WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FreedomCard, Inc. v. Mr. Taeho Kim

Case No. D2001-1320

 

1. The Parties

The Complainant is FreedomCard, Inc., of 4720 Lincoln Blvd Suite 354, Marina del Rey, California 90292, United States of America, represented by James Y. Rayis, Esq., of Meadows, Ichter and Trigg, of Atlanta, Georgia, United States of America.

The Respondent is Mr. Taeho Kim, of 101-1213 doklimjeilpark, 284 wolsan 3 dong, namku kwangju, kwangju 503233, Korea, represented by Zak Muscovitch, Esq., of Neinstein & Associates of Toronto, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name is <freedomcard.com>.

The Registrar is Hangyang Systems, Inc., dba doregi.com, of Seoul, Korea.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received in hard copy on November 6, 2001, and by email on November 13, 2001. It named as Respondent eNIC.net and as Registrar Domaindiscover.com of San Diego, California, United States of America.

The Complaint was acknowledged on November 9, 2001, and on November 16, 2001, the Center sought registration details from Domaindiscover.com. On November 19, 2001, Domaindiscover.com confirmed that the disputed domain name was registered in the name of eNIC.net; that the Administrative and Billing Contact is "000sex.com Taeho Kim"; that the language of the Registration Agreement is English; that the Policy applies to the disputed domain name, the status of which is "active" and that "they have submitted the Registration Agreement to the jurisdiction at the location of the principal office of the Registrar".

On November 19, 2001, the Center received an email from Mr. Kim Taeho saying he is the Respondent and that, being Korean and unfamiliar with the English language, he would use Korean as the official language in this case. He asked the Center to let him know "if youíre Okay". Mr. Rayis objected on behalf of the Complainant. On November 20, 2001, the Center informed Mr. Kim Taeho that pursuant to paragraph 11 of the Rules, the language of the proceeding shall be the language of the Registration Agreement, in this case English.

Based on the information provided by Domaindiscover.com, the Center satisfied itself on November 22, 2001, that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to eNIC.net at the address mentioned above and by facsimile and email (without attachments). The Center included with that material a letter dated November 22, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.

On November 22, 2001, in response to the Centerís emailed notification of the commencement of this proceeding, Mr. Kim Taeho informed the Center that the disputed domain name was registered at doregi.com in Korea, so he "will proceed this case with Korean language". The Center repeated its message of November 20, 2001.

The last day specified by the Center for a Response was December 12, 2001. On December 11, 2001, a Response was filed on behalf of Mr. Kim Taeho by email and on December 17, 2001, in hard copy. Receipt was acknowledged by the Center on December 12, 2001.

On December 13, 2001, Mr. Rayis, on behalf of the Complainant, submitted that because there was no Response from the named Respondent, eNIC.net, which was the "domain owner", the Panel should determine the dispute based solely upon the Complaint. Mr. Muscovitch responded with excerpted Whois information indicating that Mr. Taeho Kim is the registrant of the disputed domain name. These exchanges, and others on this issue, were forwarded to the Administrative Panel ("the Panel") by the Center.

The Complainant had elected to have the case decided by a single-member Panel and on December 21, 2001, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of January 4, 2001.

At the behest of the Panel, the Center made further enquiries of the two registrars, which revealed that on November 16, 2001, (after the filing of the Complaint and before formal commencement of the proceeding) there had been a change of registrar from Domaindiscover.com to Hangyang Systems, Inc., dba doregi.com, and a change of Registrant from eNIC.net to Mr. Taeho Kim; that the language of the Registration Agreement with doregi.com is Korean and that the current status of the disputed domain name is "Registrar-Lock".

Under these circumstances the Panel issued a procedural order directing the Complainant (i) by January 14, 2002, to amend the Complaint so as to name Mr. Taeho Kim as Respondent and Hangyang Systems as the Registrar; (ii) to confirm the selection of mutual jurisdiction and (iii) formally to deliver a copy of the Complaint, with amendments, to the new Registrar. The Panel extended until January 21, 2002, the time for issuing its decision in this proceeding.

