WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tinfos Jernverk AS v. BigDoggie.com
Case No. D2002-0446
1. The Parties
The Complainant is Tinfos Jernverk AS, a company having its principal place of business at Vollsveien 13 J, 1324 Lysaker, Norway (hereinafter "the Complainant").
The Respondent is BigDoggie.com, the address of which is 303-1304 Gumho Bestvill, 808 Gumho-dong, Kwangju, 502-154 Republic of Korea (hereinafter "the Respondent").
2. The Domain Name and Registrar
The domain name at issue in this proceeding is <tinfos.com>.
The Registrar is OnlineNIC.com.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999.
The Complainant submitted its Complaint, dated May 8, 2002, to the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy. The Complaint was received by e-mail on the same date and in hard copy on May 13, 2002.
On May 13, 2002, the Center requested verification of registration from TierraNet, Inc. On the same date, TierraNet, Inc. informed the Center that registration of the domain name had been transferred to OnlineNic, Inc. in April 2002.
On May 21, 2002, by way of Complaint Deficiency Notification, the Center informed the Complainant that its Complaint did not comply with the following requirements of the ICANN Rules: (1) the correct Registrar, OnlineNic, Inc., was not identified in the Complaint; and (2) the required fee in accordance with Article 19(a) of the Rules was not received by the Center.
The Complainant complied with the Complaint Deficiency Notification and submitted an Amended Complaint, dated May 23, 2002, to the Center by e-mail and in hard copy, together with two exhibits. The Amended Complaint was received by e-mail on the same date and in hard copy on May 28, 2002. In addition to addressing the deficiencies identified in the Complaint Deficiency Notification, the Complainant also amended the dates of service of the Complaint on the Respondent and the Registrar from February 8, 2002 to May 8, 2002.
On May 30, 2002, the Center notified the Respondent of the Amended Complaint, informing it, inter alia, that the deadline for submitting a Response was June 19, 2002. The Respondent filed a Response on June 19, 2002, which was received by the Center by e-mail on the same date and in hard copy on June 25, 2002.
The Center appointed D. Brian King as Sole Panelist by Notification of June 27, 2002, and the undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
On July 5, 2002, the Panel issued Procedural Order No. 1, inviting the Complainant to submit a Rejoinder to the Response by July 11, 2002, and further inviting the Respondent to comment on the Complainantís Rejoinder by July 15, 2002. The Complainantís Rejoinder with attachments was received by the Center by e-mail on July 10, 2002, and in hard copy on July 15, 2002. The Respondent did not submit a response to the Rejoinder.
4. Factual Background
The facts relevant to the current matter are set out in the Amended Complaint, Response and Rejoinder. Considering the evidence submitted, the Panel finds that the following facts have been established.
The Complainant is a holding company in the business of energy production. The first company in the Complainantís group was founded in 1875; the Complainant has used the mark "Tinfos" for many years and holds trademark registrations in ten jurisdictions (see Complainantís exhibit 3). The Complainant has held trademark registrations for its mark since 1982 (see id.). The Complainant has not, however, registered its trademark in Korea, where the Respondent is located.
The Complainant is the registered owner of the following domain names: <tinfos.org>, <tinfos.net>, <tinfos.no>, <tinfos.de>, <tinfos.lu>, <tinfos.biz> and <tinfosnizi.com>. The Complainant was also the registered owner of the disputed domain name, <tinfos.com>, but lost the domain name in the early months of 2001 by failing timely to re-register it.
The contested domain name, <tinfos.com>, was registered by the Respondent on June 1, 2001 (see Complainantís exhibit 1). At the time the Complaint was filed, the domain name linked to a website with banner advertisements, including advertisements for and links to "adult" and gambling sites. These included <bigdoggie.com>, an escort service website carrying the Respondentís name. Subsequent to the date of the Complaint, however, the content of the website was changed. It currently resolves to an active website being used for the purpose of promoting the activities of World Christian Frontiers, a religious organization (see Respondentís exhibit 1).
