DECISION

 

CPS US LLC v. beats

Claim Number: FA2308002056251

 

PARTIES

Complainant is CPS US LLC ("Complainant"), represented by Laura J. Winston of Offit Kurman, P.A., New York, USA. Respondent is beats ("Respondent"), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <copma.com>, registered with Megazone Corp., dba HOSTING.KR.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 6, 2023; Forum received payment on August 6, 2023.

 

On August 23, 2023, the Registrar confirmed by e-mail to Forum that the <copma.com> domain name is registered with it and that Respondent is the current registrant of the name.  The Registrar 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 August 29, 2023, Forum served the Complaint and all Annexes, including a Korean and English Written Notice of the Complaint, setting a deadline of September 18, 2023 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@copma.com. Also on August 29, 2023, the Korean and English 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, Forum transmitted to the parties a Notification of Respondent Default in English and Korean.

 

On September 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUES 

A.       LANGUAGE OF PROCEEDINGS

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in Korean. You have two options: 1. Translate the Complaint and Table of Contents into Korean, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant chose to amend the Complaint, submitting that the proceedings should continue in English.  In particular, Complainant submits that:

 

…Respondent is conversant and proficient in English because (1) Respondent's email address is presented in English; (2) the disputed domain name is written in Latin script; and (3) the content found on representative samples of archived webpages from Respondent's <copma.com> domain name since 2003 is rendered in English. Moreover, Respondent is a serial cybersquatter that has been involved in numerous UDRP proceedings conducted in English, and in which the domain names have been transferred to the complainant.

 

The Panel is not moved by those submissions. Points (1) and (2) are almost irrelevant to a capacity in English (or any language). The "content" referred to in point (3) is nothing more than a third party generated message: "this domain name is for sale".  Finally, Respondent did not involve itself in the earlier UDRP proceedings conducted in English. In short, there is nothing to establish that Respondent has any capacity in the English language.

 

Paragraph 11(a) of the Rules provides that "the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

 

Complainant submits that it has no ability in Korean and the Panel accepts that statement. Complainant also submits that Respondent is a serial cybersquatter and that it is an unnecessary burden for it to translate the Complaint into Korean.

 

The Panel has reviewed briefly the earlier UDRP cases involving Respondent and can see that there is a pattern of bad faith findings against it and, as observed above, Respondent has not as a rule defended itself. It is primarily for these reasons that, pursuant to Rule 11(a), the Panel determines that the remainder of these proceedings may be conducted in English.

 

B.       MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

In the original and amended Complaint, there were two named complainants, CPS US LLC and CPS GROUP S.P.A. The Complaint addressed this matter, stating that:

 

… CPS US LLC is an affiliate of CPS GROUP S.P.A. The principal of CPS GROUP S.P.A. is Enzo Montuschi and the principal of CPS US LLC is Nicola Montuschi. Collectively, Complainants are a closely held global conglomerate operating under CPS GROUP S.P.A. in connection with their commercial activities and intellectual property. Therefore, Complainants and their respective principals, Enzo Montuschi and Nicola Montuschi, may be treated as a single entity for the purposes of this proceeding.

 

For the purposes of paragraph 4(a)(i) of the Policy, the Complaint includes evidence of two trademark registrations for COPMA. One is United States Patent & Trademark Office ("USPTO") Reg. No. 6,047,049 in the name of CPS US LLC. The other is European Union Intellectual Property Office ("EUIPO") Reg. No. 123110023 in the name of Enzo Montuschi.

 

There is no evidence of any trademark rights connected with Nicola Montuschi. There is no evidence of shareholdings and nothing to formally link the gentlemen with one another, or with the businesses.

 

The Panel finds the submissions insufficient to satisfy a common interest in the trademark. However, each nominated complainant has registered trademark rights and each has the same argument with respect to other aspects of the Policy.

 

The USPTO registration is to be preferred as a basis for paragraph 4(a)(i) since (unlike the EUIPO) it predates the creation date of the disputed domain name.  The Decision has been redacted to remove the name, CPS GROUP S.P.A. as a complainant, and thus all references to Complainant are references to CPS US LLC.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in COPMA.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is legally identical to the trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is the owner of a USPTO registration for COPMA;

2.       the disputed domain name was registered on January 19, 2003;

3.       the domain name has not resolved to a developed website and for many years was for sale; and

4.       there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.

 

DISCUSSION

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.

 

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights as it provides proof of its registration of the trademark COPMA with the USPTO, a national trademark authority.

 

The disputed domain name merely appends the gTLD to the trademark and so the Panel finds that the domain name is identical to the trademark for the purposes of the Policy (see, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum, July 27, 2017) ("When a respondent's domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), ".com", then the Panel may find that the disputed domain name is identical to Complainant's mark.").

 

The Panel accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).

 

The domain name holder is "beats". There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.

 

Complainant provides evidence that the disputed domain name has over many years been for sale. On the evidence, there has been no use of the name and, thus, there is nothing that can give rise to rights or a legitimate interest in the domain name (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that a respondent's non-use of disputed domain names demonstrated that that respondent was not using them for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

The Panel observes here that the domain name was registered over twenty years ago. There is no attempt in the Complaint to explain the delay in the commencement of these proceedings. In other circumstances a complainant may struggle to establish bad faith registration but here it is the fact that the domain name has been unused and for sale for such a very long period which causes the Panel to look past Complainant's apparent tardiness and towards paragraph 4(b)(i) of the Policy which prescribes bad faith under:

 

…circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name.

 

The Panel finds, on balance, that Respondent's conduct falls under paragraph 4(b)(i). See, for example, loanDepot.com, LLC v. sm goo, FA 1786848 (Forum, June 12, 2018) (finding that where a respondent's only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)); Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum, Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Here, the trademark is a distinctive term with no obvious meaning. There is nothing to suggest that Respondent had some legitimate need to adopt it. There has been no use.

 

Accordingly, the Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <copma.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated: September 24, 2023