An amended Complaint dated January 14, 2002, was filed with the Center on January 14, 2002, together with an email indicating the other aspects of the Procedural Order were being complied with.

The Panel is satisfied that the Complaint, as filed, was in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice of the Complaint to the respondent named in the Complaint as filed; a Response was filed on behalf of Mr. Taeho Kim within the time specified in the Rules; the Complaint was duly amended to take into account the change in Registrar and the change in registrant which occurred after the filing of the Complaint and before the formal commencement of this proceeding; the new Registrar has been formally served with a copy of the Complaint and amendments thereto and has placed the disputed domain name on "Registrar-Lock" . The Panel was properly constituted.

The language of the proceedings was English, being the language in which all submissions were filed.

 

4. Factual Background

On April 20, 1999, a California company called Urban Television Network, Inc. ("UTN") applied to register FREEDOMCARD as a trademark in the United States of America. The President of Complainant, Mr. Wesley Buford, who is also President of UTN, asserts that UTN is the Complainantís predecessor in interest as regards ownership of that mark and that the mark has been used by UTN and, subsequently, by the Complainant, since February 1996. Respondent notes that UTN remains the recorded registrant.

The business conducted by Complainant is not entirely clear from the Complaint. The services with respect to which the mark is registered are:

"Insurance and financial services, namely credit card services, banking services, financial management, investment brokerage services; and financial analysis and consulting services".

The Complainantís website at <freedomcardusa.com> invites Internauts to apply for FreedomCard and includes the statement:

"The FreedomCard Gold MasterCard is marketed by FreedomCard, Inc."

Respondent is a Korean web designer. He registered the disputed domain name in the name eNIC.net on February 22, 2001. The domain name was hot-linked to a website posting offers to sell domain names and advertising web businesses such as pornography and gambling sites. In response to an email message through that website dated October 25, 2001:"Are you offering this name for sale?" from Mr. Rayis (who did not then disclose that he represents Complainant), Respondent replied:

"Thanks for your offer.
We purchased the domain for our developing website at first.
Unfortunately, the domain is on the negotiation with other buyer from us.
The price range is $20,000us.
Sorry for saying this.
If you can be affordable over $20,000us, let me know immediately."

 

5. Partiesí Contentions

A. Complainant

The Complainant requests the Panel to direct that <freedomcard.com> be transferred to Complainant or alternatively cancelled and it invokes the following legal grounds as the basis of the relief sought:

Identity/confusing similarity

The disputed domain name is identical to the word mark FreedomCard registered to Urban Television Network, Inc, the predecessor in the trademark ownership interest to the Complainant. The words are identical with only the .com added.

Illegitimacy

Respondent is passively holding the disputed domain name for sale and using the site as a hotlink to <register.bestsrs.com>, which offers domain names for sale and posts advertisements to other sites, including Internet pornography sites and gambling. USPTO results show Complainant has ownership of all but two of the twelve live marks for "freedom card" (two words) filed. Neither of the other two applicants or owners include Respondent. The marks owned by Complainant have been registered since April 1998, with prior use in commerce since February 1996. Complainant and its predecessor to the trademarks, UTV, have been using the name "FreedomCard" without interruption since 1996. Respondent did not register the disputed domain name until February 2001.

Bad faith

Since registering the disputed domain name, Respondent has failed to make any commercial use of the site for any purpose other than as a hotlink to another Internet domain address posting offers to sell domain names and to advertise web businesses such as pornography and gambling sites.

Policy 4(b)(i)

When Complainantís representative inquired over the freedomcard website as to purchasing the address <freedomcard.com>, Respondent sent a response asking for $20,000US for the domain site and asking, "if you can be affordable over $20,000US, let me know immediately." (Sic.).