On June 14, 2001, the Complainant, having realized that it had failed to renew its registration of the disputed domain name and having found out that the domain name had been registered by the Respondent, caused one of its employees to contact the Respondent by e-mail. In that e-mail the employee, Mr. Enger, explained that the Complainant wanted to recover ownership of the domain name. On June 15, 2001, the Respondent wrote back stating:
Thanks for your inquiry, Frankly, weíve received lots of offers from usa. We registered the domain for our developing web site. As you may know that the domain has got good meaning all over the world. And we've prepared the project for 2 years about the domain Tinfos.com. The project is remaining final steps of cgi & payments contents. Even though we prepared to build web site for two years, We are willing to negotiate with you about ownership change, if you wanna buy the domain eagerly. But, we need your considerations about our firm's expenses we spent for previous contents. The expenses range is about $10,000.00. Let me know if you agree on or not. If you agree on, we'll send id and password via email. You can manage the domain at http://manage.opensrs.net And for the wire transfer, we can use www.escrow.com.
(Exhibit to the Complainantís Rejoinder).
Later that day Mr. Enger wrote back to the Respondent saying: "I do not see what use you have in the domain Tinfos.com. That is the name of a norwegian company. Please enlight[en] me of your intentions about the domain. The price we should discuss." The Respondentís reply, on June 15, 2001, was as follows:
"Tin"&"Fos" is very famous & favorite word in korea. And tinfos means that "very numerous and strengthen power" in korean. You can find it http://www.hananet.net/main.htm. We have prepared the project related in wireless service for youngones in korea. And we've received some offers from wireless service company from korea, but we rejected due to our project. Let me know you wanna buy or not.
Several months later, on October 10, 2001, another employee of the Complainant (who did not identify himself as such) sent an e-mail to the Respondent again inquiring about the purchase of the domain name. The Respondentís e-mail in reply, of the same date, stated:
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 usa. The price range is $5,500us.
Sorry for saying this,
If you can be affordable over $5,500us, let me know immediately.
(Complainantís exhibit 8).
A similar exchange occurred again on December 15, 2001. This time the Respondent replied as follows:
Thanks for your offer,
And very sorry if it makes you any inconvenience.
Thereís been offered so many times about that domain name.
We purchased the domain for our developing website at first. Unfortunately, the domain is on the negotiation with other buyer from usa.
The price range is $20,000us.
Sorry for saying this,
If you can be affordable over $20,000us, let me know immediately.
The next exchange between the parties took place on April 15, 2002. In an e-mail of that date, the Complainant unambiguously identified itself as the trademark holder. It informed the Respondent that it was the owner of the domain name prior to the Respondent and that it held trademark registrations for the mark "Tinfos". The Complainant offered to purchase the <tinfos.com> domain name for US$ 250, representing out-of-pocket expenses. In reply, the Respondent, on April 17, 2002, wrote as follows:
Thanks for your email,
And very sorry if it makes you any inconvenience.
We purchased the domain for our developing website at first.
Unfortunately, the domain is NOT for sale.. and we are gonna use it.
5. Partiesí Contentions
The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.
The Complainant argues that the contested domain name is identical to the Complainantís "Tinfos" mark, in which the Respondent has no prior rights.
Regarding the possible existence of legitimate interests on the Respondentís part, the Complainant asserts that the Respondent has no legitimate interests with respect to the contested domain name, since the domain name was registered well after the Complainant had established rights in the "Tinfos" mark through trademark registration and extensive use. In addition, the Complainant states that the domain name has no relevance to the Respondent or its business. The Complainant further contends that the Respondent, apart from the domain name registration, is not currently known as "Tinfos" and has not acquired any trade or service mark rights in the domain name. The Complainantís Complaint, referring to the content of the Respondentís website at the time the Complaint was filed, argues that the Respondent was not using the site for a legitimate commercial purpose, but rather simply to display banner advertisements for other sites, and in doing so was intentionally engendering confusion vis-à-vis the websiteís sponsorship or affiliation.
The Complaint further notes that the Respondent has been involved in a number of similar domain name disputes in the past. It is contended that the Respondent has a practice of registering trademark names for the purpose of offering them for sale while in the meantime exploiting ongoing traffic to the site.
