WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Young Kwon, aka Jet Hander v. "Public Prosecutor"
Case No. D2004-0166
1. The Parties
The Complainant is Young Kwon, aka Jet Hander, Santa Ana, California, of United States of America, represented by Higgs, Fletcher & Mack LLP, United States of America.
The Respondent is Public Prosecutor of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <sexkorea.net> (herein the "domain name in dispute" is registered with Network Solutions, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2004. On March 5, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On March 5, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On March 9, 2004, Complainant amended the Complaint in substituting two pages of Annex 4 in order to redact confidential information. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2004.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 5, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has used the Trademark SEXKOREA (herein the "Trademark") in a domain name incorporating the element SEXKOREA in conjunction with his website since at least 1999 until at least August 2003, and on December 12, 2002, has applied for United States registration of the Trademark, which application, pending before the United States Patent and Trademark Office (hereinafter "USPTO"), discloses services of providing links to websites of others featuring adult entertainment and October 6, 1999, as its the date of first use in commerce.
The Complainant states that he registered the domain name in dispute in 1999, has maintained the domain registration at least until October 2003 and has established a website ("www.sexkorea.net") that catalogs and provides links to adult oriented websites, many of which are focused on Eastern Asia. Up until September 4, 2002, the registration was with Network Solutions, Inc. On that day, Complainant transferred the domain name to Eyeondomain and renewed it until October 6, 2003. Complainant's contact email was (and is) email@example.com
The website at "sexkorea.net" is accessed by people all over the world, including the United States; and the Complainant, as stated in his declaration, has spent thousands of dollars annually promoting, advertising, updating and maintaining his "sexkorea.net" website.
The Complainant states in his declaration that the domain name in dispute was created in 1999. The Panel was able, through his own search, to find in the "www.internic.com" WHOIS database that the domain name in dispute, <sexkorea.net>, was originally registered on October 6, 1999, with Network Solutions, Inc. while the domain name <sexkorea.com> was registered earlier on May 28, 1998, with iHoldings.com Inc. d/b/a DotRegistrar.com. There is no evidence that the domain name <sexkorea.com> was ever used before the Panel carried out a verification in the past few days.
The Complainant transferred the domain name in dispute from Network Solutions, Inc. to Eyeondomain on September 4, 2002, as it appears from Annex 4. It was further transferred back to Network Solutions, Inc. on November 23, 2003, by the Respondent, Public Prosecutor, where it presently stands locked pending this proceeding.
On July 8, 2003, the registrar, Eyeondomain, sent a 90-day renewal reminder for <sexkorea.net>. The renewal reminder was sent to firstname.lastname@example.org. On August 7, 2003, a 60-day reminder was sent by Eyeondomain to the same address, email@example.com. Eyeondomain sent the reminders to the contact address firstname.lastname@example.org which has the gTLD ".com" while the correct address of Complainant was email@example.com which has the gTLD, ".net".
According to the registrar's WHOIS database, Annex 1, the Respondent is named Public Prosecutor, and he or it has the following address:
Prosecutor, Public (UPGAFBVLWD)
Seoul, Korea 137-730
Prosecutor, Public (36471841P) firstname.lastname@example.org
Seoul, Korea 137-730
According to Annex 1, the WHOIS database search, the <sexkoreamail.com> domain name is registered in the name of Public Prosecutor. The domain name in dispute, as it appears from Annex 1, is presently registered in the name of Respondent at the address mentioned hereinabove.
According to the chronology of events provided by Eyeondomain and given in Annex 4, the domain name in dispute was renewed, by Respondent, on August 18, 2003, almost two months before its due date. The owner password was sent on September 10, 2003, to email@example.com and, with that in hand, Respondent was thus in possession of Complainant's password. Then Respondent transferred the domain name in dispute from Eyeondomain to Network Solutions, Inc. on November 23, 2003.
The Complainant states that he did not receive the two renewal reminder notices sent by Eyeondomain to firstname.lastname@example.org and, therefore, did not renew the domain name in dispute, which was open for renewal until October 6, 2003.