While the e-mail contains the bare and unsupported conclusory assertion that the domain name was purchased to develop a site,

- there is no evidence that this is true,

- Respondent was on notice of the U.S. trademark registrations and filing held by Complainant at the time of the registration,

- the request for an extremely high dollar amount ($20,000US) for the sale indicates an intent to profit from sale to the legitimate FreedomCard trademark owners, and

- the offer of a sale on the website, of not only this but other domain names, indicates profiteering from the sale of domain names for which Respondent has no legitimate interest.

Policy 4(b)(iv)

Respondent has not only appropriated a confusingly similar mark, it has also infringed on Complainantís identical trademark name and appropriated the website for such name. When calling the website, a user is sent to a different website offering domain names for sale and posting (presumably with paid banners to Respondent) advertisements of other web businesses including pornography and gambling sites.

B. The Respondent

Complainant is acting on the mistaken belief that the Policy enables Complainant to obtain Respondentís domain name in the absence of all of the requirements pursuant to Paragraph 4 of the Policy.

The fact is that no bad faith exists in this case. Likewise, Respondent has a legitimate interest in the disputed domain name. It is generic. Numerous companies use the name, "freedom cardí all over the world for a variety of services and most of them have used the mark, "freedom card" long before Complainant started using it. Complainantís 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 name from the lawful registrant.

Complainant must prove each of the three requirements under Paragraph 4 of the Policy: Easyjet Airline Company v. Steggles (WIPO Case No. D2000-0024).

Respondent concedes that the disputed domain name is identical to Complainantís registered trademark, assuming that Complainant is in fact the successor in title to the recorded registrant, UTN. No actual evidence has been filed to demonstrate that the USPTO registry is inaccurate or out of date. UTN remains the recorded registrant of several trademarks for the mark, FREEDOM CARD. There is no record of a company called Freedom Card Inc.

Similarity to a registered trademark however, is only the beginning of the inquiry required pursuant to the Policy. Furthermore, several important points must be made in the context of legitimate interest, as understood by the Policy.

Legitimate Interest

The disputed domain name is composed of two common English words. It is a generic domain name that is capable of a multitude of applications. The words, "FREEDOM" and "CARD" generally connote a card of some kind that provides the user with flexibility.

Respondent registered the disputed domain name because he knew that it was generic and was capable of so many commercial applications. Respondent, a Korean web designer by profession, registered it with the intent of either developing a web site and on-line service that enables users to pay for a variety of web-based services using a single online membership card or selling the domain name to a company or person who wished to use the domain name in connection with its business.

The disputed domain name was certainly not registered with the Complainant in mind, or any specific company in mind. Respondent knew that there were hundreds of companies who might be interested in the domain name if he was unable to develop the service himself.

Due to the well-known failure of the Internet and information technology markets and Respondentís own lack of time, the web site and service originally intended by Respondent was never developed. To date, Respondent has maintained the domain name and has not solicited its sale to any party, especially Complainant [1].

At no time did Respondent ever solicit the sale of the name to Complainant. Respondent had never even heard of Complainant. Complainantís mark is not known world-wide.

As Complainant concedes, at least two other companies in the United States alone, use the mark "FREEDOM CARD", pursuant to United States registered trademarks, for goods and services entirely unrelated to Complainant. In fact, these registrations pre-date Complainantís registration. This proves that the disputed domain name is appropriately used by persons other than Complainant, without any trademark infringement.

Furthermore, numerous companies have used the mark "FREEDOM CARD" for a variety of goods and services pursuant to United States registered trademarks which have since expired. This too demonstrates that the mark "FREEDOM CARD" is a common combination of two English words used by a variety of businesses.

Complainant has failed to demonstrate any trademarks in Korea, where Respondent resides. Complainant has also failed to show that it does any business in Korea. It can hardly be said that Respondent must have had notice of Complainantís marks in Korea. There is absolutely no evidence to demonstrate that Respondent must have been aware of Complainant at the time that Respondent registered the subject domain name.

So many companies use the mark "FREEDOM CARD" all over the world that it must be considered a generic term, similar to "SMART CARD", "CREDIT CARD", "CONVENIENCE CARD", AND "GAS CARD".

