The Complainant is One Vision Direct Ltd of Dingwall, Ross shire, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is Linecom of Seoul, Republic of Korea.
The disputed domain name <metsuki.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2009. On August 28, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On September 1, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
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 September 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on September 29, 2009. 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.
The Complainant has registered METSUKI as a trademark in Great Britain and Northern Ireland for use with spectacles, eyeglasses, glasses, lenses, prescription lenses and related goods, effective November 8, 2007. The Complainant is an online discount retailer of designer glasses and sunglasses. The Complainant operates an online store at “www.metsuki.co.uk”. The disputed domain name was registered on September 3, 2006. Prior to the filing of the Complainant, the disputed domain name resolved to a website where it was being offered for sale. The asking price was £5,300.
The Complainant asserts that the disputed domain name <metsuki.com> is identical to its registered METSUKI trademark. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not commonly known by the domain name, has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services, and otherwise has made no legitimate noncommercial or fair use of the domain name. The Complainant contends that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name to the Complainant or one of its competitors as a price in excess of the Respondent's out-of-pocket costs related to the domain name, which according to the Complainant establishes bad faith under the Policy.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant's registered METSUKI mark. The relevant inquiry under the first element of the Policy is whether the mark and the domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. That clearly is the case here.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant's METSUKI mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. The record indisputably reflects the Respondent's registration of a domain name that is identical to the Complainant's mark, which the Respondent has offered to sell over the Internet at a price greatly in excess of its out-of-pocket costs related to the domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel notes that the Respondent registered the disputed domain name approximately one year before the Complainant obtained its registration for the METSUKI mark. Generally speaking, when a domain name is registered before the complainant's trademark rights are shown to be established (on either a registered or unregistered basis), the domain name registration usually is not considered in bad faith because the registrant presumably could not have contemplated the complainant's then non-existent rights. See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827. In certain situations, however, when the respondent is aware of the complainant or the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be inferred. See General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.
In this case, the Panel has noted evidence of the Complainant's use of METSUKI on its website to identify its goods and services at least a year before the Respondent's registration of the disputed domain name. Even a cursory online search over the Internet would have reflected such use. In light of such circumstances, and in the absence of any submission by the Respondent, the Panel infers that the Respondent was aware of the Complainant. As such, the Panel considers this case to fall with the exception to the general rule noted above. Further, while the registration of a domain name in order to sell it is not considered a per se violation of the Policy, the Respondent cannot demonstrate rights or legitimate interests in the domain name where the Respondent is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP, supra.
The Panel considers it a reasonable inference from the undisputed facts and circumstances as discussed under the proceeding heading that the Respondent had the Complainant or the Complainant's mark in mind when registering the disputed domain name. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, and in the absence of any explanation from the Respondent, the Panel can ascribe no motive for the Respondent's registration and use of the disputed domain name as reflected in the record except to profit from and exploit the Complainant's mark. See Match.com, LP, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <metsuki.com> be transferred to the Complainant.
William R. Towns
Date: October 9, 2009
1 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.