Upon realizing what had happened, the Complainant through his counsel Hoisington, contacted Eyeondomain and made an inquiry into what had happened. Eyeondomain took the position that it was not at fault, and because the domain was transferred to Network Solutions, Inc., they had no control over any dispute. Complainant's counsel contacted Network Solutions, Inc. and inquired with a representative about the actions taken by Public Prosecutor. Network Solutions, Inc. put the domain name into LOCK status and, after an internal investigation, informed Complainant that they would take no other action pending the settling of this dispute by appropriate method, including a UDRP proceeding at WIPO. By his own admission, Complainant's website at "sexkorea.net" was not tampered with before Network Solutions, Inc. was notified of this dispute and locked the domain name in dispute.
Complainant's attorney, Mr. Hoisington, states in his declaration that upon speaking with a representative of Network Solutions, Inc., he was told that the hotmail email address was suspicious. The Center notified the Complaint by e-mail to the Respondent, among other e-mail addresses, email@example.com on March 9, 2004. The hard copy sent by WIPO at the above designated address of Respondent could not be delivered. Federal Express reported "incorrect address" and returned the package to the shipper after many days of waiting.
While the Complainant states that the domain name in dispute is not presently used by Respondent, Panel has verified and found that both domain names, <sexkorea.net> and <sexkorea.com> transfer the visitor to a website "www.sexkorea21c.com," which contains links to three backup domains and several other domains. Panel, upon verifying this last website with Internic database, found that it is registered in the name of Tucows with December 30, 2003, as a date of creation.
5. Parties’ Contentions
The Complainant submits that the domain name in dispute is identical or confusingly similar to his Trademark in which he contends to have rights, in that the term SEXKOREA is the dominant element of the domain name in dispute. The Complainant contends that with over four years of continuous use in commerce, the relevant public in the United States has come to associate the services provided under the Trademark SEXKOREA with the Complainant.
The Complainant further contends that Respondent presumably received the reminders while his registration was still current until October 6, 2003, and with the information contained therein was able to effectuate the early renewal of the domain name in dispute, thereby hijacking Complainant's domain <sexkorea.net> on August 18, 2003. As can be seen from the record provided by Eyeondomain, the owner password was sent to firstname.lastname@example.org, the wrong gTLD, and with that in hand, Respondent was able to transfer the domain name away from Eyeondomain to Network Solutions, Inc. on November 23, 2003.
The Complainant contends that the Respondent usurped Complainant's domain name and, at the time of such usurpation, Respondent was most certainly aware of Complainant's Trademark rights and valuable goodwill therein and to that effect relies on the fact that the USPTO trademark database is on the Internet and available for anyone worldwide to search. Moreover, according to Complainant, his website is well known and existing at "wwwsexkorea.net".
The Complainant further submits that Respondent's current possession of the domain name in dispute not only infringes Complainant's Trademark rights, but is also jeopardizing Complainant's business as it is the address where his website is located on the Internet and where Complainant continues to conduct its business.
The Complainant contends that the Respondent usurped Kwon's domain name either by somehow changing the main contact domain name from email@example.com to firstname.lastname@example.org, or by capitalizing on an inadvertent mistake by Complainant's registrar (Eyeondomain) which may have accidentally changed the ".net" to ".com" and sent the renewal information to Respondent. Either way, Respondent was aware of Complainant's rights in and to the domain name in dispute and through subterfuge and trickery, renewed the said domain name in its own name, and subsequently transferred it away from Eyeondomain to Network Solutions, Inc.
Complainant contends that Respondent has no rights or legitimate interests in the domain name <sexkorea.net> in that there is absolutely no evidence of any use of the domain name in dispute or the Trademark by Respondent prior to this dispute. Furthermore, Respondent has not been commonly known as SEXKOREA, is not a licensee and is not in any way authorized to make use of Complainant's Trademark, and is making no legitimate use of the domain name in dispute. There is no evidence that Respondent has ever been engaged in any legitimate business under the Complainant's Trademark.
