L’Air Liquide, SA v. Park GyeongSook
Claim Number: FA1612001707284
Complainant is L’Air Liquide, SA (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Park GyeongSook (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phargalis.com>, registered with Go Australia Domains, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2016; the Forum received payment on December 20, 2016.
On December 14, 2016, Go Australia Domains, LLC confirmed by e-mail to the Forum that the <phargalis.com> domain name is registered with Go Australia Domains, LLC and that Respondent is the current registrant of the name. Go Australia Domains, LLC has verified that Respondent is bound by the Go Australia Domains, LLC 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@phargalis.com. Also on December 21, 2016, 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 January 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink 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, L’Air Liquide, SA, is a supplier of industrial gases, specialty gases, and related technologies and services for industry and healthcare. In connection with this business, Complainant uses the PHARGALIS mark in the production and sale of compressed, bottled gases for use in biotechnology and other industries. Complainant has rights in the PHARGALIS mark based upon registration with the EU’s Office for Harmonization in the Internal Market (“OHIM”) and World Intellectual Property Organization (“WIPO”) (OHIM–Reg. No. 006614408, registered July 29 2009; WIPO–Reg. No. 774442, registered Sept. 13, 2001). Respondent’s <phargalis.com> is identical to the mark, as it consists only of the mark in its entirety, merely appending the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <phargalis.com>. The disputed domain name resolves to a classic pay-per-click page displaying links which direct visitors to adult-oriented websites which are not associated with Complainant. Such behavior does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. First, Respondent is attempting to sell the domain for excess of out-of-pocket costs, evidence of Policy ¶ 4(b)(i) bad faith. Also, Respondent is a serial cybersquatter, having registered domains infringing upon multiple famous marks, evidence of Policy ¶ 4(b)(ii) bad faith. Further, Respondent’s registration and use of <phargalis.com> to confuse Internet users and gain revenue through pay-per-click links shows Policy ¶ 4(b)(iv) bad faith. Respondent likely had actual knowledge of Complainant’s right in the PHARGALIS mark at the time it registered and subsequently used the disputed domain name. Finally, the use of the resolving web site to host links to adult-oriented content is further evidence of Respondent’s bad faith pursuant to the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <phargalis.com> domain name.
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(f), 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 (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.”).
Complainant claims rights in the PHARGALIS mark based upon registration of the mark with the OHIM and WIPO (OHIM–Reg. No. 006614408, registered July 29 2009; WIPO–Reg. No. 774442, registered Sept. 13, 2001). Registration of a mark with multiple major trademark agencies is sufficient to establish rights in that mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). The Panel therefore holds that Complainant’s registration of the PHARGALIS mark with the OHIM and WIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims Respondent’s <phargalis.com> is identical to the PHARGALIS mark, as the disputed domain consists only of the mark in its entirety, merely appending the gTLD “.com.” Adding a gTLD to a mark in order to create a domain name does not distinguish the domain name from the mark in a Policy ¶ 4(a)(i) analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Accordingly, the Panel finds Respondent’s <phargalis.com> is identical to the PHARGALIS mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <phargalis.com> as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Park GyeongSook.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by the failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <phargalis.com> resolves to a pay-per-click page displaying links to adult-oriented material not associated with Complainant. Use of a domain name to link to adult-oriented content is not a use that grants rights or legitimate interests per Policy ¶¶ 4(c)(i) or 4(c)(iii). See Dipaolo v. Genero, FA 203168 (Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”). The Panel agrees and finds Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain.
Complainant claims Respondent registered the disputed domain name with the intention to sell it. Offers of sale of a domain name at prices far in excess of the registration cost can be evidence of bad faith registration under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The resolving web site for the disputed domain name contains the prominent message “The owner of phargalis.com is offering it for sale for an asking price of 1900 EUR!” Complainant contends that given Respondent’s ownership of other trademark-bearing domains and the similar for sale notices at their websites, it may be assumed the notice is directed at Complainant. The Panel finds that evidence of such an offer indicates bad faith pursuant to Policy ¶ 4(b)(i) and also finds that Respondent primarily intended for such an offer when registering the domain.
Complainant also contends Respondent is a serial cyber-squatter and that Respondent’s registration of <phargalis.com> is part of a pattern of bad faith registration. A showing of a history of bad faith registration can itself be evidence of bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).” After completing a reverse WHOIS search on Respondent’s listed email address, Complainant points to a list of domains it believes infringes on trademarks other than Complainant’s own. The Panel finds that this is evidence of a pattern of bad faith registration on behalf of Respondent and finds Respondent to be acting in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant also claims Respondent is using the disputed domain name to confuse Internet users for commercial gain. Use of a domain name to host links to content unrelated to Complainant’s business is evidence of Policy ¶ 4(b)(iv) bad faith. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel notes that <phargalis.com> resolves to a web page consisting of links to adult-oriented web pages. Complainant presumes Respondent gains revenue when Internet users click the hosted links. Linking to adult-oriented content may itself be taken as evidence of a respondent’s bad faith per Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel agrees and finds Respondent acted in bad faith pursuant to Policy ¶¶ 4(a)(iii) and/or 4(b)(iv).
Complainant further argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the PHARGALIS mark. Complainant argues that Respondent is a sophisticated domain registrant with thousands of domains in its portfolio, indicating that Respondent had actual knowledge of Complainant's mark and rights. Complainant cites precedent to the effect that professional domainers cannot be willfully blind to whether their domains infringe on trademarks. See, e.g., mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO Nov. 30, 2007) (“a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trade mark rights.”). Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <phargalis.com> domain name be TRANSFERRED from Respondent to Complainant .
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 27, 2017
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