NKEM, Inc. d/b/a CYMED v. Hangang systems Inc.
Claim Number: FA1701001711761
Complainant is NKEM, Inc. d/b/a CYMED (“Complainant”), represented by Nicholas Gritzai, California, USA. Respondent is Hangang systems Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cymed.com>, registered with HANGANG Systems, Inc. dba Doregi.com.
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.
Sandra J. Franklin
The Hon Neil Anthony Brown QC
Roberto A. Bianchi (Chair)
Complainant submitted a Complaint to the Forum electronically on January 10, 2017; the Forum received payment on January 10, 2017.
On January 11, 2017, HANGANG Systems, Inc. dba Doregi.com confirmed by e-mail to the Forum that the <cymed.com> domain name is registered with HANGANG Systems, Inc. dba Doregi.com and that Respondent is the current registrant of the name. HANGANG Systems, Inc. dba Doregi.com has verified that Respondent is bound by the HANGANG Systems, Inc. dba Doregi.com 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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2017 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@cymed.com. Also on January 16, 2017, 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 February 10, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on February 15, 2017.
On February 27, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin and the Hon Neil Anthony Brown QC as Panelists, and Roberto A. Bianchi as Chair.
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 has rights in the CYMED mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,903,682, filed May 20, 2010, registered Jan. 11, 2011, showing commercial use dating back to July 30, 1986. ). Complainant had a trademark registration with the USPTO for CYMED dating back to September 13, 1988 (Reg. No. 1,503,782), but this registration was accidentally allowed to lapse on May 16, 2009. Respondent’s <cymed.com> domain name is identical to Complainant’s CYMED mark, with only the addition of the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent operates a click-through website with links to “Ostomy” and “Cymed Samples.” Respondent has sat on this website for fifteen years without arranging for any meaningful content to resolve, which is not a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent has registered and used the disputed domain name in bad faith. Respondent has intended to confuse Internet users for the purpose of gaining click-through revenue under Policy ¶ 4(b)(iv). Respondent has ignored Complainant’s efforts to acquire the domain name.
B. Respondent
Respondent has held the domain name since 2001, sixteen years before Complainant initiated this dispute, and ten years before Complainant was able to establish rights in the CYMED mark. Complainant is engaged in reverse domain name hijacking. It is impossible for Respondent to have had knowledge of Complainant when registering and using the domain name. Respondent has at no time targeted Complainant, and so Complainant cannot satisfy its burden under the Policy.
“Cymed” is an amalgamation of “cyber” and “medicine” and constitutes common/generic terms, and Respondent uses the domain name in connection with the provision of a medical information website.
C. Additional Submission—Complainant
“Cymed” is not a common or descriptive term, as Respondent has failed to demonstrate how it has independent usage in the English language. Respondent’s arrangement of the disputed domain name has at no time established rights or legitimate interests. Respondent has continually ignored Complainant’s correspondence to resolve trademark issues.
D. Additional Submission – Respondent
Complainant’s additional submission adds nothing new to refute Respondent’s claims only to supply the Agreement of Purchase and Sale of Business asserting Complainant`s rights to the purported trademark. The Agreement of Purchase showing Complainant’s purported rights to the subject trademark clearly does nothing to overcome the fact that the trademark expired in 2011. While Respondent’s website itself demonstrates a legitimate interest, Respondent’s legitimate interest is also derived from the highly descriptive character of the disputed domain name itself – which Respondent properly registered over 15 years ago. Respondent renews its request for a finding of Reverse Domain Name Hijacking.
The disputed domain name is identical to Complainant`s CYMED trademark.
Respondent lacks any rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
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.
Preliminary Issue: Language of the Proceedings
While the language of the registration agreement is Korean, Complainant has requested that the language of the proceedings be English, based on the fact that Respondent is capable of understanding English, and that at all times it communicated with Complainant in English. Respondent, adds Complainant, lives in the United States and has received degrees from American universities.