A search of Google.com, reveals 704 web sites that use the term, FREEDOM CARD [2]. The vast majority of these entries are in connection with goods, services, and non-commercial uses that are totally unrelated to Complainant.

For example:

Freedom Card

a health insurance discount card [3]

Freedom Card

Nottinghamshire County Council (in England) issued smart card travel passes for concessionary fare passengers, based on 'hands-free' Easypass cards from Schlumberger. The new 'Freedom Card' is part of East Midlands Integrated Ticketing (EMIT) scheme, which is designed to support scholars, and other people entitled to concessionary travel rights such as the disabled and pensioners [4].

Freedom Card

Freedom Cards are a series of special promotional "business" CARDS designed to attract not only "hot" & "interested" prospects to YOUR business but those who are "just looking" [5].

Freedom Card

The Freedom Card is a unique connectivity solution ensuring that hotel guests can always gain high speed up to 11Mbps broadband Internet access from laptops, wherever they are in the hotel. To utilise this service, the guest simply has to obtain a Freedom Card (PCMCIA Card) from the hotel and insert into the laptop. Monitoring and charging for the use by individual guests can be done centrally and can be formatted in several ways with different packages, e.g. 24 hour unlimited access or hourly usage [6].

Freedom Card

The concept of using freedom as an argument to support oneís position, e.g. "playing the freedom card" [7].

Freedom Card

The Freedom Card has been designed to introduce you and your guests to some of Dublinís premier locations. These include Dining, Accommodation, Services, Sports, and Leisure. This card has been designed so that you may enjoy 20% savings Monday to Thursday at collective locations on a daily basis [8]. (FreedomCard.ie)

Freedom Card

The Freedom Card allows callers in New Zealand to dial a toll free number to call anywhere in the world [9].

Freedom Card

Tata Cellular, the leading cellular operator in Andhra Pradesh, has introduced The Freedom Card-a rechargeable, prepaid card system. The new card system, which has been developed by Tata Cellular in association with Australia-based prepaid technology provider Total Tel, aims at making cellular telephony a fast moving consumer services (FMCS) product [10].

Freedom Card

The Freedom Card is a type of computer hardware card that enables a computer to use multiple operating systems. It is a name suggested at WarpTech by Bill Nicholls of Byte Magazine (in 1999). You could set up a Freedom Card and load Windows one time, Linux the next. Or you could take a rack mount PC and put 10 or 15 or more cards into it [11].

Freedom Card

The Freedom Card:

A Shopping Card for the Next Generation. This reloadable card lets you confidently send your teen or pre-teen out shopping -- with a spending limit [12].

Freedom Card

The Freedom Card is a quick reference guide to your rights and obligations when you are stopped by the police [13].

Freedom Card

The Freedom Card is a card used in an educational game about slavery [14].

Freedom Card

The Freedom Card is a consumer card designed by the Goodyear company [15].

Freedom Card

The Freedom Card is a conceptual universal health care card [16].

Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. This is considered a "legitimate interest". Pursuant to CRS Technology Corporation v. CondeNet (Concierge.com) (NAF Case No: FA0002000093547) [17]:

ÖEven though the trademark and the name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers.

Generic and descriptive words and phrases will generally not be transferred to a Complainant just because a Complainant has a registered trademark. Pursuant to Coming Attractions v.ComingAttractions.com, (NAF Case No. FA0003000094341) [18]:

Respondentís registered domain name, comingattractions.com, is facially identical to and/or confusingly similar to Complainantís COMING ATTRACTIONS trademark. However, Complainantís trademark applies specifically to apparel and there is no evidence that Respondent ever used or intended to use the subject domain, comingattractions.com in any way related to apparel. There is no indication that Respondent has intended to attract Internet users to its web site or other on-line location by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of the web site.

The term "coming attractions" is a generic term in the field of entertainment and its widespread use predated Complainantís trademark registration. Thus, Respondent had the right to register the subject domain name, comingattractions.com and the domain registration is a fair use of a generic term that was available for registration in the form of the subject domain name without disparagement of, or impact upon, Complainantís trademark rights.

