Lukka, Inc v. Lukka Com
Claim Number: FA2103001934915
Complainant is Lukka, Inc (“Complainant”), represented by Brie Urbaniak, New York, USA. Respondent is Lukka Com (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lukka.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2021; the Forum received payment on March 1, 2021.
On March 2, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lukka.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2021 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@lukka.com. Also on March 4, 2021, 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.
A timely Response was received and determined to be complete on March 23, 2021.
On March 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that the <lukka.com> domain name is identical with the Complainant's Lukka Inc. legal name and trade name. Complainant asserts that it is the holder of the "LUKKA" trademark registered with the United States Patent and Trademark Office (“USPTO”) under registration number 5,979,885.
Complainant asserts that the Respondent has no connection to the "Lukka" name nor any ties to the USA. Respondent use of the <lukka.com> domain name doesn’t qualify as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use because it is not in use and is merely inactively holding the disputed domain name.
Complainant argues that the Respondent registered the <lukka.com> domain name in bad faith since (i) the domain name is dormant (ii) most likely in order to later resell it at a profit without any intention to use it.
B. Respondent
Respondent argues that the Complainant Lukka, Inc., a New York corporation is not the same entity as the owner of the "LUKKA" trademark registered with the USPTO under registration number 5,979,885 since the company indicated on the registration is Libra Services, Inc., a Delaware corporation. The Complainant has not provided anything to show that Libra Services Inc. is same as the Complainant (Lukka, Inc.).
Respondent is the owner of the lawfully incorporated South Korean company Lukka Inc., established on November 11, 2010 and registered with South Korean government on November 24, 2010. Respondent Lukka Inc. has been continuously and actively using in commerce the company name Lukka as a service mark in connection with its software development and internet services
business since 2010 more than 10 years before the Complainant allegedly started using the name for the first time.
Respondent asserts that it has invested substantial efforts and resources in developing the lukka.com website. Respondent did not register or use the <lukka.com> domain name in bad faith.
The Panel finds that Complainant has not demonstrated any relationship with the owner (Libra Services Inc.) of the "LUKKA" trademark registered with the USPTO under registration number 5,979,885.
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.
Respondent argues Complainant lacks rights in the LUKKA mark, as the name used and state of incorporation are different between what is shown on the trademark certificate of the "LUKKA" trademark registered with the USPTO under registration number 5,979,885 since the company indicated on the registration is Libra Services, Inc., a Delaware corporation. The notes that Complainant has not provided anything to show that Libra Services Inc. is same as the Complainant (Lukka, Inc.).
To assert rights in a mark, a complainant must be the owner of the trademark rights. See MNM Investments, LLC v. Jarosalw Matula, FA1503001611023 (Forum Apr. 30, 2015) (denying Complainant on the grounds that Complainant assumed, without adducing evidence, that since Complainant was an assignee to trademark rights in the past, it continued to be an assignee to the same trademark rights in the present.); see also NBA Props., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying complaint because the complainant was not the owner of the KNICKS trademarks).
Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the "LUKKA" trademark, therefore the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lukka.com> domain REMAIN WITH Respondent.
dr. Katalin Szamosi Panelist
Dated: April 12, 2021
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