DECISION

 

QSound Labs, Inc. v. O Eunjung

Claim Number: FA0107000097872

 

PARTIES

The Complainant is QSound Labs, Inc., Calgary, AB, CANADA (“Complainant”).  The Respondent is O Eunjung, Kwangju, KOREA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <audiopix.com>, registered with TierraNet.

 

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.

 

Herman D. Michels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 9, 2001; the Forum received a hard copy of the Complaint on July 12, 2001.

 

On July 9, 2001, TierraNet confirmed by e-mail to the Forum that the domain name <audiopix.com> is registered with TierraNet and that the Respondent is the current registrant of the name.  TierraNet has verified that Respondent is bound by the TierraNet 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 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 2, 2001 by which Respondent could 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@audiopix.com by e-mail.

 

A timely response was received and determined to be complete on August 2, 2001.

 

Complainant’s and Respondent’s Additional Submissions were received on August 7, 2001 and August 9, 2001, respectively, and comply with Supplemental Rule 7.

 

On August 10, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Herman D. Michels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that he is the owner of the trademark AudioPix, and that he has been using the trademark since as early as November, 1999, in connection with its line of AudioPix computer software products, and that since at least as early as January, 2000, he has used the trademark in international commerce to identify Complainant as the source of his AudioPix products. Complainant markets and distributes its AudioPix products through distribution agreements with various partners, and through Complainant’s affiliate marketing program.  Complainant contends that from 1999 to June, 2001, it was the registered owner of the domain name, <audiopix.com>.  The domain name was due for renewal in March, 2001, and a member of Complainant’s staff carried out the renewal procedure.  Through inadvertence, the credit card payment was not completed properly, and in June the Complainant was advised that payment of the renewal had not gone through and the domain name had been canceled.

 

Complainant further contends that the domain name, <audiopix.com> is identical to its Audiopix trademark, in that the domain name, excluding the “.com”, and the trademark, each consist of the same word, namely AudioPix.

 

Complainant further contends that Respondent has no rights or legitimate interest with respect to the domain name, <audiopix.com>.  Complainant alleges that Respondent is not the owner of any trademark, servicemark, company name, product or service with the similar name of that of the domain name in question, and that Respondent has constructive notice, if not actual notice, of Complainant’s mark.

Complainant further contends that the domain name, <audiopix.com>, should be considered as having been registered and being used in bad faith by Respondent in that Respondent is not using the name in connection with a bona fide offering of goods or services, nor is Respondent making legitimate non-commercial or fair use of the name.  Complainant further contends that Respondent is not commonly known by the disputed domain name, has not established a functioning web site that uses the domain name, and has no legitimate interest with respect to the domain name.

 

Finally, Complainant contends that Respondent has offered to sell the domain name to Complainant for a valuable consideration in excess of Respondent’s out-of-pocket expenses, and that Respondent registered the disputed domain name after Complainant had attempted to renew the domain name, but was unsuccessful.

 

Complainant therefore requests the Panel issue a decision that the domain name registration be transferred from Respondent to Complainant.

 

B. Respondent

Respondent argues that the request of Complainant to transfer the domain name, <audiopix.com>, should be denied.  Respondent contends that Complainant first contacted him concerning the sale of the domain name, and that Complainant trapped Respondent into making an offer to sell the domain name in an attempt to support this case.  Respondent further contends that he legally and properly registered the domain name.  Respondent contends that he has a legitimate interest in the domain name because, at the time he registered the name, he had a plan to use it for an audio service center, and that he was preparing its web site.

 

Respondent further contends that because there was a delay in launching his web site does not diminish his rights to the domain name.  The delay in developing a web site does not “delegitimatize” his otherwise legitimate interest in the domain name.

 

Respondent also contends that he did not register the domain name and is not using the domain name in bad faith.  Respondent argues that he did not register the domain name with intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark or to confuse customer.  Rather, Respondent intended to build a web site for the audio service center, which will provide services for repairing audio.

 

Finally, Respondent contends that this is a case of reverse domain hijacking and urges the panel to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.  Respondent contends that Complainant approached Respondent and tricked Respondent into believing it had a good faith interest in resolving problems with Network Solutions, when its only intent was to set Respondent up for a dispute.  Respondent also argues that Complainant knew full well that Respondent did not have a command of the English language, and appears to have been counting on its fallacious allegations going unchallenged so it could score a default.

