Novell, Inc. v. Taeho Kim
Claim Number: FA0307000167964
Complainant is Novell, Inc., Provo, UT, USA (“Complainant”) represented by Vanessa B. Pierce, of Parsons Behle & Latimer. Respondent is Taeho Kim, Seoku-Kwangju, Republic of South Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <novellsolutions.com>, registered with Hangang Systems, Inc. d/b/a Doregi.Com (hereinafter “Doregi.Com”).
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 9, 2003; the Forum received a hard copy of the Complaint on August 15, 2003.
On August 13, 2003, Doregi.Com confirmed by e-mail to the Forum that the domain name <novellsolutions.com> is registered with Doregi.Com and that the Respondent is the current registrant of the name. Doregi.Com has verified that Respondent is bound by the Doregi.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 August 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 2003 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 email@example.com by e-mail.
A timely Response was received on September 9, 2003. However, the Response was submitted in English, while the Registration Agreement with the Registrar was in the Korean language. Pursuant to UDRP Rule #11(a), the “language of the administrative proceeding shall be the language of the Registration Agreement,” and as the Response did not comply with UDRP Rule #11(a), it was deemed deficient by the Forum. Respondent was given a deadline of September 16, 2003 with which to correct this deficiency by submitting a Response in the Korean language. Respondent did not submit a Korean language Response by this deadline. However, as both parties in this dispute have agreed to conduct these proceedings in English, the Panel chooses to consider Respondent’s deficient Response in reaching its decision.
Both Complainant and Respondent submitted a supplemental filing in this proceeding: Complainant on September 15, 2003, and Respondent on September 20, 2003. These filings were timely under the Forum’s Supplemental Rule #7, and the Panel did consider the parties’ supplemental filings in reaching the decision below.
On September 26, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant owns the NOVELL family of trademarks. Complainant also owns the domain names <novell.com>, <novellsolutions.org.>, and <novellsolutions.net>.
Respondent’s clear intent, as evidenced by the subject matter of its website (Complaint Exhibit B), is for commercial gain by misleadingly diverting customers from Complainant’s website.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name.
Respondent is not commonly known by the disputed domain name, <novellsolutions.com>, nor by the name Novell, nor has Respondent acquired any trademark or service mark rights in this famous mark. Further, Respondent is not authorized or licensed to make use of the NOVELL mark for any purpose.
The disputed domain name resolves to a search page including information on escorts and sexually explicit materials. In addition, Respondent’s website makes use of pop-up advertisements for sexually explicit materials, further supporting a finding that Respondent reaps commercial gain from its infringing use of Complainant’s NOVELL trademark in the disputed domain name.
When the public mistakenly access Respondent’s website, they will initially believe they have arrived at Complainant’s own website, or otherwise wrongly believe Complainant sponsors or endorses Respondent’s website. Such diversion tarnishes Complainant’s NOVELL marks and causes substantial confusion.
Complainant further alleges that by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Novell’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, Respondent registered and used its domain name in bad faith.
Respondent has a history of bad faith in registering domain names, including famous marks or misspellings of famous marks in an attempt to profit from the trademarks of others.
The disputed domain name should be transferred to Complainant.
B. Respondent’s Contentions
The disputed domain name, <novellsolutions.com>, is composed of two common English words. It is a generic domain name that is capable of a multitude of applications. The words “novell” and “solutions” generally connote a solution of some kind that provides the user with flexibility.
The subject domain name was certainly not registered with Complainant in mind, or any specific company in mind. Respondent had never even heard of Complainant as “novellsolutions”.
Due to the well-known failure of the Internet and information technology markets and Respondent’s own lack of time, the website and service originally intended by Respondent was never developed. To date, Respondent has maintained the domain name and has not solicited the sale of the domain name to any party, especially Complainant.
Complainant accuses Respondent of intentionally attempting to attract Internet users to a website for commercial gain by creating a likelihood of confusion. This argument fails because of the numerous other companies that use the trademark, NOVELL SOLUTIONS, all over the world. Also, Complainant is not known worldwide.
Although Complainant is the registered owner of the trademark NOVELL SOLUTIONS, the territorial scope of its trademark is limited to the United States.
Complainant accuses Respondent of advertising on his website. It is not clear how this is indicative of bad faith. The fact is that because the domain name is generic, Respondent is free to use the web site in any manner that does not attempt to confuse users.
In accordance with paragraph 15(e) of the Rules, Respondent requests that the Panel make a finding of reverse domain name hijacking, i.e., using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
C. Complainant’s Additional Submission
Respondent has alleged but has failed to meet its burden of proof for a finding of reverse domain name hijacking.
Because Respondent does not possess and cannot demonstrate any legitimate interest in the domain name containing the registered trademark NOVELL, the date on which Complainant attempted to register a domain name containing its own registered trademark is irrelevant.
Respondent asserts that the disputed domain name is generic and that “numerous companies use the name, ‘novell solutions’, all over the world for a variety of services.” Respondent has provided no evidence of such numerous companies, nor do such companies exist. In fact, Respondent’s entire argument appears to be based on its mistaken use of the registered trademark NOVELL in place of the term “novel”, an error that Complainant pointed out to Respondent prior to filing the present Complaint, which Respondent curiously fails to acknowledge.
Respondent admits that it has failed to develop the website that it allegedly intended to develop, and also admits that it has been holding this undeveloped web site for over 2 years (since August 31, 2001). To date, the disputed domain name, <novellsolutions.com>, still resolves to a search page including information on escorts and sexually explicit materials.