There are no circumstances that indicate the domain name was acquired primarily for the purpose of transferring it to the Complainant or to prevent Complainant from reflecting its trademark in a corresponding domain name, or that Respondent has engaged in a pattern of such conduct. Since there is no indication that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, Complainant has failed to establish that Respondent registered the domain name "comingattractions.com" in bad faith.

In Canned Foods, Inc. v Ult. Search Inc. (NAF Case No. FA0012000096320) the Panel explained:

Where the domain name is a generic term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them. There are dozens of other enterprises that use the term "Grocery Outlet," therefore one cannot conclude that Complainant must necessarily be the special target. [19]

Respondent states that he has a legitimate interest in selling the subject generic domain name which he registered in good faith.

Even if selling the name is not considered to be a "legitimate interest", Respondent requests that the Panel follow the analogous decision of VZ VermögensZentrum AG v. Anything.com, (WIPO Case No. D2000-0527) [20]. In this decision, the subject domain name was not transferred and it was determined that:

Ö..even if the Domain Name was registered as one of a list of generic names in the hope of being able to sell it, the Complainantís mark is not known worldwide and there is no evidence that the Respondent was or should have been aware of the Complainantís mark upon registration of the Domain Name, or even that its aim was to sell it to the Complainant at a later date.

At no time did Respondent ever solicit the sale of the name to Complainant. Respondent had never even heard of Complainant.

Respondent states that he has a legitimate interest in selling or keeping the subject domain name for future development.

No Bad Faith

Pursuant to Paragraph 4(a)(iii) of the Policy, Complainant must prove BOTH "bad faith registration" and "bad faith use".

It is submitted that without proving "bad faith registration", Complainant cannot succeed. There is absolutely no evidence to show that Complainant registered the domain name with Complainant in mind. This is required to show that Respondent registered the domain name in bad faith, pursuant to Coming Attractions, supra.:

There are no circumstances that indicate the domain name was acquired primarily for the purpose of transferring it to the Complainant or to prevent Complainant from reflecting its trademark in a corresponding domain name, or that Respondent has engaged in a pattern of such conduct. Since there is no indication that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, Complainant has failed to establish that Respondent registered the domain name "comingattractions.com" in bad faith.

Because Complainant has no evidence of Respondent registering the domain name with Complainant in mind, it attempts to infer bad faith. For example, Complainant accuses Respondent of "passive holding of the domain name", even though Respondent only registered the domain name nine (9) months prior to the commencement of this proceeding.

Complainant fails to demonstrate passive holding as understood by the Policy in this respect, because of the very short time period that Respondent owned the disputed domain name. See, for example, Mondich and American. Vintage Wine Biscuits, Inc. v. Brown, (WIPO Case No. D2000-0004) [21] (finding Respondent cannot be said to lack a bona fide intent to use the domain name when only 10 months have passed since registration); See also Casual Corner Group, Inc. v. Young, (NAF Case No. FA0007000095112) [22] (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the web site at the time of the Complaint. Only after a two-year period of non-use is there an inference of a lack of bona fide intent to use the name).

Complainant, remarkably, accuses Respondent of responding to Complainantís offer to purchase the domain name. This allegation is vexatious. The fact is that Complainant solicited the sale from Respondent. Respondent never contacted Complainant. Furthermore, Complainant never relied on any purported trademark rights when seeking the purchase of the domain name. Extraordinarily, Complainant did not even identify itself when inquiring regarding the purchase of Respondentís domain name.

Pursuant to Nutrisystem v. Easthaven, (CPR Case No. 012) [23], such circumstances were found to be non-demonstrative of bad faith:

"The e-mail responds with a direct answer to a pointed question. Presumably, Complainant is unhappy with the price placed on the sale of this intangible asset. That, however, does not equate with bad faith in quoting the price in the first instance, especially when the quotation was sought as in the case here."

Complainant also accuses Respondent of registering the subject domain name in order to prevent it from registering the domain name. The fact is that Respondent registered the domain name in February of 2001. Complainant on the other hand, registered its domain name, <freedomcardusa.com> on July 25, 1997.

