American Society of Plumbing
Engineers v. Lee Youngho
Claim Number: FA0701000882390
PARTIES
Complainant is American Society of Plumbing Engineers (“Complainant”), represented by David
J. Lynam, 1 N LaSalle #3100, Suite 3100, Chicago, IL 60606. Respondent is Lee Youngho (“Respondent”), Cheongnyangri 1-dong, Dongdaemun-gu,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aspe.com>, registered with Korea
Information Certificate Authority, Inc. d/b/a Domainca.com.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hong Oo Baak as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On January 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 12, 2007, 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@aspe.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant asserts that Complainant’s
2. Complainant asserts that Respondent should
be considered as having no rights or legitimate interests in respect of the
domain name that is the subject of the complaint. Neither before nor after Complainant’s
notice to Respondent of the dispute, Respondent’s use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
had absolutely no connection with a bona fide offering of goods or services, as
Respondent’s domain was dedicated entirely to links to other websites with no
connection to Respondent or any business related to Respondent.
Complainant further asserts that Respondent has
not been commonly known by the domain name, and that Respondent has no business
relating to the domain name, and also has not and cannot acquire trademark or
service mark rights due to the absence of any legitimate use. According to
Complainant, Respondent only uses the mark for commercial gain to misleadingly
divert consumers.
3. Complainant asserts that Respondent’s
registration of the domain name should be considered as having been registered
and being used in bad faith. According to Complainant, there are circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to Complainant who is the owner of the trademark, or
service mark, or to a competitor of that Complainant, for valuable consideration
in excess of Respondent’s documented out-of-pocket costs directly related to
the domain name. According to Complainant, Complainant was the registrant until
2002 and Respondent offered to sell the domain back to Complainant.
Complainant further asserts that Respondent has
intentionally attempted to attract, for commercial gain, Internet users to Respondent’s
web site or other on-line location, by creating a likelihood of confusion with
the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web site or location or of a product or service on Respondent’s
web site or location, as Respondent’s site contains links to others who have no
relationship with Respondent.
B. Respondent
1. Respondent contends that although Complainant’s mark, ASPE, is registered in the
USA with its name suggesting it is an association in the USA, it does not mean
that the mark is well-known in countries other than the USA.
Respondent contends that the four-letter domain name, namely ASPE, is non-exclusively used by a large number of other users having no connection to Complainant’s
ASPE mark.
Respondent further contends that Complainant’s
mark ASPE is not internationally well-known therefore it would be unreasonable
to deny others from registering a domain name identical or similar to Complainant’s
mark.
2. Respondent asserts that it acquired <aspe.com> for the purpose of opening up a business,
however due to some changes in the plan, he is not using the domain, and he
contends that his non-use of the domain does not constitute sufficient evidence
to prove that he used it for dishonest purpose.
Therefore Respondent contends that he does have
rights and a legitimate interest in the domain name <aspe.com>.
3. Respondent contends that he did not register
<aspe.com> in bad faith.
Respondent asserts that he had purchased <aspe.com> at US $3,400 in 2002. When Respondent received
a letter from Complainant, he suggested an amount of US $3,000 for compensation
only. Respondent asserts that the amount of US $3,000 was much that the price
offered for the purchase of many other four (4)-letter “.com” domain.
Respondent also asserts that he did not
purchase <aspe.com> for the purpose of selling the disputed domain
name to the Complainant, because it is beyond expectation for non- profit
organizations such as the Complainant to have interest in purchasing the domain
name which ends with “.com”.
Respondent contends that it used the domain
name <aspe.com> without intent for commercial gain to misleadingly
divert consumers. Respondent asserts that there was an average of 15 persons a
day visiting <aspe.com> and Respondent earned
only an average of $5 a month, where the money gained during one year was spent
for renewal of the domain registration for <aspe.com>.
FINDINGS
1.
Complainant obtained registration of the mark “ASPE” with
the United States Patent Office on
2.
Respondent obtained registration of <aspe.com> in 2002.
