World Education Services, Inc. v. Yunsung Lee
Claim Number: FA0606000738148
PARTIES
Complainant is World Education Services, Inc. (“Complainant”), represented by Andrew C. DeVore and Jonathan M. Eisenberg, of Manatt, Phelps & Phillips, LLP, 7 Times Sq., New York, NY 10036. Respondent is Yunsung Lee (“Respondent”), represented by Kijoong Kim, Mointer Bldg. 2F, 1675-12, Seocho-Dong, Seocho-Ku, Seoul 137-070, Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wes.com>,
registered with Cydentity, Inc. d/b/a Cypack.Com.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 23, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 26, 2006.
On June 27, 2006, Cydentity, Inc. d/b/a Cypack.Com confirmed by e-mail
to the National Arbitration Forum that the domain name <wes.com> is registered with Cydentity, Inc. d/b/a
Cypack.Com and that the Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.Com has
verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.Com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On July 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 26, 2006 by which Respondent is entitled to file a Response to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@wes.com by e-mail.
A timely Response was received and determined to be complete on July
26, 2006.
An Additional Submission was received from
Complainant on July 31, 2006, which was found submitted timely.
On August 10, 2006, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun
Nahm as Panelist.
RELIEF
SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The domain name
<wes.com> is identical or confusingly similar to Complainant's federally-registered and
common-law U.S. trademarks WES, WES.ORG, and WORLD EDUCATION SERVICES. Complainant
has established strong U.S. federal and common-law rights in the marks
WORLD EDUCATION SERVICES, WES, and WES.ORG through its activities and services around the world over many
years, and through its operation of the <wes.org> website in connection
with those activities and services.
The Respondent has no rights or legitimate
interests with respect to the domain
name,
because he does not offer his own goods or services under the name or
mark <wes.com>, while attracting
users by cannibalizing Complainant’s
trademarks and associated goodwill, and monetizes visits by diverted Internet
users using the online advertising company.
Respondent
registered, used, and continues to use the <wes.com> domain name
in bad faith because he is taking
commercial advantage of the confusing similarity between, on one hand, its
domain name <wes.com>.
And thus, the domain name in dispute should be transferred to Complainant.
B. Respondent
Complainant owns two federally-registered trademarks in the U.S while he does
not have common-law rights in WES.ORG. The Complainant’s registered trademarks are not
confusingly similar to the domain
name in dispute.
Respondent has rights or
legitimate interests in respect of the domain name in dispute because
it conducts the Internet business offering the combination of traffic and/or
queries of the domain name in dispute and its advertisement thereby gaining profit,
which should be considered as being a rightful business.
Respondent also asserts that Complainant must establish a
“world-famous” mark or a mark having a
strong secondary meaning, but it is neither well known around the world nor
considered as having obtained a secondary meaning merely on the basis
of the Complainant's exhibits, and
thus he did not know the existence
of the mark ‘WES’ or
register <wes.com> in bad faith.
C. Additional Submissions
Complainant has asserted in the Additional
Submission to the effect that: i) Respondent’s claim that Complainant does not have either
statutory or common-law rights in WES, WORLD EDUCATION SERVICES, and WES.ORG is simply wrong as a matter of
law, ii) even if <wes.com>
were not plainly identical or confusingly similar to Complainant’s registered WES mark, the decisions of this tribunal
make abundantly clear that Complainant may
rely on its common-law marks to recover the infringing <wes.com>
domain, iii) Respondent’s
comparison between his business and Google’s “AdWords” program is nonsensical
and contrary to the prior decisions of this tribunal, iv) Respondent has no rights or legitimate interests in <wes.com> on various factual
situations, and v) Respondent registered
and uses <wes.com> in bad faith in light of Respondent’s
various conducts in naming, registering and using the domain name in dispute
and of the fact that Respondent concedes that he unlawfully diverted Internet traffic to <wes.com> for personal
financial gain.
Complainant owns U.S. trademark
registrations for the marks WES (“WES”
inside a shaded oval) and WORLD
EDUCATION SERVICES (Complainant’s Exhibit
1.). Complainant is known
as both “World Education Services” and “WES,” the acronym of World Education
Services (Complainant’s Exhibit
2.). Complainant has used the marks WES and WORLD EDUCATION SERVICES in
commerce continuously since 1974 (Complainant’s Exhibit 1, 2.).
Respondent concedes that he registered the domain name in dispute at <domainsponsor.com>,
thereby letting them utilize it for the domain traffic advertisement and
receiving fees in return.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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 the Complainant should 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 contends
that because the registered mark WES is registered with the term “WES” inside a
shaded oval (Complainant’s Ex. 1),
<wes.com>, consisting of text only, cannot be confusingly similar
to that mark.
