NHN Corp. v. Park June
Claim Number: FA0606000726097
Complainant is NHN Corp. (“Complainant”), represented by Samuel Digirolamo, of Blackwell Sanders Peper Martin LLP, 720 Olive Street, Suite 2400, St. Louis, MO 63101. Respondent is Park June (“Respondent”), 518 Burnside Ave, #6c, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nhngame.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2006.
On June 6, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <nhngame.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 June 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 28, 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@nhngame.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nhngame.net> domain name is confusingly similar to Complainant’s NHN mark.
2. Respondent does not have any rights or legitimate interests in the <nhngame.net> domain name.
3. Respondent registered and used the <nhngame.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NHN Corp., is a company that designs and provides online computer games. Complainant holds numerous trademark registrations for its NHN mark in several countries, including one with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,000,894). Complainant has used its NHN mark since at least as early as December 12, 2003.
Respondent registered the <nhngame.net> domain name on September 10, 2005. Respondent’s disputed domain name resolves to a website that allows Internet users to play computer gambling games.
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.
The Panel finds that Complainant’s trademark registrations, both internationally and with the USPTO, sufficiently establishes Complainant's rights in the NHN mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); 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 [or] have acquired secondary meaning.”).
Respondent’s <nhngame.net> domain name is confusingly similar to Complainant's NHN mark pursuant to Policy ¶ 4(a)(i) as it combines Complainant’s mark with a term that describes products and services offered by Complainant. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found that there was confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Accordingly, the Panel finds the addition of the word “game” to Complainant’s mark is not enough to negate the confusing similarity between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <nhngame.net> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does not have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <nhngame.net> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use
Complainant’s NHN mark, and that Respondent is not associated with Complainant
in any way. Furthermore, Respondent’s
WHOIS information does not suggest that Respondent is commonly known by the
disputed domain name. There is also no
evidence in the record to suggest that Respondent is or has ever been known by
the disputed domain name. Consequently,
the Panel finds that Respondent is not commonly known by the disputed domain
name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding
that the respondent was not commonly known by the
<mobilitytrans.com> domain name because
it was doing business as “Mobility
Connections”).
The evidence on record indicates
that Respondent is using the disputed domain name to divert Internet users
attempting to locate Complainant’s website to Respondent’s commercial website,
which is used as an online computer gambling site. In Imation Corp. v. Streut, FA 125759 (Nat. Arb.
Forum Nov. 8, 2002), the panel found that the respondent had no rights or
legitimate interests where the respondent used the disputed domain name to
redirect Internet users to an online casino.
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent’s use
of the disputed domain name is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name that contains Complainant’s
mark in its entirety and adding a term that describes products and services
offered by Complainant. Such use of
Complainant’s mark is capable of creating a likelihood of confusion as to the
source of the website and Complainant’s affiliation with it. The Panel thus finds that such use
constitutes disruption and is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Gen. Media Commc’ns, Inc.
v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith
where a competitor of the complainant registered and used a domain name
confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic
web site).
Based on the uncontested
evidence presented by Complainant, the Panel finds that Respondent registered
and is using the disputed domain name for its own commercial gain. The <nhngame.net> domain
name resolves to a website which hosts a variety of online computer gambling
games. Accordingly, the Panel finds
that such use of the disputed domain name constitutes bad faith registration
and use by Respondent under Policy ¶ 4(b)(iv).
See Encyclopaedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that the respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com> to hyperlink to a gambling site); see also Mars, Inc.
v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent linked the domain name
<marssmusic.com>, which is identical to the complainant’s mark, to a
gambling website).
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 <nhngame.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 18, 2006
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