WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Novus International, Inc. v. Chang Il Min

Case No. D2002-0789

 

1. The Parties

The Complainant is Novus International, Inc., a corporation of the state of Delaware, with its principal place of business in St. Louis, Missouri, United States of America.

The Respondent is Chang Il Min, an individual resident in Pohang, Republic of Korea.

 

2. The Domain Name and Registrar

The domain name at issue is <mha.net> which is registered with Namescout Corp. ("the Registrar") of Bridgetown, Barbados.

 

3. Procedural History

A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 21, 2002, and in hardcopy on August 26, 2002. An Amendment to the Complaint was received by the Center on August 27, 2002. An Acknowledgment of Receipt was sent by the Center to the Complainant, dated August 23, 2002.

On August 23, 2002, a Request for Registrar Verification was transmitted to the Registrar.

On August 23, 2002, the Registrar stated that it was not in receipt of the Complaint, but confirmed that the domain name at issue, was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name.

The Registrar has currently incorporated the Policy in its agreements. The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain names at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.

The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on September 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of September 22, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier and e-mail to the addresses indicated in the Complaint.

On September 23, 2002, having received no Response from the Respondent the Center transmitted to the parties a Notification of Respondent Default. On October 3, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.

 

4. Factual Background

The Complainant and its Registered Trademarks

The Complainant alleges that it and its predecessor in interest, Monsanto Company, have used the MHA mark continuously since at least as early as 1953. Complainant owns 48 trademark registrations (copies of which are collectively attached as Annex C to the Complaint) in countries around the world for its MHA mark in connection with various animal feed additives, supplements, and related products including a registration in the Republic of Korea.

 

5. Partiesí Contentions

A. Complainant

(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights

The trademark at issue is Complainantís MHA trademark and the domain name at issue is <mha.net>. The trademark registration certificates attached as Annex C to the Complaint are substantial evidence of Complainantís worldwide rights in the mark MHA. The only difference between the <mha.net> domain name and Complainantís MHA trademark is the addition of the gTLD ".net." It has repeatedly been held that the top level of the domain name at issue is not considered in determining whether the domain name is identical or confusingly similar to the Complainantís mark. See, e.g., General Electric Company v. John Bakhit, WIPO Case No. D2000-0386; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Schott Glas and Nec/Schott Components Corp. v. Necshott, WIPO Case No. D2001-0127. Consequently, the <mha.net> domain is submitted to be identical to, or at least confusingly similar to, Complainantís MHA trademark.

(2) Respondent has No Rights or Legitimate Interests in the <mha.net> Domain Name

Complainant has never granted Respondent a license or other right to use the MHA mark and Respondentís name (Chang Il Min) or initials thereof bear no resemblance whatsoever to Complainantís MHA mark. There is also no evidence that Respondent operates a business or organization or is himself commonly otherwise known by the name MHA.

Respondent has also failed to make a bona fide offering of goods and services or otherwise make a non-commercial or fair use of the <mha.net> domain name. In fact, Respondentís sole use of the domain name is to operate a website that openly advertises "Domain 4 Sale". A printout of Respondentís website to which the <mha.net> domain name corresponds is attached hereto as Annex D. The mere offering of a domain name for sale to any party does not constitute a right or legitimate interest in that name. Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044; General Electric Company v. John Bakhit, WIPO Case No. D2000-0386. Moreover, Complainant was using its MHA mark in 48 countries worldwide, including in the Republic of Korea (Respondentís apparent country of residence), well before Respondent registered the <mha.net> domain name in November 2001. Respondent was surely aware of Complainantís rights in the mark prior to registering the domain name.

In view of the foregoing, Complainant submits that the Respondent lacks any rights or legitimate interest in the <mha.net> domain name.

