R. Twining and Company Limited v. yunkook jung
Claim Number: FA1905001844985
Complainant is R. Twining and Company Limited (“Complainant”), represented by Zak Muscovitch of Muscovitch Law Professional Corporation, Canada. Respondent is yunkook jung (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twiningstea.com>, registered with DropCatch.com 1148 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 May 27, 2019; the Forum received payment on May 27, 2019.
On May 28, 2019, DropCatch.com 1148 LLC confirmed by e-mail to the Forum that the <twiningstea.com> domain name is registered with DropCatch.com 1148 LLC and that Respondent is the current registrant of the name. DropCatch.com 1148 LLC has verified that Respondent is bound by the DropCatch.com 1148 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 May 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2019 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@twiningstea.com. Also on May 28, 2019, 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 June 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 operates in the commercial tea industry. Complainant has rights in the TWININGS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 556,838, registered April 1, 1952). Respondent’s <twiningstea.com> domain name is identical or confusingly similar to Complainant’s TWININGS mark because it wholly incorporates Complainant’s TWININGS mark, and merely adds the descriptive term “tea” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <twiningstea.com> domain name. Respondent is not authorized to use Complainant’s TWININGS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the disputed domain name resolves to a webpage hosting pay-per-click ads.
Respondent registered and uses the <twiningstea.com> domain name in bad faith. Respondent attempted to sell the disputed domain name. Respondent has engaged in a pattern of bad faith registration as it has a history of past adverse UDRP decisions. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent uses the resolving webpage to host pay-per-click ads. Finally, Respondent had actual knowledge of Complainant’s TWININGS mark prior to registering the disputed domain name.
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 <twiningstea.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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the TWININGS mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 556,838, registered April 1, 1952). Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) The Panel finds that Complainant has rights in the TWININGS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <twiningstea.com> domain name is identical or confusingly similar to Complainant’s TWININGS mark because it wholly incorporates Complainant’s TWININGS mark, and merely adds the descriptive term “tea” and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s TWININGS mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <twiningstea.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the TWININGS mark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for the disputed domain name that indicates Respondent is known as “Yunkook Jung” and no information of the record indicates that Respondent was authorized to use the Complainant’s TWININGS mark. The Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent lack rights and legitimate interests in the <twiningstea.com> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use by hosting pay-per-click ads on the disputed domain name’s resolving webpage. Use of a domain name to host advertising links to products that compete with those of a complainant does not constitute a bona fide offering or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The Panel finds that that Respondent has failed to provide 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).
Complainant has proved this element.
Complainant argues Respondent registered and uses the <twiningstea.com> domain name in bad faith because Respondent attempted to sell the disputed domain name. A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i). Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Respondent offered the disputed domain for sale to the general public for $5,036.00. The Panel finds that this is evidence Respondent registered and uses the disputed domain name in bad faith.
Complainant asserts that Respondent registered and uses the <twiningstea.com> domain name in bad faith because Respondent has a pattern of bad faith registrations. Evidence that respondent owned various domain names infringing on famous third-party marks and previous adverse UDRP decisions can evince bad faith registration under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Here, Respondent has a history of infringing on third-party marks and has previous adverse UDRP decisions against it. The Panel finds that Respondent has engaged in a pattern of bad faith registrations per Policy ¶ 4(b)(ii).
Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent uses the resolving webpage to host pay-per-click ads. Bad faith registration has been found under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (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). Complainant asserts that Respondent uses the resolving webpage to host pay-per-click ads. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had actual and/or knowledge of Complainant’s rights in the TWININGS mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <twiningstea.com> domain name and Respondent’s use of the mark on the resolving webpage. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel finds from Complainant’s uncontested allegations that Respondent had actual notice of Complainant’s rights in the TWININGS mark under Policy ¶ 4(a)(iii) and registered and uses the domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <twiningstea.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 24, 2019
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