The Panel notes that Respondent does not oppose Complainant’s request, and that the Parties have used English in their previous communications between them, and in all their submissions in this proceeding. In addition, Respondent is represented by an American legal firm. Based on these facts and given the tacit agreement of the Parties, the Panel, pursuant to Rules paragraph 11(a), decides that the language of the proceedings shall be English.
By submitting a printout taken from the USPTO database, Complainant has shown that it owns a US trademark registration for CYMED, Reg. No. 3903682, Reg. Date January 11, 2011, filed on May 20, 2010, covering ostomy appliances in International Class 10, with a date of first use / first use in commerce of July 30, 1986.
Based on this registration on the Principal Register of the USPTO, the Panel finds that Complainant has rights in the CYMED trademark. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (finding that the complainant had established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. “The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration. 15 U.S.C. §1057 (b).”)
Respondent contends that its ownership of the disputed domain name predates Complainant’s purported rights by 10 years – with Respondent having purchased the disputed domain name in 2001. The Panel notes that, in order for a panel to make a finding as to the first requirement of the Policy, it is not essential whether a trademark registration predates the registration of a domain name or not; the panel should just compare both identifiers, and determine whether the domain name in issue is identical or confusingly similar to the complainant`s mark, or not. See Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO, Sept. 23, 2001) (finding that Policy paragraph 4(a)(i) does not require that the trademark be registered prior to the domain name, although this may be relevant to the assessment of bad faith pursuant to Policy paragraph 4(a)(iii).)
Since the disputed domain name incorporates the mark CYMED, only adding the generic top level domain “.com”, the Panel finds that the disputed domain name is identical to the CYMED mark, in which Complainant has rights.
The first requirement of the Policy is thus met.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. It submits that Dr. Yoon is a medical researcher and does not have experience related to ostomy. Respondent's past and current use of the disputed domain name does not have a connection with, and is not a bona fide offering of goods or services. Complainant further contends that the current website contains very little content, is static and unchanging and that in the previous version of the website at the disputed domain name, Respondent maintained the site with no legitimate interest in the content displayed, which included links to "Ostomy" and "Cymed Samples." Respondent benefited from the confusion of Complainant's actual and prospective customers by providing links related to Complainant's trademark to obtain click-through revenue. Respondent has been blocked numerous times by ISPs from using the disputed domain name due to his infringing use of Complainant's trademark. Yet Respondent's website continues to use the Cymed name and collect click-through revenue, by leveraging off the brand identity of the CYMED mark to gather click revenue. (See Annexation 5, 6.) The changes recently made to Respondent's website at the disputed domain name were made in an attempt to impair Complainant's proof in this proceeding and avoid transfer of the domain name. This is not a legitimate interest or use. It is a deception employed after receipt of the cease and desist letter sent by Complainant`s attorney. Complainant contends that for these reasons the Panel should find that Respondent has no rights or legitimate interest in the disputed domain name.
Respondent contends that the owner of the disputed domain name is Dr. Yoon, a medical doctor and researcher who originally came from South Korea and is currently based in Virginia. He has led numerous medical research projects and published extensively including several medical textbooks. During 2001, Respondent began registering medical domain names including <cymed.com> (Cyber Medicine); e-medicine.net (e-Medicine); <edoctor.net> (eDoctor); <malaria.net> (Malaria); and <mdnet.com< (MD Network) (the “Medical Site Domains). Respondent says that it registered the Disputed Domain in April 2001, after its prior owner failed to renew its registration, and solely because it is a descriptive term composed of abbreviated common words. The disputed domain is similar to the other medical site domains that Respondent registered containing simple seemingly made-up, non-trademark phrases containing the words and abbreviated designations like “e” for electronic or “cy” for “cyber.” Respondent argues that he registered the disputed domain name solely because of its attractiveness as a short abbreviated version of “cyber medicine.” For maintenance purposes, Respondent used parking services provided by webhosting companies. The ad contents were automatically generated depending on Internet user’s preferences, which is a common Internet practice. When domain names are not resolved properly for any reason, some ads appear without domain name owner’s control. (Annex 4-1). Respondent claims that he did not select these links with the intent to profit from any trademark owners let alone Complainant’s trademark.