This clearly demonstrates that Complainant had every opportunity to register the subject domain name if it in fact wanted it. Respondent cannot be said to have registered it in order to prevent Complainant from registering it.

Complainant accuses Respondent of intentionally attempting to attract Internet users to a web site for commercial gain by creating a likelihood of confusion. This argument fails because of the numerous other companies that use the mark FREEDOM CARD all over the world. Furthermore, pursuant to the <sweetsuccess.com> case, supra:

Once again, the Panel recognizes that the scope of Complainant's trademark rights must be the subject of our analysis and the scope of those rights is linked inextricably with the goods on which the mark appears. We believe that ordinary and average consumers and those who navigate the Internet are capable of holding in their minds separate cognitive understandings of the trademark significance associated with Complainant's use of the term "Sweet Success" on candy and dietary drinks and of the use of that same term as a URL by Respondent. The scope of Complainant's trademark rights is insufficient to bar Respondent from acquiring legitimate rights in the same term when used for a different purpose, such as a URL.

Lastly, Complainant accuses Respondent of advertising on his web site. 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 site in any manner that does not attempt to confuse users. Respondentís advertising is in connection with services that Complainant has no interest in. Accordingly, this too is not bad faith.

Complainantís Bad Faith and Reverse Domain Name Hijacking

Complainant has engaged in Reverse Domain Name Hijacking. It failed to register a name in 1997, that it now wants. It was unsatisfied with the price of the generic domain name that was offered to Complainant when Complainant inquired if the name was for sale. Complainant sought to entrap Respondent by offering to purchase the name and then using this as "evidence" against Respondent. Complainant now seeks the domain name through legal means, without any evidence of bad faith registration. This is a misuse of the UDRP procedure. Respondent is not a cybersquatter.

Respondent submits that it was the price of the domain name which led to this proceeding and not any legitimate claim of cybersquatting.

 

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Procedural issues

(i) "Cyberflying"

Under the Policy, which forms part of the registration agreement, a registrant may not transfer a domain name registration to another holder - paragraph 8(a) - or another registrar - paragraph 8(b) - during a "pending" proceeding.

Because the initiation of the proceeding precedes its formal commencement (Rules 3(a) and 4(c)) a Respondent, to whom a copy of the Complaint must be sent (Rule 3(xii)) may have an opportunity, before commencement, to transfer the domain name to a new holder or to a new Registrar. Both situations arose in British Broadcasting Corporation v. Data Art Corporation / Stoneybrook (WIPO case No. D2000-0683), in which the Panel said:

"To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding".

See also Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol (WIPO Case No. D2001-0489); Imperial Chemical Industries, PLC v. Oxford University (WIPO Case No. D2001-0292); Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc. (WIPO Case No. D2001-0732) and Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp. (WIPO Case No. D2001-0936).

In British Broadcasting Corporation v. Data Art Corporation / Stoneybrook (WIPO case No. D2000-0683), as here, the transferee of the domain name was an associate of the Respondent who had knowledge of the Complaint before the transfer took place. As in that case, the Panel holds that neither the change of registrant nor of Registrar affects these proceedings.

(ii) Whether the Response should be taken into account

In paragraph 37 of his Response, Mr. Taeho Kim says he registered the disputed domain name in February 2001. This accords with the date of February 22, 2001, shown in Exhibit A to the Complaint as the date on which the record of the disputed domain name was created with Domaindiscover.com, showing eNIC.net as registrant and Mr. Taeho Kim as Administrative, Technical and Zone Contacts.

