Kinesio IP LLC v. Hahm YoungWook
Claim Number: FA1409001580043
Complainant is Kinesio IP LLC (“Complainant”), represented by Danny M. Awdeh of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Hahm YoungWook (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinesiotape.com>, registered with MEGAZONE CORP. DBA HOSTING.KR.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 16, 2014; the National Arbitration Forum received payment on September 16, 2014. The Complaint was received in both Korean and English.
On September 17, 2014, MEGAZONE CORP. DBA HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <kinesiotape.com> domain name is registered with MEGAZONE CORP. DBA HOSTING.KR and that Respondent is the current registrant of the name. MEGAZONE CORP. DBA HOSTING.KR has verified that Respondent is bound by the MEGAZONE CORP. DBA HOSTING.KR registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 26, 2014, the Forum served the Korean Complaint and all Annex-es, including a Korean language Written Notice of the Complaint, setting a dead-line of October 16, 2014 by which Respondent could file a Response to the Com-plaint, via e-mail message addressed to all entities and persons listed on Re-spondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@kinesiotape.com. Also on September 26, 2014, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Re-spondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. 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
Complainant is a global leader in the marketing of goods related to sports per-formance, pain management and physical therapy.
Complainant’s signature product is KINESIO sports therapy tape.
Complainant holds trademark registrations for the KINESIO trademark, which are on file with the United States Patent and Trademark Office (“USPTO”), including
Registry No. 1,613,689, registered September 18, 1990).
Complainant extensively promotes its products and services through its website at <kinesiotaping.com>, registered on May 15, 1988.
Respondent registered the <kinesiotape.com> domain name on March 13, 2002.
The domain name is confusingly similar to Complainant’s KINESIO mark.
Respondent has not been commonly known by the domain name.
Respondent has no trademark registrations for the KINESIO mark.
Complainant has not authorized Respondent to use its KINESIO mark.
Respondent is not making an active use of the domain name.
There is no content affiliated with Respondent’s resolving website.
The domain name resolves to a website displaying an error message.
Respondent has no rights to or legitimate interests in the domain name.
Respondent had actual knowledge of Complainant and its KINESIO mark at the time Respondent registered the disputed domain name.
Respondent both registered and is using the <kinesiotape.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PrelimiNary Matter: Language of the Proceeding
The Registration Agreement applicable to this proceeding is written in Korean, thereby making the language of the proceedings Korean. However, pursuant to UDRP Rule 11(a), we find that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response from Respondent, we determine that the remainder of this proceeding may be conducted in English.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the KINESIO trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Republic of Korea). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complain-ant can demonstrate rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <kinesiotape.com> domain name is confusingly similar to Complainant’s KINESIO trademark. The domain name contains the KINESIO mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com” and the generic term “tape,” which relates to Complain-ant’s business. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of the mark of another and the addition to it of a gTLD in creating a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because a domain name incorporated the VIAGRA mark of a UDRP complainant in its entirety, and deviated only by the addition of the word “bomb,” the domain name was confusingly similar to the mark under Policy ¶ 4(a)(i)).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <kinesiotape.com> domain name, and that Complainant has not authorized Respondent to use its KINESIO mark. Moreover, the pertinent WHOIS identifies the registrant of the domain name only as “Hahm YoungWook,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legiti-mate interests in it within the contemplation of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel there finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by a disputed domain name and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making an active use of the disputed domain name, and that the domain name resolves to a website displaying an error message. Under the Policy, a respondent’s failure to make an active use of a domain name over an extended period (here the domain name was registered in 2002) can consti-tute a form of use which 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).
See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using them either for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or a fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
It is customary for a panel called upon to determine the merits of a UDRP com-plaint to examine the question whether a respondent has registered and is using a contested domain name in bad faith by resort to the provisions of Policy ¶ 4(b). However, where, as here, a respondent’s conduct with respect to a disputed domain name does not fall directly within the parameters of ¶ 4(b), we may look to the totality of the attending circumstances, as revealed in the filings made by the parties, in weighing the question of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that 4(b) of the Policy is not an exhaustive list of bad faith considerations); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000):
[J]ust because Respondent’s conduct does not fall within the ‘par-ticular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.
We therefore turn now to the circumstances described in the undenied allega-tions of the Complaint.
In so doing, we first take account of the fact that Respondent has apparently failed to make any active use of the disputed <kinesiotape.com> domain name from the time of its registration in 2002 to the present. This unexplained exten-sive period of inactive holding of the domain name is indicative of bad faith in its registration use as understood under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel there concluding that a respondent’s failure to make an active use of a domain name satisfied the bad faith proof requirement of ¶ 4(a)(iii) of the Policy).
We also take account of the fact that it is plain from the record that Respondent knew of Complainant and its rights in the KINESIO mark at the time Respondent registered the <kinesiotape.com> domain name. The very construction of the domain name, taken together with the timing of Respondent’s registration of it, long years after Complainant began using it in commerce and acquired rights to it by trademark registration, lead inevitably to the conclusion that the domain name was registered and is now used in bad faith. See Univision Comm. Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's conten-tion that it did not register a domain name in bad faith where the panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when registering the domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <kinesiotape.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 31, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page