The Panel has carefully considered all of these contentions and finds, although the matter is not entirely free from doubt, that the evidence on the case file supports Complainant`s contentions. The Panel’s reasons for reaching that conclusion are as follows.
By submitting a printout from the “Wayback Machine” at “www.archive.org”, Complainant has shown that on January 30, 2011, the date on which the search was made, the website at the disputed domain name contained related searches to “Cymed Samples” and to “Ostomy”, that is, it contained links that are specific references to Complainant`s products and trademark.[1] CYMED is Complainant’s trademark and the natural and ordinary meaning of the expression “Cymed Samples”, on the evidence that there is, can only be that it is describing samples of goods and services made available in the market under the trademark CYMED. Likewise, the evidence is that the word “Ostomy” describes the specific use to which the trademarked goods and services are put. In the opinion of the Panel, because Complainant`s trademark CYMED protects “ostomy appliances” in International Class 10, it is more likely than not that Respondent, by posting such links and allowing them to remain, was attempting to use Complainant’s trademark for its own purposes, including in all probability, obtaining click-through income. The traffic, which might well be lucrative would be generated, inter alia, by inadvertent Internet users presumably looking for the Cymed company, and the CYMED mark; these users would then type “www.cymed.com” into their browsers and would later click on those “related searches” or links to search for Complainant´s products. The Panel is of the opinion taking all the evidence into account, that this use of the disputed domain name is neither a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers pursuant to Policy paragraph 4(c)(iii). Although all cases depend on their own individual facts, a similar conclusion has been reached by prior UDRP panels, such as Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if Respondent is itself commercially profiting from the click-through fees).
Since Respondent is Hangang systems Inc., whose owner, according to the Parties, is Dr. Yoon, it is clear that Respondent is not known, commonly or otherwise, by the disputed domain name. Thus, Policy paragraph 4(c)(ii) does not apply.
For its part, Respondent contends that it registered the disputed domain name because of its descriptive value as a conjunction of “cyber” plus “medicine”. In this regard, the Panel notes that the “cymed” term does not exist in the Merriam Webster, Oxford or Cambridge dictionaries. Although this absence from the dictionaries may not be conclusive, and although the use of a clearly generic or descriptive domain name may give rise to a right or legitimate interest, there is no evidence on the casefile that the term “cymed” has ever been used in the meaning contended by Respondent, either in 2001, at the time of registration of the disputed domain name, or in 2011, at the time the disputed domain name contained the “Cymed Samples” and “Ostomy” related searches, or in 2012, when Complainant sent an email to Respondent stating that the registration of the disputed domain name was a serious trademark infringement issue, or even today. In fact, in 2013, following Complainant`s representations to BlueHost, the firm hosting the website for the disputed domain name, to block Respondent`s website at the disputed domain name, Respondent`s owner Dr. Dokyoung Yoon appears to have accepted BlueHost’s intention to “delete the cymed.com site from BlueHost to prevent further hassle”, while asking the host company to let him know if the host company should want him to take further actions. Exhibit 7 to the Response (Email from D. Yoon to Legal Department of Bluehost, dated February 8, 2013.)
The Panel has also been influenced by the fact that presently, the main page of the website at the disputed domain name displays a legend that reads, “CyMed = Cyber + Medicine”. However, the evidence shows that this legend was created after Respondent was put on notice by Complainant that the use of the disputed domain name was infringing on Complainant `s CYMED mark. The fact that Respondent created the legend in those circumstances leaves it open to a finding that it posted as a justification ex post.
