Nu Mark LLC v. Kiwon Choi
Claim Number: FA1509001637632
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is Kiwon Choi (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greensmoke-korea.com>, registered with Koreacenter.com co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2015; the Forum received payment on September 14, 2015.
On September 16, 2015, Koreacenter.com co., Ltd. confirmed by e-mail to the Forum that the <greensmoke-korea.com> domain name is registered with Koreacenter.com co., Ltd. and that Respondent is the current registrant of the names. Koreacenter.com co., Ltd. has verified that Respondent is bound by the Koreacenter.com co., Ltd. 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@greensmoke-korea.com. Also on September 21, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Notices, 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 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 made the following contentions
1. Complainant has registered the GREEN SMOKE trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,860,744, registered Oct. 12, 2010).
2. The mark is used on or in connection with the sale of electronic vapor products, as well as cartomizers, batteries, battery charges, and car power adaptors for e-vapor products.
3. The <greensmoke-korea.com> domain name is confusingly similar to the GREEN SMOKE trademark because the domain name contains the entire mark and differs only by the addition of a hyphen, the geographically descriptive term “korea,” and the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is failing to use the domain name actively, which cannot be a bona fide offering or a legitimate noncommercial or fair use.
5. Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). Respondent’s use of the disputed domain name is disrupting Complainant’s business. Further, Respondent is attempting to profit from a likelihood of confusion as to its association with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of electronic vapor products, as well as cartomizers, batteries, battery charges, and car power adaptors for e-vapor products.
2. Complainant has registered the GREEN SMOKE trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,860,744, registered Oct. 12, 2010).
3. The <greensmoke-korea.com> domain name was registered on January 8, 2015.
4. The domain name does not resolve to an active website.
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 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.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has registered the GREEN SMOKE trademark with the USPTO (e.g., Reg. No. 3,860,744, registered Oct. 12, 2010). The mark is used on or in connection with the sale of electronic vapor products, as well as cartomizers, batteries, battery charges, and car power adaptors for e-vapor products. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark in Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GREEN SMOKE mark. Complainant argues that the <greensmoke-korea.com> domain name is confusingly similar to the GREEN SMOKE trademark. Complainant notes that the domain name contains the entire mark and differs only by the addition of a hyphen, the geographically descriptive term “korea,” and the gTLD “.com.” As a general rule, the addition of punctuation-related alterations or the gTLD “.com,” on their own, cannot distinguish any domain name from the trademark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Furthermore, prior panels have established a confusing similarity where the domain at issue contained the entire mark along with a hyphen and a geographically descriptive term. See JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark). Therefore, the Panel finds that the <greensmoke-korea.com> domain name is confusingly similar to the GREEN SMOKE trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GREEN SMOKE mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on January 8, 2015;
(c) The domain name does not resolve to an active website but the evidence shows that it in all likelihood it will use the domain name for commercial activities for its own benefit;
(d) Complainant asserts that Respondent is not commonly known as the <greensmoke-korea.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the GREEN SMOKE mark in domain names. The Panel notes that “Kiwon Choi” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant argues that Respondent’s use of the <greensmoke-korea.com> domain name fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that Respondent has failed to use the domain name actively, and therefore it is not possible that Respondent can be making a bona fide offering or some other legitimate use. The Panel notes that the domain name resolves to a blank webpage with a message reading, “We will open website soon.” See Compl., at Attached Ex. G. Prior panels have found that failure to use a domain name will result in a lack of rights or legitimate interests for the respondent. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, as the Panel finds that Respondent is failing actively to use the domain name now in dispute, it declines to find that Respondent has rights or legitimate interests rights under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Complainant argues that because Respondent has announced to Internet users that a website will be active soon at the disputed domain name (see Compl., at Attached Ex. G), it can be inferred that, at some point, Respondent will use the domain name for commercial profit, and thus cause disruption. In finding bad faith under Policy ¶ 4(b)(iii), prior panels have stated that the domain name needs to compete with the complainant’s business. See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). In defining “competitor” or “competition,” the Panel notes Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000), where the panel defined a competitor as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.” On balance, the Panel finds that in all probability the intention of Respondent is to use the domain name for commercial purposes inimical to Complainant and for the benefit of Respondent. Accordingly the Panel finds bad faith registration and use of the domain name under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. Complainant submits that Internet users who view the resolving webpage are likely to believe it is sponsored by or affiliated with Complainant and its GREEN SMOKE trademark. Further, Complainant maintains that Respondent is presumably intending to profit from this behavior. It is well-established that a respondent will have acted in bad faith under Policy ¶ 4(b)(iv) where a likelihood of confusion is present and commercial profit is sought. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As the Panel finds that such is the case in this instance, it finds bad faith under Policy ¶ 4(b)(iv).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <greensmoke-korea.com> domain name using the GREEN SMOKE mark and the other matters referred to above, Respondent has registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greensmoke-korea.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 16, 2015
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