Further, in response to an enquiry from the Center, the new Registrar said:

"Before trasferring Registrar to doregi.com, the registrant name of that domain name was "eNIC.net". But actually the owner of that domain name was Taeho Kim. Because our registration system couldn't be accepted the virtual registrant name, "Taeho Kim" was recorded in our database as the correct registrant name." [sic]

The Panel is conscious of the potential for prejudice to a Complainant if a transfer to a new registrant occurring after the filing of a Complaint is not cancelled under paragraph 8(a) of the Policy. In this case the Panel formed the view that the Complainant will suffer no prejudice as a consequence of the transfer to Mr. Taeho Kim, because the Complainantís case against him is the same as its case against eNIC.net. The change is one of name only, not of circumstances. For this reason the Panel did not ask the Center to seek cancellation of the change in registrant. For the same reason the Panel admits the Response.

(iii) Whether the Complainant complied with Procedural Order No. 1

The amendment to the Complaint was received by the Center on January 14, 2002. The Panel accepts the amendments to the Complaint.

Substantive issues

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Identity or confusing similarity

Respondent concedes that the disputed domain name is identical to Complainantís registered trademark FREEDOMCARD, assuming that Complainant is in fact the successor in title to the recorded registrant, UTN. The panel accepts the statement in Mr. Bufordís sworn affidavit that the Complainant is the successor in interest to UTN.

The Complainant has established this element.

Illegitimacy

Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name. The name of Respondent is not and does not include any part of any of the disputed domain name. The disputed domain name is not being used in connection with a bona fide offering of goods or services. Were the trademark a well-known invented word having no descriptive character, these circumstances would shift the onus to Respondent to demonstrate its rights or legitimate interest in the disputed domain name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. But the mark FREEDOM CARD is a common generic expression in which the Complainant cannot have exclusive rights.

Thus, despite Complainantís registered trademark in relation to the particular services which Complainant provides, Respondent has rights and a legitimate interest in the disputed domain by virtue of having been the first to register it: Energy Source Inc. v. Your Energy Source, (NAF Case No. FA0101000096364); Ultrafem, Inc. v. Warren R. Royal, (NAF Case No. FA010600009768297682); CRS Technology Corporation v. CondeNet (NAF Case No: FA0002000093547) and Coming Attractions v.ComingAttractions.com, (NAF Case No. FA0003000094341. The following passage from the decision in Nutrisystem.com, Inc. v. Easthaven, Ltd. (CPR Case No. 012) is apposite here:

"Öwe conclude that Complainant has not demonstrated Respondent's lack of a legitimate interest in the term "Sweet Success" when used as a domain name. We decline Complainant's invitation to presume the absence of a legitimate interest based solely on the fact that Complainant holds United States trademark registrations for the same term. Once again, the Panel recognizes that the scope of Complainant's trademark rights must be the subject of our analysis and the scope of those rights is linked inextricably with the goods on which the mark appears. We believe that ordinary and average consumers and those who navigate the Internet are capable of holding in their minds separate cognitive understandings of the trademark significance associated with Complainant's use of the term "Sweet Success" on candy and dietary drinks and of the use of that same term as a URL by Respondent. The scope of Complainant's trademark rights is insufficient to bar Respondent from acquiring legitimate rights in the same term when used for a different purpose, such as a URL":

Recognizing that anyone has a right to register common words in the language, a legitimate interest is even established where a Respondentís only purpose in registering a common word domain name is for resale: Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc., (WIPO Case No. D2001-0085); Audiopont, Inc. v. eCorp, (WIPO Case No. D2001-0509); Kis v. Anything.com Ltd., (WIPO Case No. D2000-0770); Allocation Network GmbH v. Steve Gregory, (WIPO Case No. D2000-0016).

There is no evidence, and no basis for inferring, that Respondent, in Korea, was aware, or should be deemed to have been aware, of Complainant or its U.S. trademark prior to the registration of the disputed domain name.

Complainant has not established this element.

Bad faith registration and use

Respondent asserts that he registered the disputed domain name in February 2001, knowing that it was generic and was capable of many commercial applications. He says he registered it with the intent of either developing a web site and on-line service that enables users to pay for a variety of web-based services using a single online membership card or selling the domain name to a company or person who wished to use the domain name in connection with its business.

There is no evidence Respondent was aware of Complainant or its mark when Respondent registered the disputed domain name, nor is there evidence the mark is so well-known as to give rise to such a presumption.