Complainant asserts that Respondent's actions were conceived in an attempt to either extort money from Complainant for the return of the <sexkorea.net> domain, or to deny Complainant access to the use of the domain name corresponding to its trademark.
Complainant contends that Respondent has registered and used the domain name <sexkorea.net> in bad faith in that it was hijacked away by stealth, subterfuge and trickery. As further evidence of Respondent's bad faith, like other cyber-squatters, Respondent attempts to evade liability by disguising its true intentions through misinformation and subterfuge; the use of a fake name, address and phone number in its WHOIS information; and, Respondents alleged failure to reply to emails from the Complainant or Network Solutions, Inc. regarding this dispute
According to Complainant, the very name, Public Prosecutor, sets the stage for Respondent's bad faith, using a contrived name to hide the identity of a bad faith registrant and an incorrect address and telephone number in Seoul where none corresponds to the address and number given by Respondent. The lack of response to attempted contact via email by Complainant and Network Solutions, Inc. also weighs in favor of a finding of bad faith on the part of the Respondent.
According to Complainant, by transferring the domain away from Eyeondomain, Respondent further indicates its bad faith intent to wrest control from the legitimate owner of the domain name, the Complainant. There is little doubt that in time the Respondent would have attempted to damage Complainant in some manner.
Complainant asserts that by hijacking Complainant's valuable domain name, Respondent, in bad faith, would seek to hold the domain name hostage and/or disrupt the business of the Complainant, in order to obtain financial gain at Complainant's expense, or to utilize the goodwill that Complainant has developed to confuse and attract consumers looking for Complainant's website for its own gain, or to deny Complainant access to the domain name that corresponds to his Trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) 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
(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.
Comments on the evidence:
Prior to engaging into the discussion, the Panel considers it appropriate to comment on the quality and limited or borderline sufficiency of the evidence in this case.
Notwithstanding the facts that this type of proceedings is summary in nature and that a complainant is required to certify the facts mentioned in the complaint, as it has done here, and furthermore, that both Complainant and his counsel have filed a declaration, this Panel is of the view that corroborative evidence would have been most helpful, preferably documentary from Complainant's records, as to certain important dates, such as the date of creation of the domain name in 1999, and the e-mail addresses of both Complainant and Respondent which are at the nexus of the transfer, appropriation or registration of the domain name in dispute by Respondent, on the one hand, and a better organized presentation of the evidence in Annex 4 which cover only the July - November 2003 period, on the other hand, and wherein certain pages have no date.
Finally the Complainant does not explain how he realized that the domain name had been transferred to or appropriated by Respondent, in the Fall of 2003 nor does he provide any record or print of attempts at reaching Respondent and latter's failure to reply to emails from the Complainant or Network Solutions, Inc. regarding this dispute.
These shortcomings as to the evidence of the Complaint are unfortunate, but the Panel may, based on the case file, proceed to decide upon the merits of this case.
A. Identical or Confusingly Similar
The evidence shows that the domain name in dispute which incorporates the element ‘sexkorea’ was registered in October 6, 1999, and that as stated by the Complainant, this constituted use of the Trademark SEXKOREA in association with the services of providing links to websites of others featuring adult entertainment, and according to the declaration of Complainant, such use was certainly made until October 6, 2003, the date on which it was due for renewal.
While the unregistered Trademark in the present case is constituted of a descriptive word and a geographical country name, the conjunction of the words ‘sex’ and ‘korea’ in one constitutes the distinctive feature. See Brisbane City Counsel v. Warren Bolton Consulting Property PTY Ltd., WIPO Case No. D2001-0047.
Although the unregistered Trademark rights herein do not benefit of a very high distinctive character, nevertheless the evidence, limited as it is and unchallenged despite an opportunity for Respondent to do so or present his own evidence, is that the Trademark has been used since 1999, at least until August 2003 when it was appropriated by Respondent and has thus generated unregistered rights in the said Trademark and some goodwill. The use of the domain name in dispute without the consent or the authorization of the Complainant constitutes an unauthorized use of the unregistered trademark and therefore an infringement thereof.
