WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefire Fire & Gas Detectors Ltd. v. Park Sanghoon
Case No. D2015-1522
1. The Parties
The Complainant is Telefire Fire & Gas Detectors Ltd. of Petach Tikva, Israel ("Complainant"), represented by Soroker - Agmon, Advocates & Patent Attorneys, Israel.
The Respondent is Park Sanghoon of Guri-si, Gyeonggi-do, Republic of Korea ("Respondent"), represented by Easy Property Management Group ("Easy Property"), Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <telefire.com> is registered with Megazone Corp., dba HOSTING.KR (the "Registrar").
3. Procedural History
The Complaint was filed (in English) with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. The Response (in Korean) was filed with the Center on September 23, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on October 9, 2015. 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.
On October 14, 2015, the Complainant filed a request to submit Supplemental Information and Supplemental Submission (in English). The Respondent submitted a Korean language Supplemental Response to the Supplemental Submission of the Complaint ("Supplemental Response"). The Panel issued a Procedural Order on October 27, 2015, requesting that the Response and the Respondent's Supplemental Response be translated into English. This was done, and the English translations of the Response and the Supplemental Response were submitted on November 6, 2015.1
4. Factual Background
The Complainant, founded in Israel in 1979, specializes in the development, manufacture and sale of fire detectors and extinguishing systems. The Complainant is the owner of the trademark TELEFIRE for use in connection with these products and services, and holds numerous trademark registrations for TELEFIRE, including an Israeli trademark registration applied for on September 26, 2010, a Community trademark (CTM) with a registration date of June 11, 2013, a Chinese trademark registration issued on July 7, 2014, a United States trademark registration issued on August 19, 2014, a Korean trademark registration granted on December 17, 2014, and a Singapore trademark registration issued on May 21, 2015. The Complainant asserts use of the TELEFIRE trademark in the Republic of Korea as early as 2011.
The disputed domain name was registered in 2008 and acquired by the Respondent from the prior registrant, Easy Property, on January 2, 2015. The disputed domain name currently resolves to a website that by all appearances is operated by Easy Property, displaying a handful of commercial and residential properties in Seoul, Republic of Korea, that appear to be listed for sale.
The disputed domain name was the subject of a prior UDRP proceeding, Telefire Fire & Gas Detectors Ltd. v. Easy Property Management Group / Park Sanghoon, WIPO Case No. D2013-1003 (hereinafter "Telefire I"), brought by the Complainant. The complaint in Telefire I was denied. The Respondent submits that he was the "underlying" or "true" domain name owner in Telefire I, and asserts on that basis that the instant proceeding is a refiled case and should be dismissed. The Complainant maintains this is not a refiled case because the Respondent was not a party in Telefire I, and that in any event the Complaint should be entertained in light of new evidence not reasonably available prior to the decision in Telefire I.
5. Preliminary Issues
A. Refiled Complaint
A "refiled complaint" for purposes of the Policy is a complaint concerning a domain name that was the subject of a previous UDRP complaint also involving the same complainant and respondent in a subsequently filed complaint. See The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757 (and cases cited therein). See also AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527. There is general agreement among UDRP panelists that a refiled complaint may be allowed under the Policy only in exceptional circumstances. See, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. Such decisions necessarily must be resolved on a case-by-case basis, employing logic and common sense with a view to general principles of law relating to re-litigation of cases.
In considering the circumstances in which refiled complaints should be entertained under the Policy, prior UDRP panel decisions reflect a tendency to draw a distinction between (i) refiled complaints concerning acts that formed the basis of the original complaint, and (ii) refiled complaints that concern acts occurring subsequent to the decision on the original complaint. In either situation, there appears to be consensus regarding application of the following general principles:
(i) the burden of establishing that the refiled complaint should be entertained under the Policy rests on the refiling complainant;
(ii) the refiling complainant's burden is high; and
(iii) the grounds which allegedly justify entertaining the refiled complaint should be clearly identified by the refiling complainant.
See Creo Products Inc. v. Website In Development, supra. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.4 (summarizing consensus view on refiled complaints).
As noted above, the disputed domain name was the subject of a prior UDRP proceeding, Telefire I,brought by the Complainant. At the time of filing of the complaint in Telefire I, the WhoIs registrant was Easy Property and the registrar was GoDaddy. The panel decision in Telefire I reflects that less than four (4) minutes after the filing of the complaint, the relevant WhoIs record was changed to record the registrar as Megazone Corp., dba HOSTING.KR, and the registrant as Park Sanghoon (the Respondent herein). Concerned with the possibility of cyberflight, the Center requested restoration of the original registrant details. After a month or so of discussions between the Center and the concerned registrars, the disputed domain name was transferred back to GoDaddy and the original registrant details restored.