Respondent concedes that he registered the disputed domain name with the purpose of either developing a website or selling the name. But having regard principally to the generic nature of the domain name, to the absence of evidence that Respondent was aware of Complainant or its mark at the time of registration and to the fact that Respondent did not approach Complainant to solicit the sale of the domain name, the Panel is not satisfied that sale at a profit to Complainant or to a competitor of Complainant was the Respondentís primary purpose in registering the domain name. See Lumena s-ka zo.o. v. Express Ventures LTD (NAF Case No. FA000300094375):

"It did appear that Respondent was involved in the business of registering domain names with the intent to resell them for a profit. If the domain name at issue were a common trademark such as IBM®, evidence of this might well be sufficient to demonstrate a bad faith registration and use. Lumena.com, however, involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainantís trademark interest".

Subparagraph 4(b)(iv) requires that a Respondent intend to confuse Internauts by reference to the Complainantís mark. This has not been established. Nor is there any other evidence of bad faith within paragraph 4(b) of the Policy.

The Complainant has not established this element.

Reverse domain name hijacking

Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show either that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, Oct. 31, 2000), and Goldline International, Inc. v. Gold Line (WIPO Case D2000-1151) or that the Complaint was brought in knowing disregard of the likelihood that the Respondent possessed legitimate interests: Smart Design LLC v. Hughes, (WIPO Case No. D2000-0993).

Here the Panel is not satisfied that the Complaint was brought in bad faith or in knowing disregard of the Respondentís legitimate interest in the disputed domain name.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel states that this dispute is not within the scope of the Policy. The complaint is therefore denied.

 


 

Alan L. Limbury
Sole Panelist

Dated: January 20, 2002

 


Footnotes:

1. There is a reference to "Make an Offer on a Taken Domain Name" in Complainantís Exhibit "E". It should be noted that this tag line is inserted by the web hosting company and not by Respondent himself. It is a standard page-holder template.

2. http://www.google.com/search?q=%22freedom+card%22&hl=en&start=290&sa=N

3. http://www.freedomhealth.com/plans.html

4. http://www.1.slb.com/smartcards/news/pr99/first/sct-nottingham0299.html

5. http://www.freedomworx.com/card.html

6. http://www.fhrai.com/Mag-News/magVenderNews.asp

7. http://epistolary.org/rob/swatch-protest/issue.shtml

8. http://www.freedomcard.ie/main.html

9. http://callback.virtualave.net/cards.asp

10. http://www.india-today.com/ctoday/19991216/buzz3.html

11. http://www.os2ezine.com/20000616/ecommstation.html

12. http://www.thebon.com/boncard/index.asp

13. http://www.nhorml.org/norml/know_your_rights.htm

14. http://www.state.in.us/ism/sites/levicoffin/tour/antislav.pdf

15. http://www.unlikelymoose.com/logos_goodyear.html

16. http://www.apa.org/divisions/div42/members/pubs/1997_Fall/SHORE2.html

17. http://www.arbforum.com/domains/decisions/93547.htm

18. http://www.arbforum.com/domains/decisions/94341.htm

19. See also First American Funds, supra. ("To construe 4(b)(iv) without a requirement of direct action by the Respondent against the Complainant would . . . [be] inconsistent with existing trademark principles and with the limited language and scope of the Policy".); Lumena s-ka zo.o. v. Express Ventures LTD, (NAF Case No. FA0003000094375) (no bad faith where domain name incorporates generic term, absent direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant's trademark interest); Amana Company, L.P. v. Vanilla Limited, (WIPO Case No. D2001-0749)("Because it is not a made-up word, "Deep Freeze" does not impinge as a distinctive mark on the average person in the same way as a made-up brand name (e.g. Coca-Cola) or a personal name (e.g. McDonalds.")).

20. http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0527.html

21. http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0004.html

22. http://www.arbforum.com/domains/decisions/95112.htm

23. http://www.cpradr.org/ICANNDecisionCPR012-001128.htm