3.
Complainant sent a letter dated February 20, 2006 to
Respondent, to demand that he immediately cease and desist from use of the ASPE
mark in his domain name and the American Society of Plumbing Engineers on
Respondent’s website, and to also transfer ownership of the<aspe.com> domain name to Complainant.
4.
Respondent suggested a price to Complainant for
compensation for the transfer of <aspe.com>.
5.
As of
6.
As of March 6, 2007, Respondent’s website at the
disputed domain name is entirely dedicated to links to other sites, but linking
service to plumbing related sites is suspended after the dispute with
Complainant over the domain name.
7.
Respondent gets commercial gain by operating the website
at the disputed domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 has
established that it has rights in the ASPE mark by virtue of its registration
with the United States Patent Office. In the absence of the Respondent
having provided any documentary nor sufficient proof, tending to show that the mark ASPE as understood by its relevant
consumers either as a generic name or term, or sufficiently descriptive to
warrant its cancellation, the Panel has no reason to take a contrary view to
that of the United
States Patent Office. See H. Marvin Ginn Corp. v. Int'l Assoc. of Fire Chiefs, Inc.
228 U.S.P.Q. 528, 530 (Fed. Cir.1986).
The addition of the
generic top-level domain (“gTLD”) “.com” is not sufficient to distinguish the
disputed domain name from the mark pursuant to Uniform Domain Name Dispute
Resolution Policy (“Policy”). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO
The Panel finds that Complainant has satisfied that <aspe.com> is identical to or confusingly similar to the mark,
ASPE, in which the Complainant has rights. Policy 4(a)(i).
The failure of
Respondent to respond to the Complaint functions both as an implied admission
that Respondent lacks rights and legitimate interests in the domain name, as
well as an opportunity for the Panel to accept Complainant’s reasonable
allegations as true. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO
Even though, Respondent’s use of the disputed
domain name before any notice from the Complainant would be acknowledged, such
use does not constitute bona fide offering of goods or services pursuant to Policy 4(c)(i). The reason is that
Respondent has been using the disputed domain
name for the
purpose of redirecting Internet users who are confused by the domain name identical to
Complainant’s mark to a website which is entirely dedicated to
links to other sites. See eBay Inc. v. Sunho Hong,
D2000-1633 (WIPO
In addition, Respondent’s assertion that he planned to use the disputed domain name in opening up his business is not sufficient to prove demonstrable preparations to
the disputed domain name.
Furthermore,
Complainant asserts that Respondent is not commonly known by the domain name <aspe.com>, and Respondent fails to prove to the contrary.
In light of the
above, the Panel finds that Complainant has established Policy 4(a)(ii).
Complainant fails to
provide sufficient evidence that Respondent has registered or has acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to Complainant or to a competitor of Complainant,
for valuable consideration in excess of Respondent’s documented out-of-pocket
costs directly related to the domain name. Respondent also fails to provide
evidence that he purchased <aspe.com> at a price of US $3,400
in 2002 and that he suggested an amount of US $3,000 for compensation only. Therefore
both Complainant and Respondent fail to offer any proof of their respective
allegation.
However, Respondent diverts
Internet users who have interest in Complainant’s website to his website by
using the disputed domain names identical to Complaint’s mark. . Moreover,
Respondent admits that he benefits from using the disputed domain name. See Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat.
Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered
and used in bad faith pursuant to Policy
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness).
Therefore, Respondent’s
use of the domain name <aspe.com> to redirect Internet
users to other websites is evidence of bad faith
The Panel finds that
Respondent registered the domain name in bad faith. Policy 4(a)(iii).
Other
The Complainant
requests Panel to issue a decision that the domain-name registration be
transferred to Respondent in the Remedy Sought of its Complaint. “Respondent” in
the Remedy Sought is considered as the misrepresentation of “Complainant”.
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 <ASPE.COM> domain name be TRANSFERRED
from Respondent to Complainant.
Hong Oo Baak, Panelist
Dated:
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