On the issue of bad faith, the Complainant argues that the Respondent has registered and is using the domain name in bad faith. Referring to the e-mail exchange between the parties (see above), the Complainant contends that the Respondentís main purpose in acquiring the domain name was to resell it, and that this is evidence of bad faith registration. The Complainant suggests that the Respondentís use of a standard e-mail response, in this case and in other domain name cases in which the Respondent was a party, reinforces the showing of bad faith (see Complainantís exhibit 6). As further evidence of the Respondentís alleged bad faith, the Complainant notes that the Respondentís website, at the time of the Complaint, contained links to gambling and "adult" websites, thereby tarnishing the Complainantís goodwill (see Complainantís exhibit 4).
The Respondent concedes that the disputed domain name, <tinfos.com>, is identical to the Complainantís registered trademark.
The Respondent contends, however, that it does have a legitimate interest in the domain name as it intends to develop a website for Teen Frontiers, a youth group associated with the World Christian Frontiers organization. The Respondent alleges that the word "Tinfos" is an abbreviation of "Teen Frontiers" for Korean speakers. For this reason, the Respondent argues, it declined the Complainantís offer to purchase the domain name in its e-mail of April 17, 2002.
The Respondent contends that it could not have registered the domain name in bad faith because it had never heard of the Complainant at the time of registration. The Respondent argues that the Complainant is not a well-known company and points to the fact that the Complainant has no trademark registrations for "Tinfos" in the U.S. or Korea.
Regarding the allegation of bad faith use, the Respondent contends in substance that:
- It never solicited the sale of the domain name to the Complainant;
- There is no evidence to suggest that it registered the domain name in bad faith;
- Advertising on a website is not indicative of bad faith; and
- It registered the domain name with the good faith intention of developing a website for "Teen Frontiers".
The Respondent further claims that the Complainant has attempted to engage in Reverse Domain Name Hijacking by bringing the present proceeding.
As noted, in view of the change in the websiteís content after the date of the Complaint and other factors, the Panel invited the Complainant to submit a Rejoinder to the Response, together with copies of all e-mail correspondence between its employees or other representatives and the Respondent. The Panelís Procedural Order likewise afforded the Respondent an opportunity to reply to the Rejoinder.
In its Rejoinder, the Complainant alleges that the Respondent, with its vast experience in registering domain names, used standard available techniques to detect "expired" domain names and thus was able to register the disputed domain name shortly after the Complainantís registration lapsed. For this reason, the Complainant alleges, the Respondent was aware of the Complainant and its business at the time it registered the domain name.
The Complainant further argues that the Respondentís action of completely changing the content of the website after receipt of the Complaint was undertaken for the sole purpose of supporting its arguments of legitimate use and good faith. In the Complainantís view, this action on the Respondentís part is actually evidence of bad faith.
The Complainant states that, as a result of its inquiries, it has discovered that the words "Tinfos" or "Tin" and "Fos" do not have any meaning in Korean, contrary to the Respondentís allegation. In any event, the Complainant points to the Respondentís e-mail of June 15, 2001, where the Respondent stated that "Tin" and "Fos" mean "very numerous and strengthen power" in Korean (see exhibit to the Complainantís Rejoinder). The Complainant notes that this is in contradiction to the meaning attributed to those terms in paragraph 34 of the Respondentís Response and argues that this inconsistency undermines the Respondentís case.
The Complainant, based on the foregoing points, concludes that it has fulfilled the necessary requirements under Paragraph 4(a) of the Policy and is therefore entitled to recover the <tinfos.com> domain name. The Complainant denies the Respondentís allegation of Reverse Domain Name Hijacking, arguing that it believes it is lawfully entitled to recover the disputed domain name in accordance with the Policy.
D. Reply to the Rejoinder
As noted, the Respondent failed to submit any comments on the Complainantís Rejoinder, despite being given the opportunity to do so.
6. Discussion and Findings
Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Notwithstanding the Respondentís default, the Complainant retains the ultimate burden of proof on each of these elements.