Complainant attaches herewith as (Complainant’s Additional Response) Exhibit 2 a copy of its sales data for its products in Korea. It is highly unlikely, given Respondent’s position as a system solution engineer for four years, that he was not aware of Complainant and its products.
Respondent alleges that Complainant’s mark is not known worldwide and that its territorial scope is limited to the United States. To the contrary, Complainant’s trademark is known and registered throughout the world. See Exhibit 1, which is a summary of Complainant’s world-wide registrations for the mark NOVELL.
The disputed domain name should be transferred to Complainant.
D. Respondent’s Additional Submission
The fact is that no bad faith exists in this case. Likewise, Respondent has a legitimate interest in the disputed domain name. The disputed domain name is generic.
Numerous companies use the name, NOVELL SOLUTIONS, all over the world for a variety of services, and most of them have used the trademark, NOVELL SOLUTIONS, way before Complainant started using it. Complainant’s entire case rests on the fact that the disputed domain name is identical or similar to its registered trademark. Complainant has resorted to these proceedings because it is cheaper than buying the domain name from the lawful registrant.
Complainant has failed to demonstrate any NOVELL SOLUTIONS trademarks in Korea where Respondent resides. Complainant has also failed to show that it does any business in Korea.
The fact is that Respondent registered the disputed domain name in August 31, 2001 as the first person. Complainant, on the other hand, registered its domain names, <novellsolutions.net> and <novellsolutions.org> on May 6, 2003 (Exhibit B).
Complainant sought to entrap Respondent by contacting it to transfer the disputed domain name and then using this as “evidence” against Respondent.
The Complaint should be denied.
Complainant is a well-known international provider of software. Respondent is an Internet businessman in South Korea. Respondent registered the disputed domain name, <novellsolutions.com>, on August 31, 2001. Before initiating this proceeding, Complainant contacted Respondent and they discussed Complainant buying the disputed domain name, but they did not reach an agreement.
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.
Complainant has exhibited a vast number of citations for registrations of its NOVELL trademark all over the world, including in South Korea, where Respondent is located. While the word “solutions” is descriptive when used for software, Respondent has used this word paired with Complainant’s trademark NOVELL (the Complaint Exhibit A; Complainant’s Additional Response, Exhibits 1 and 2). The disputed domain name means a software solution attributable to Complainant. Thus, the disputed domain name, <novellsolutions.com>, is confusingly similar to a trademark (NOVELL) in which Complainant has rights. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).
Complainant has satisfied paragraph 4(a)(i) of the Policy.
Respondent argues that it has rights and legitimate interests in the disputed domain name because, as provided under paragraph 4(c)(i) of the Policy, “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.”
Respondent argues that both “novell” and “solutions” are descriptive terms that are in the public domain, and thus Respondent and anyone else are free to use them.
However, as Complainant argues, it appears to the Panel that Respondent has confused the English word “novel”—meaning new, or a long work of fiction--with Complainant’s coined or family name, “novell”, which is spelled and pronounced differently, and which has no meaning in English.
The Panel does not believe Respondent could genuinely have thought that Complainant’s trademark NOVELL was the same as the common English word, novel. In particular, the Panel observes that Respondent states that he has a degree in industrial engineering from the National University in South Korea, and also worked with Samsung Electronics Co., Ltd. for four years as a systems solution engineer (Respondent’s Response to the Initial Complaint, p. 4). The Panel believes it is highly unlikely that a person with Respondent’s educational and professional background would not know about Complainant’s NOVELL trademark, which is in a select class of strong international software trademarks. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (“Misdirecting Internet traffic by utilizing Complainant’s registered mark does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . . Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel thus finds Respondent does not have legitimate rights and interests in the disputed domain name.
Complainant contends Respondent registered and is using the disputed domain in bad faith because it has held the domain name for more than two years without developing a web site for it. Although this is not one of the enumerated bad faith grounds under the Policy at ¶¶ 4(b)(i)-(iv), the Rules, at paragraph 15(a), allow the Panel to find additional bad faith grounds where appropriate.
However, the Panel finds Respondent has been using the disputed domain name intensively to drive Internet traffic to its other web sites where it offers paid adult entertainment and advertising. The Panel finds this is evidence of bad faith registration and use of the disputed domain name pursuant to the Policy at ¶ 4(b)(iv). See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
Respondent argues that he could not have been in bad faith vis-à-vis Complainant when he registered the disputed domain name because he was not aware of who or what Complainant was at the time. The Panel does not believe Respondent at all: as the Panel discussed in the Legitimate Rights and Interests part of this Decision, a highly educated computer specialist like Respondent would be bound to know about Complainant and its software products. The Panel does not find that Respondent’s being in South Korea makes this any less likely since Complainant has shown that it does lots of business in South Korea and has numerous registered trademarks in South Korea, and since Internet business is worldwide. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ( “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Panel finds Respondent has registered and is using the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding that Complainant initiated this proceeding either in bad faith or to harass Respondent per paragraph 15(e) of the Rules. Since the Panel has found Complainant prevails under the Policy at ¶¶ 4(a)(i)-(iii), it is obvious the Panel finds Respondent’s request untenable. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Based on the above discussion, paragraph 4(i) of the Policy and paragraph 15(a) of the Rules, the Panel orders that the disputed domain name, <novellsolutions.com> be TRANSFERRED to Complainant, Novell, Inc.
Dennis A. Foster, Panelist
Dated: October 24, 2003
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