 

C. Additional Submissions

Complainant, in its additional submissions, charges that since filing the Complaint, Respondent has shown additional bad faith, that the domain name, <audiopix.com>, does not connect to an active web site at which the Respondent conducts a bona fide business.  Rather, the domain name connects to a generic page provided by Respondent’s hosting service provider, and that there is no proof that Respondent has spent money in making a web site.  Complainant additionally contends that Respondent has offered no evidence of the use or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services before any notice to Respondent of the dispute.  Complainant further contends that Respondent has failed to demonstrate any right to or legitimate interest in the domain name and failed to show any evidence to support the allegations of reverse domain hijacking.

 

In Respondent’s additional submissions, Respondent denies and challenges the additional allegations made by Complainant.  Respondent specifically denies that he had any intention to sell the domain name, and that his intention was to make known to Complainant that he was already preparing his web site.  Respondent claims that Complainant has misrepresented the nature of its communications by making it appear that Respondent initiated the offer to sell the domain name when, in truth and in fact, it was Complainant who first contacted Respondent.

 

Respondent contends that he intended to develop the web site at the time of the registration of the domain name, and although there was a delay in developing the site, this did not delegitimatize Respondent’s otherwise legitimate interest in the domain name.  In substance, Respondent contends that he demonstrated the preparation to use the domain name in connection with the bona fide offering of goods and services.  Respondent further contends that the Complainant prevented Respondent from developing the web site by sending e-mail requesting not to build a web site just on the next day of the registration of the disputed domain name.

 

Finally, Respondent emphasizes that he had no basis for knowing of a U.S. trademark application for a U.S. company at the time of registration of his domain name; that he had neither actual nor constructive knowledge of the Complainants mark at the time he registered the domain name, because the Complainant’s mark was not registered in Korea, nor did Complainant provide any evidence that its mark was known in Korea.

 

FINDINGS

Complainant is the owner of the trademark, AudioPix, and has been using the trademark since as early as November, 1999, on and in connection with its line of AudioPix computer software products.  Since at least as early as January, 2000, Complainant has used the trademark in international commerce to identify Complainant as the source of its AudioPix products.  Complainant’s products are sold as downloadable software, and the Complainant has implemented a marketing product to distribute AudioPix products in CD format.  Complainant distributes and sells its AudioPix products from Complainant’s web site, www.qsound.com, and until June, 2001, Complainant distributed its AudioPix products from www.audiopix.com.  The Complainant markets and promotes its AudioPix products through distribution agreements with various partners and through affiliate members of the Complainant’s affiliate marketing program.

 

From 1999 to June, 2001, Complainant was the registered owner of the domain name, <audiopix.com>.  The domain name was due for renewal in March, 2001, and a member of Complainant’s staff carried out the renewal process.  Through inadvertence, the credit card payment was not completed properly, and in June the Complainant was advised that the payment for the renewal had not gone through and the domain name had been canceled.  The domain name, <audiopix.com>, is identical to Complainant’s AudioPix trademark in that the domain name, excluding “.com” and the trademark, each consist of the same word, namely audiopix.  Respondent has no rights or legitimate interests in respect of the domain name. 

 

Respondent registered the domain name, <audiopix.com>, and is using said name in bad faith by virtue of the fact that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant.  Respondent’s activities constitute infringement of Complainant’s rights in its AudioPix mark, and has caused and will continue to cause substantially and irreparable harm to Complainant and his business reputation and goodwill.

 

Respondent is not using the name in connection with a bona fide offering of goods or services, nor is Respondent making legitimate non-commercial or fair use of the name.  Respondent has offered to sell the domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket expenses.  Respondent’s registration of the Complainant’s mark as a domain name has prevented Complainant from reflecting its mark in a domain name.

 

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 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 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.

 

Identical and/or Confusingly Similar

The domain name, <audiopix.com>, registered by Respondent, is identical to Complainant’s AudioPix trademark. See, BroadcastAmerica.com, Inc. v. Quo DTV2000-0001(WIPO Oct. 4, 2000).  (Finding that “the Complainant has common law rights in Broadcastamerica.com, given extensive use of that mark to identify the Complainant as the source of broadcast services over the internet and evidence that there is wide recognition of the Broadcastamerica.com mark among internet users as to the source of broadcast services”).