Prior to undertaking an examination of these elements, the Panel notes that the Respondent is no stranger to contested domain name proceedings. The Respondentís principal, Mr. Taeho Kim, has been the respondent in at least three prior proceedings. Each of these cases involved factual scenarios similar to the present one Ė i.e., the registration by Mr. Kim of trademark names or close derivations thereof, followed by standard-form e-mail correspondence claiming the intent to develop a website combined with offers to sell it at increasing price levels. See FreedomCard, Inc. v. Mr. Taeho Kim, WIPO Case No. D2001-1320 (January 20, 2002); Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Essex.org and Kim Taeho, WIPO Case No. D2000-1513 (April 12, 2001); Nintendo of America Inc. v. Enic. Net, Ename and Kim Taeho, WIPO Case No. D2001-1369 (February 14, 2002). While these earlier matters can have no direct relevance to the outcome of the present case, the Panel necessarily takes cognizance of them in assessing the similar allegations at issue here.
a. Identical or confusingly similar
The disputed domain name, <tinfos.com>, wholly incorporates the Complainantís registered trademark "Tinfos," as the Respondent concedes. Accordingly, the Complainant has met the first element under Paragraph 4(a).
b. Rights or legitimate interests of the Respondent
The Panel is satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in respect of the domain name. In particular, the Panel finds that none of the three circumstances, identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests, is present here.
First, the Panel considers that the Respondent has not used and is not using the domain name in connection with a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy. It is clear that the Complainant has never given the Respondent any right or permission to use its mark. At the time the Complaint was filed, the disputed domain name did not resolve to an active website with its own content but rather immediately re-directed the user to another web address, <register.bestsrs.com.> (see Complainantís exhibit 4). That site containing banner advertisements with links to various commercial websites, including links to sites with gambling and "adult" content such as the Respondentís own website, <bigdoggie.com>. Considering these circumstances, as well as the fact that none of the linked sites had any arguable reference or relevance to the name "Tinfos," the Panel concludes that at the time the Complaint was filed, the Respondent cannot be said to have been making legitimate use of the domain name in connection with a bona fide offering of goods or services.
Since the date of the Complaint, the Respondent has changed the content of the website to which <tinfos.com> resolves. Because this change occurred after the Respondent received notice of the dispute, and because the new content is not commercial in nature, this change in content must be considered, if at all, in connection with subparagraph (iii) of Paragraph 4(c).
Regarding the second circumstance identified in Paragraph 4(c), there is no evidence that the Respondent has "been commonly known" by the domain name at issue. Indeed, the Respondent does not so contend.
With respect to the "non-commercial or fair use" criterion set out in Paragraph 4(c)(iii) of the Policy, the Panel similarly concludes that this circumstance is not present here. As noted earlier, the content of the website reached through the contested domain name has been recently changed and now resolves to a site promoting a Christian organization, "World Christian Frontiers". In the first place, it is not clear that such a change, occurring after notice of the dispute, should be considered in assessing a respondentís possible legitimate interests in a contested domain name. Even assuming that it should, however, the change is unavailing for the Respondentís case here.
The Respondent has asserted, in support of its claim of fair use, that it registered the contested domain name because "TINFOS.COM is the abbreviation of ĎTeen Frontiersí for easy use in Korea" (Response, para. 13). However, the Respondent has provided no proof that "Tin" or "Fos", alone or in combination, signify "Teen Frontiers" in Korean. Furthermore, the record shows contradictory positions by the Respondent as to what those words mean. In an e-mail to an employee of the Complainant dated June 15, 2001, the Respondent stated that "Tinfos" means "very numerous and strengthen power" in Korean (see exhibit to the Complainantís Rejoinder), while the Respondentís Response appears to assert (e.g., at page 14) that "Tinfos" literally means "Teen Frontiers". The Complainantís Rejoinder, meanwhile, denies that the term "Tinfos" has any meaning in Korean, and this assertion has not been contested by the Respondent, which was expressly afforded an opportunity to file a reply to the Complainantís Rejoinder. In these circumstances, the Panel concludes that the Respondentís argument on its reasons for registering the contested domain name, and thus its allegedly legitimate non-commercial interest in the name, lacks credibility and cannot be accepted.