The distinguished panelist in Telefire I found the Complainant's substantive allegations in relation to bad faith use of the disputed domain name to be prima facie persuasive, identifying a number of factors that pointed to bad faith use. Such factors included:
(1) The disputed domain name had been held without substantive use for a number of years;
(2) The Respondent's offer to sell the disputed domain name to the Complainant for USD 70,000, with the most likely explanation for the magnitude of the sum being the association of the term "Telefire" with the Complainant's mark;
(3) The absence of any evidence respecting the Respondent's claim to have used "Telefire" with a restaurant in Korea for five (5) years;
(4) The absence of any explanation why Park Sanghoon had not registered the disputed domain name in his own name if he was the real underlying registrant;
(5) The appearance of cyberflight as soon as the Complaint was filed, which the panel found "particularly compelling". The panel observed: "To engage in cyberflight is a classic indicator that a domain name had been held in bad faith. There is no reason why any person legitimately holding a domain name might want to engage in such behaviour."
In the final analysis, however, the Telefire I panel felt constrained to deny the Complaint, concluding that the Complainant had not established bad faith registration in conjunction with such bad faith use.
As noted earlier, in Telefire I Easy Property maintained that while it "managed" the disputed domain name on Park Sanghoon's behalf, the latter was the "real and substantial" respondent. On this basis the Respondent now submits that this case meets the criteria for a "refiled complaint" and consequently should be dismissed with prejudice. The Complainant insists that the present case involves a different domain name owner, and that while Easy Property claimed it was the "trustee" for Park Sanghoon, there is no evidence that Easy Property and Park Sanghoon are the same entity.
The Complainant further argues that even assuming arguendo the Panel was to conclude that Easy Property and Park Sanghoon are the same entity, the instant case should be heard based on new facts arising after the decision in Telefire I. Such new facts as are identified by the Complainant consist of the following: (1) the Respondent's use of the disputed domain name with a "sham" website; and (2) new evidence not reasonably available prior to the decision in Telefire I showing that the disputed domain name was never used with a restaurant as alleged by the Respondent.
Insofar as the record before this Panel reflects, Easy Property and Park Sanghoon are separate legal entities – one a juridical entity and the other a natural person. Further, Easy Property was the WhoIs registrant of the disputed domain name for purposes of Telefire I, while Park Sanghoon is the WhoIs registrant in the instant proceeding. So it would be correct to say in this sense that these UDRP proceedings involve different respondents. Nonetheless, it is also apparent that there is a commonality of interests between the two, and it would appear from the record that Easy Property has acted on behalf of Park Sanghoon in both of these UDRP proceedings.2
While this is a close decision, the Panel would be inclined to find that this case involves a refiled complaint, given the nature of the relationship between the Easy Property and Park Sanghoon as reflected in the record. See TÜV NORD AG v. TUV International, WIPO Case No. D2015-0622. In any event, however, the Panel concludes that the Complainant has presented new information not available when Telefire I was decided of sufficient relevance to justify accepting the Complaint.
B. The Parties' Supplemental Submissions
Neither the Policy nor the Rules provide any right of reply. Absent exceptional circumstances a supplemental filing will rarely be considered. It is within the discretion of the Panel to accept supplemental submissions to address new legal developments, or to rebut unexpected factual assertions, but in general supplemental submissions should be allowed sparingly. See, e.g., Telefire Fire & Gas Detectors Ltd. v. Easy Property Management Group / Park Sanghoon, supra.
In this instance the Complainant asserts that its supplemental filing is necessary to correct the Respondent's false statements of fact and false connotations. The Complainant's supplemental submission is 14 pages in length – only a few pages less than the Complaint, and is accompanied by 16 new annexes in addition to the 18 annexes submitted with the Complaint.
The Complainant is not entitled to submit a rebuttal, and much of the Complainant's supplemental submission consist of rephrasing or reiterations of arguments presented in the Complaint. Nonetheless, there are several factual assertions in the Response that the Complainant likely would not reasonably have anticipated. It likely was not within the contemplation of the Complainant that the Respondent would claim that all of the WhoIs registrants for the disputed domain name since 2008 had acted as agents for the Respondent. That portion of the Complainant's supplemental filing and corresponding annexes addressing this will be accepted by the Panel. Additionally, the Complainant should be afforded an opportunity to reply to the Respondent's assertion of reverse domain name hijacking.