 

Rights or Legitimate Interests

Furthermore, the ICANN Dispute Resolution Policy is “broad in scope” in that “the reference to a trademark or servicemark, in which the Complainant has rights”, means that “the ownership of a registered mark is not required – unregistered or common law trademark or servicemark rights will suffice” to support a domain name under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4, (2000).  See, Snow Fun, Inc. v. O’Connor, FA 96578(Nat. Arb. Forum Mar. 8, 2001).(finding that the domain name, “termquote.com” is identical to Complainant’s TERMQUOTE mark).

 

Respondent does not have any substantial rights or legitimate interests with respect to the domain name, <audiopix.com>.  Complainant has been using the trademark, AudioPix, since at least as early as November, 1999, on and in connection with its line of AudioPix computer software products.  Since at least as early as January, 2000, Complainant has used the trademark in international commerce to identify Complainant as a source of its audio products.  From 1999 to June, 2001, the Complainant was the registered owner of the domain name, <audiopix.com>.  Complainant’s prior registration of the domain name is proof of Respondent’s lack of rights in the domain name.  See, American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat Arb. Forum, Nov. 6, 2000).  See also, Charles Jordan Holding AGVAAIM, D 2000-0403(WIPO June 27, 2000).  (Finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question). 

 

Moreover, Respondent has not established by sufficient, competent evidence, that he established any rights or legitimate interest in the domain name, audiopix.com. See, Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000).  Respondent’s passive holding of the domain name indicates Respondent’s lack of legitimate rights and interest in the domain name.  See, American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001); Bloomberg, L.P. v. Sandhu, FA 96261(Nat Arb. Forum Feb. 12, 2001).

 

Registration and Use in Bad Faith

Respondent registered the domain name, <audiopix.com>, and is using the name in bad faith.  Respondent offered to sell the domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket expenses.  See, Little Six, Inc. v. Domain for Sale. FA 96967 (Nat Arb. Form Apr. 30, 2001).  Moreover, Respondent cannot claim that it had no knowledge of Respondent’s trademark rights.  Respondent at least had constructive notice as a matter of law, of Complainant’s mark, AudioPix.  See, Northwest Airlines, Inc. v. Koch, FA 95688 (Nat Arb. Forum Oct. 27, 2000); Singapore Airlines, Ltd. v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000); See also, Nintendo of America, Inc. v. Pokeman, D2000-12340 (WIPO Nov. 23, 2000).

 

Moreover, Respondent has acted in bad faith under Policy Rule 4(b)(ii) by preventing Complainant from reflecting the mark in a corresponding domain name.  See, Armstrong Holdings, Inv. v. JAZ, Assoc., FA 95234(Nat. Arb. Forum Aug. 17, 2000); Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000).

 

Additionally, Respondent registered the domain name, <audiopix.com>, and used the same in bad faith by taking advantage of Complainant’s previous domain name registration of <audiopix.com>.  See, InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000); BAAPLC v. Spectrum Media, Inc., D2000-1179 (WIPO Oct. 17, 2000).

 

Finally, Complainant has all right, title and interest in the domain name, <audiopix.com>, in that it has used that name as a trademark and as a portal to its web site.  Respondent has no rights in the domain name, and thus, this action was brought in good faith.  Complainant did not bring the claim in bad faith and Respondent has not established its claim to a reverse domain name hijacking.  In sum, Respondent has registered and used the domain name, audiopix.com, in bad faith.

 

DECISION

Based upon the above findings and conclusions and pursuant to Rule 4(i) of the Rules of the Uniform Domain Name Resolution Policy, and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Name Resolution Policy, I hereby order that:

1.         The domain name, <audiopix.com>, registered by Respondent, O Eunjung, Kwangju, Korea, be transferred forthwith the Complainant, QSound Labs, Inc. Calgary, AB, Canada;

 

2.         Respondent, O Eunjung, Kwangju, Korea, shall cease and desist from any and all use of the domain name, <audiopix.com>.

 

 

Herman D. Michels, Panelist

 

Dated: August 28, 2001