Respondent suggests that Complainant, in its email of September 1, 2012 to Dr. Yoon, acknowledged that Respondent had registered the disputed domain name “for a proper and unrelated use”. In fact, the whole sentence reads, “I can surely accept that you have purchased this domain for a proper and unrelated use to ours and regret if you have been inconvenienced." The Panel considers that this sentence should be read together with the next, which states, “However, we own the Cymed trademark and in situations such as this I am informed by my legal counsel that ownership of the trademark is determinant and legally assures obtaining control of that domain eventually, after a legal filing and process through ICANN. See http://www.icann.org/en/udrp/udrppolicy24oct99.htm including 4(b)(i) and (ii).” In the Panel`s opinion, Complainant`s first sentence is simply an attempt to politely demonstrate understanding for a mistake by Respondent, and not an acknowledgement of any Respondent`s rights or legitimate interests in the disputed domain name. In fact, Complainant clearly affirmed its own rights based on its trademark registration, and announced to Respondent that Complainant would win a UDRP dispute.
In sum, the Panel concludes that Complainant has made out its case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel notes that Cymed Inc., Complainant`s predecessor in title, registered US trademark CYMED, Reg. No. 1503782, Reg. Date September 13, 1988, filed on September 24, 1987, covering ostomy appliances in International Class 10, and first used in commerce on July 30, 1986. The Panel also notes that Respondent registered the disputed domain name thirteen years after the registration of CYMED Reg. No. 1503782, and fifteen years after this mark had first been used in commerce.
The Panel further notes that on February 21, 2009, Complainant acquired Cymed, Inc.’s marks as part of an asset business purchase. See Exhibit 1 to Gritzai`s Declaration (following Complainant`s additional written statements).
On May 16, 2009, Reg. No. 1503782 was cancelled. There was no evidence as to how or why it was cancelled but it was possibly for lack of renewal. In any case, the Panel notes that Complainant owns US mark CYMED, Reg. No. 3903682, Reg. Date January 11, 2011, filed on May 20, 2010, covering ostomy appliances in International Class 10, with a date of first use in commerce of July 30, 1986 (the day of first use in commerce of Reg. No. 1503782) which of course pre-dates the registration of the domain name by some years. An abandonment of rights in the mark cannot be presumed after just one year. Complainant was also entitled to claim common law trademark rights to the CYMED mark based on its purchase of all assets from Cymed Inc., specifically including trademarks, which occurred almost three months before cancellation of Reg. No. 1503782. See Crash Dummy Movie, LLC v. Mattel, Inc., 601 F. 3d 1387 - Court of Appeals, Federal Circuit 2010 -601 F.3d 1387 (2010), (finding that cancellation of a trademark registration does not necessarily translate into abandonment of common law trademark rights, nor does it establish its owner's lack of intent to use the mark.)
The Panel takes into account that Respondent`s owner is a Medical Doctor conversant in English, residing in Virginia, United States, who has studied and / or received degrees and / or certifications related to medicine in the United States. In the Panel`s opinion, because of Respondent`s medical background and country of residence it is more likely than not that at the time of the registration of the disputed domain name, Respondent knew of the Cymed, Inc. company, its mark and its ostomy appliances. In addition, the use of the disputed domain name in a website displaying “related searches” that prominently included “Cymed Samples” and “Ostomy” enables the Panel to draw the inference that Respondent probably had Cymed, Inc., its mark and ostomy products in mind at the time of registering the disputed domain name. In the circumstances of this case, the Panel finds that the registration of the disputed domain name was in bad faith.
As seen above, the use of the disputed domain name included prominently displaying the related searches “Cymed Samples” and “Ostomy”, clearly related to Complainant `s CYMED mark and medical products, together with other “related searches”, presumably to obtain click-through income . By using the disputed domain name in such a manner, clearly invoking, by its own actions, Complainant’s trademark and the goods and services sold under that trademark, Respondent has therefore intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website, or of a product or service on its website. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(iv).
For all of the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Since relief is granted, Respondent’s request for a finding of reverse domain name hijacking is denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cymed.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin , Panelist
The Hon Neil Anthony Brown QC, Panelist
Roberto A. Bianchi, Chair
Dated: March 9, 2017
[1] According to the Encyclopedia Britannica, ostomy surgery is “any procedure in which an artificial stoma, or opening, is surgically created; the term is also used for the opening itself.” See https://www.britannica.com/search?query=ostomy
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