However, the Panel finds the shaded oval device
does not constitute an inseparably integrated part of the word ‘WES,’ and thus
the word ‘WES’ is considered as being an independent element from the device
portion, and thus it is likely to be conceived and pronounced by the word ‘WES’
irrespective of the oval device. On the
other hand, the part ‘.com’ in the domain name in dispute is a non-distinctive
element belonging to the public domain, and thus it should not be considered in
determining the similarity of the marks. In this respect, the prominent portion of the Complainant’s
registered mark ‘WES’ inside a shaded oval device and the domain name in
dispute is identical as ‘WES,’ and thus the Panel concludes that the domain name
in dispute is confusingly similar to the Complainant’s registered mark WES in a
device.
Respondent contends
that he has conducted the business
by offering the domain name in dispute for the domain traffic advertisement and
receiving fees in return for registering the domain name in dispute at <domainsponsor.com>
and further contends that such a domain traffic advertisement is a rightful
business practice, and that, he has rights or legitimate interests for the
domain name in dispute.
The Panel, however, does not find it lawful to utilize and offer
the domain name for the monetization of the site under that domain name, which
is confusingly similar to a third party’s mark and its use is not
authorized by the third party. Such
an act also constitutes a violation of ICANN policy where the
domain name of the monetized site is confusingly similar to a third
party’s mark, and its use is not authorized by the third party (ICANN Policy 4(b)(iv)). Therefore, the Panel cannot recognize that
the traffic advertisement business (irrespective of direct or indirect) offered
by Respondent is lawful, and concludes that Respondent has no rights or
legitimate interests in the domain name in dispute.
Respondent contends to the effect that i) Internet
users diverted to <wes.com> were not looking for Complainant’s services, but for a site using
the term ‘WES’ referring to various meanings not necessarily Complainant
company, ii) he registered the domain name in dispute thinking of ‘Wireless
Education Services’ for the purpose of providing the relevant services thereof,
iii) Complainant’s marks WES and World Education Services were neither
considered as having obtained a strong secondary meaning nor being well known
enough to assume that Respondent was aware of its existence at the time when he
named and registered the domain name in dispute in light of recent
searches from South Korean search engines <daum.net>, <naver.com>, and <yahoo.co.k>, iv) Domainsponsor.com or Information.com, not Respondent makes the decisions about
what content to display at <wes.com>, and thus v) Respondent did
not register and use the domain name in dispute in bad faith.
The Panel finds Complainant’s mark WES is not a
descriptive mark with respect to its services of evaluation of foreign educational
credentials in that the term WES does not suggest any nature of the services ‘evaluation
of foreign educational credentials,’ and thus it is not necessary for the mark
to have obtained a secondary meaning or to have been well known to assume the
bad faith of Respondent.
The Panel further finds that the Complainant’s
marks WES and World Education Services were known to a substantial extent among
the consumers seeking the service
evaluation of educational credentials, including Korean consumers prior
to the registration date of the domain name in dispute in light of the length
of period of offering such services about thirty years around the world, and of
the fact that Complainant has received many thousands of applications
each year since 2000 through the <wes.org> site from people educated in South Korea (Complainant’s Exhibits 2 & 3, 8 through 11).
The Respondent contends that Domainsponsor.com
or Information.com not the Respondent makes the decisions
about what content to display at <wes.com> pursuant to the terms and conditions of the contract between
Respondent and Domainsponsor.com, and thus he is not legally responsible for
the contents.
The Panel finds however, Respondent owns the domain name in dispute, and it is clear that he is responsible for the contents of the website
under the domain name in dispute. Respondent has allowed Domainsponsor.com to make decisions about what
content to display by way of making the contract to that effect, and thus Respondent
himself cannot evade the responsibility
for the contents for his own website under the domain name in dispute.
Respondent’s conduct in naming his
site, calling it “World Education Services,” and offering links to
education-related services superficially similar to WES’ services enable the Panel to assume Respondent’s prior knowledge and intent to trade on Complainant’s trademarks. The
Panel finds Respondent has allowed
the domain name in dispute for being used for diverting Internet traffic that was initially
intended for Complainant and to profit from such traffic. See Microsoft Corporation v. Mindkind,
D2001-0193 (WIPO Apr. 23, 2001); see also Tata Sons Ltd. v. The Advanced Information Technology Association, D2000-0049 (WIPO Apr. 10, 2000); see also Am.
Online, Inc. v. Exit New York Magazine Corp., a/k/a Exit Magazine Corp.,
D2001-0673 (WIPO Aug. 2, 2001); see also Buy As You View Limited v. Kevin
Green, D2000-1206 (WIPO Nov. 3, 2000); FINAXA Societe Anoyme v. James
Lee, D2002-1098 (WIPO Jan. 20, 2003); see also Deloitte
Touche Tohmatsu v. Chan, D2003-0584 (WIPO Sept. 7, 2003).
As such, the Panel concludes that Respondent registered and used the domain
name in dispute in bad faith.
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 <wes.com>
domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Dated: August 23, 2006
National
Arbitration Forum
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