For the foregoing reasons, the Panel concludes that the second element under Paragraph 4(a) has been established in the present case.
c. Bad faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the respondentís website or location, or of a product or service on the website or location.
Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith." This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.
For purposes of the Policy, a finding of any one of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.
The Panel is persuaded on the facts here that bad faith registration and use have been sufficiently established. The Panel reaches this conclusion on the basis of several circumstances that, taken together, give rise to a strong inference of bad faith registration and use.
The first such circumstance is the Respondentís conduct with respect to the proposed sale of the disputed domain name to the Complainant or its representatives. The record shows that within two weeks of its registration of the domain name, the Respondent was contacted by an employee of the Claimant regarding it and, in response, quoted a price of US$ 10,000 for selling it. Subsequent e-mails sent by or on behalf of the Complainant produced varying price quotes from the Respondent, culminating at US$ 20,000 on December 15, 2001 (see Complainantís exhibit 8). Notably, the texts of the Respondentís e-mails containing these offers appear to be "standard-form," being substantially identical to the wording used in respect of another disputed domain name. See FreedomCard, Inc. v. Mr. Taeho Kim, WIPO Case No. D2001-1320 (January 20, 2002), at page 3. Ultimately, when the Respondent was put on notice that a legal proceeding was potentially on the horizon Ė via an April 15, 2002, e-mail from the Complainant specifically referencing its trademark and offering out-of-pocket costs as compensation Ė it withdrew its offer to sell and stated that it intended to develop the website. These facts give rise to the inference that the Respondent registered and held the domain name for the purpose of selling it to the trademark holder or a competitor, for compensation in excess of its out-of-pocket costs, and abandoned this intention only when legal proceedings appeared threatened.
The Respondent insists in its Response that it cannot be held to have acted in bad faith because it had no knowledge of the Complainant company at the time it registered the domain name, and thus its registration (and use) of a domain name incorporating the Complainantís mark was not in bad faith. The Panel cannot accept this argument. The Complainant is an internationally-active company that has registered trademarks in ten jurisdictions. The Complainant has registered numerous domain names using its mark "Tinfos", and indeed, prior to early 2001, it was the owner of the domain name at issue in this proceeding. Furthermore, the mark "Tinfos" is distinctive, and it seems extremely unlikely that the Respondent would have chosen the name without prior knowledge of the Complainant company and thus its rights in the name. The Respondentís attempt to counter that inference through the invocation of a Korean meaning of the terms "Tin" and "Fos" is, for the reasons already described above, not credible.
A second circumstance indicative of bad faith is the Respondentís behavior after the Complaint was filed. At that point, it changed the content of the website reached through the disputed domain name from advertising banners to information on a Christian organization. The Respondent contends that it had been planning for more than two years to establish this promotional site but had not proceeded due to financial constraints. The timing of the Respondentís action, however, suggests otherwise Ė i.e., that the change was made to attempt to forestall an unfavorable result in this proceeding.
Finally, the Panel notes that in the text of its Response, the Respondent has altered the wording of one of the e-mails exchanged between the parties in a manner apparently intended to strengthen its case. The e-mail at issue, dated June 15, 2001, was subsequently produced by the Complainant with its Rejoinder, and the legitimacy of the Complainantís copy was not thereafter disputed by the Respondent. This apparently willful act of alteration by the Respondent, in the context of these proceedings, further undermines the credibility of the Respondentís assertions and buttresses the conclusion that the Respondent has not proceeded in good faith.
For the foregoing reasons, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the domain name <tinfos.com>.
Lastly, as the Complainant has successfully met all the requirements of Paragraph 4(a) of the Policy, the Panel finds that the Complainant has not engaged in Reverse Domain Name Hijacking, as alleged by the Respondent, because it is lawfully entitled to recover the domain name.
For the foregoing reasons, the Panel determines that the domain name in dispute is identical to the mark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that it has been registered and is being used in bad faith. Accordingly, the Amended Complaint succeeds and the Panel directs that the domain name <tinfos.com> be transferred to the Complainant.
D. Brian King
Dated: July 22, 2002