Furthermore, the record of the application to register the Trademark before the USPTO discloses a date of first use of October 6, 1999. Although there is no additional corroborating evidence, the Panel finds that Complainant has made a prima facie case that it has used the Trademark and Respondent has not rebutted this evidence.
Accordingly, the Panel finds that the Complainant has common law rights in the Trademark.
There is no doubt that the domain name <sexkorea.net> is confusingly similar with the Trademark of Complainant for purposes of the Policy. The domain name in dispute incorporates, in its entirety, the SEXKOREA Trademark.
In the opinion of the Panel and the consistent earlier decisions of other panels, the addition of the suffix ".net" which results in the domain name in dispute does not deter the reader from the fact that the Trademark has been taken.
The Panel finds that the domain name in dispute is confusingly similar with the unregistered Trademark SEXKOREA.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in dispute by stating that the Respondent has never been known by the name "sexkorea" or the domain name in dispute, is not making a legitimate noncommercial or fair use of the domain name in dispute. Furthermore, Complainant has never given a license, nor in any way authorized Respondent to make use of Complainant’s Trademark. There is no evidence that Respondent has ever engaged is any legitimate business under the Complainant’s Trademark. While there is no evidence that Respondent’s action constitutes an attempt to extort money from Complainant, it is certainly fair to conclude that the holding of the domain name in dispute denies Complainant access to the use of the domain name corresponding to its Trademark.
The Panel concludes, based on the case file, that the Respondent has not made use of the domain name in connection with the bona fide offering of goods or services and that there is no evidence that the Respondent has any rights or legitimate interests in the domain name in dispute.
The conditions for the second criterion have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
The Panel observes that while the Complainant has submitted various arguments alleging registration and use in bad faith, Complainant has not submitted to the Panel any earlier UDRP decisions to support any of counsel’s points.
In the present case, the evidence is clear that the domain name in dispute was first registered by and was previously the property of the Complainant until by inadvertence or mistake the renewal reminder notices were sent to an e-mail address associated with the Respondent and the Respondent took advantage of this mistake to appropriate the domain name in dispute, renew it or register it in his own name for the first time and thereafter transfer the registration to a new registrar which resulted in the situation that the earlier registrar no longer had control over the registration and the new registrar could not be blamed for any wrongdoing.
Under the present circumstances, the Panel finds that the renewal by the Respondent of Complainant's domain name in his own name, amounts to a registration of the domain name in dispute in the name of and by the Respondent, which registration or renewal in August 2003 was done in bad faith.
As a result of these actions, the activities of the Complainant were disrupted in that he no longer has access to the domain name and website that he had set up for himself.
Furthermore, there is additional evidence to the effect that the attitude and activity of the Respondent are highly questionable. This aspect is further corroborated by the Federal Express report which states that its attempt to deliver a hard copy of the Complaint to the Respondent in the Network Solutions, Inc. WHOIS database failed because it was an incorrect address, confirming the statement of the Complainant in paragraph 6 of his declaration.
It has been held previously that "inactivity or non-use of a domain name by a Respondent may amount to the domain name being used in bad faith’." See Sanrio Company, Ltd. and Sanrio, Inc. v. DLI , WIPO Case No. D2000-0159 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
All the above facts contribute to demonstrate that the post-August 2003 use by Respondent of the domain name in dispute is, if anything, in bad faith.
In view of the above, the Panel finds that the disputed domain name has been registered and used in bad faith pursuant to the Policy.
The Panel concludes that:
(a) the domain name <sexkorea.net> is confusingly similar to the Complainant’s SEXKOREA Trademark;
(b) the Respondent has no rights or legitimate interests in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sexkorea.net> be transferred to the Complainant.
J. Nelson Landry
Date: April 17, 2004