(3) Respondent Registered and is Using the <mha.net> Domain in Bad Faith

As stated previously, Respondentís sole use of the <mha.net> domain name is to advertise that the domain name is for sale. On March 19, 2002, Complainant sent an electronic mail message (Annex E to the Complaint) to Respondent inquiring as to the process for acquiring the <mha.net> domain name. Respondent replied (also in Annex E to the Complaint) as follows:

"Thank you for your interest in the domain name <mha.net>. I am willing to transfer this domain name to you if you suggest a reasonable price. Please let me know how much you can afford to at first if you want to buy it."

Complainantís authorized representative subsequently sent a letter dated April 5, 2002, by courier and by electronic mail message (Annex F to the Complaint) to Respondent demanding that Respondent cease using the <mha.net> domain name and offering to compensate Respondent for Respondentís out-of-pocket expenses. Respondent failed to reply and Complainantís authorized representative again sent the letter, by electronic mail message (on May 7, 2002), and by courier (on May 8, 2002). As of the filing of this Complaint, Respondent has still failed to reply.

Respondent clearly registered and is using the domain name for the purpose of selling the domain name to Complainant for an amount exceeding Respondentís out-of-pocket expenses. See, e.g., Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127, ("offering to sell a domain name by advertising to the public at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the Complainant or a competitor") and the cases cited therein. Respondentís use of the domain name solely to advertise the sale of the domain name, combined with Respondentís communication with Complainant in which he asks Complainant to state "how much you can afford" (i.e., instead of simply asking for out-of-pocket expenses) to purchase the domain name, is strong evidence that Respondent registered the domain name for the purpose of selling it to Complainant and is now using the domain name to carry out such a scheme. Moreover, it is highly unlikely that Respondent would advertise on a stand-alone website that the <mha.net> domain is for sale if his intent were to sell the domain name for his out-of-pocket expenses. Rather, Respondent is clearly seeking to make a profit from the sale of the domain name. Upon being confronted by Complainantís cease and desist demand, Respondent has now chosen not to respond.

Additional circumstances surrounding Respondentís registration and use of the <mha.net> domain name further support a finding of bad faith. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, (holding a general offer for sale of the domain name to constitute bad faith in view of other circumstances); General Electric Company v. John Bakhit, WIPO Case No. D2000-0386. Respondent clearly had constructive notice of Complainantís rights in the MHA mark before registering the <mha.net> domain name. Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032, (actual or constructive knowledge of the Complainantís rights in the mark is a factor supporting bad faith). Complainant has registered and used its MHA mark in 48 countries worldwide, including Respondentís country of residence. See CCA Industries v. Bobby R. Dailey, WIPO Case No. D2000-0148; Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591.

Respondent has also failed to reply to Complainantís demand to transfer the domain name. Encyclopedia Britannica v. Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330, (holding that a failure to respond to Complainantís efforts to make contact provides strong support for a determination of bad faith registration and use); Toyota Motor Sales, supra; Emory Healthcare, Inc. v. Gulf South Limited, No. FA 0005000094892 (NAF July 5, 2000).

In light of the foregoing, Complainant submits that the Respondent registered and is using the <mha.net> domain name in bad faith.

Finally, Complainant has requested the Administrative Panel to issue a decision by which the contested domain name is transferred to Complainant.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

The Panel is of the opinion that the domain name at issue is identical to Complainantís mark MHA.

The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.

The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.

Paragraph 4 (a)(iii) of the Policy further provides registration and use in bad faith.

It is obvious from the facts in the case, i.e. the prior ownership by Complainant of trademark registrations for MHA including a registration in the Republic of Korea, the fact that it is highly probable that the Respondent has selected the name with knowledge of the Complainantīs numerous trademark registrations, the fact that the Respondent is not using the domain name at issue but offers it for sale on the website "www.mha.net", the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4(a)(i-iii) and 4(b)(i) that the domain name has been registered and used in bad faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(i) of the Rules are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides that the domain name <mha.net> registered by the Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <mha.net> be transferred to the Complainant.

 


 

Jonas Gulliksson
Sole Panelist

Dated: October 17, 2002