  Therefore, the Panel has decided to forego the traditional UDRP analysis and order the transfer of the domain names.  See PSC Mgmt. Ltd. P’ship v. PSC Mgmt. Ltd. P’ship, FA 467747 (Nat. Arb. Forum June 6, 2005) (transferring disputed domain name to the complainant, where the complainant was listed as the respondent and filed a response agreeing to transfer the domain name); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <myspcae.com> and <myspae.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Daniel B. Banks, Jr., Panelist
Dated: May16, 2006