The Respondent's supplemental submission also contains arguments that are little more than rephrasing or reiterations of the Response. However, the Panel will accept that portion of the Respondent's supplemental submission that concerns the relationship between the Respondent and his purported agents, Visel Ce and Park Young.
6. Parties' Contentions
A. Complainant
The Complainant submits it has used the TELEFIRE mark in commerce since its establishment in 1979, and offers its products under the TELEFIRE brand worldwide, operating in the Middle East, Europe, the United States of America ("United States"), and Asia. The Complainant submits evidence that it owns multiple trademark registrations for TELEFIRE in Israel, the European Union, Republic of Korea, United States, and other jurisdictions. The Complainant also claims a growing presence online that reflects its TELEFIRE mark. According to the Complainant, it has been selling its products and systems for the past four (4) years to a Korean company–Ehwa Technologies Information–which markets and sells Telefire products in the Korean market.
The Complainant submits that since its establishment in 1979, the TELEFIRE trademark has acquired both national and international reputation and goodwill for its range of fire detection and extinguishing solutions and services and has become well-known worldwide for its innovation and ingenuity in the fire detection and extinguishing field. The Complainant also claims that around the year 2000, the Complainant started its activities in the Far East through establishing operations in Singapore.
The Complainant submits that the disputed domain name <telefire.com> is identical or confusingly similar to the Complainant's TELEFIRE mark. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant had established trademark rights in TELEFIRE in the Republic of Korea prior to the transfer of the disputed domain name to the Respondent. The Complainant further avers that the Respondent has not been authorized to use the Complainant's TELEFIRE mark. According to the Complainant, the Respondent is not and has not been commonly known by the disputed domain name. The Complainant further submits that the Respondent clearly was aware of the Complainant's rights in the TELEFIRE mark when it acquired the disputed domain name in January 2015, particularly in light of the prior UDRP filing respecting the disputed domain name.
The Complainant concedes that in Telefire I the Respondent claimed that he used Telefire with a restaurant business for five (5) years at a specific address, which had gained recognition. The Complainant maintains, however, that such claims were not possible to foresee, and thus difficult to disprove at the time; and the facts could not easily be discovered or made available prior to the decision in Telefire I. The Complainant retained a Korean law firm, which has researched the matter and come to the clear conclusion that the restaurant does not and did not exist at the location identified by the Respondent. An affidavit from the Korean law firm has been submitted.
The Complainant maintains the Respondent has registered and is using the disputed domain name in bad faith. Specifically, the Complainant submits that the Respondent has created a sham website to which the disputed domain name resolves. The website purportedly is a real estate sales site operated by Easy Property. However, according to the Complainant, the Korean law firm has determined neither Easy Property nor the Respondent conduct a real estate business in the Republic of Korea, as set out in the law firm's affidavit. The Complainant submits that the website is inactive, and consists merely of pictures copied from a third party real-estate agency's website.
The Complainant contends that the sham website was linked to the disputed domain name following the Telefire I decision solely to prevent the Complainant from reflecting the TELEFIRE mark on the Internet.
The Complainant further asserts that the Respondent's bad faith is evidenced by his deliberate failure to provide complete and accurate contact information when registering the disputed domain name. The Complainant relates that a cease and desist letter sent on May 7, 2015 to the Respondent's last reported address was returned undelivered. The Complainant also reports that the cease and desist letter was transmitted to the email address listed for the Respondent in the WhoIs database, but that no reply was received. The Complainant maintains this demonstrates a pattern of bad faith conduct by the Respondent.
According to the Complainant, the Respondent is the owner of 64 current registered domain names and 83 previously registered domain names. Of the 64 domain names, 22 domain names are not in use and 6 resolve to placeholder sites. The Complainant reports its Korean law firm has determined that Easy Property is managed by the Respondent, that Easy Property currently owns 814 domain names and in the past has owned 1,110 domain names, and that Easy Property is a domain name trader. The Complainant acknowledges that the business of buying and selling domain names may be legitimate, but submits it cannot be legitimate when it is used to prevent the Complainant from reflecting its trademark on the Internet.
Complainant's Supplemental Submission
In response to the Respondent's claim that he has been the true registrant of the disputed domain name since June 2008, the Complainant asserts that Visel Ce and Young Park are fictitious. According to the Complainant, the physical address provided for Visel Ce in the WhoIs database in 2008 was the address of a cemetery. The Complainant also notes that Visel Ce and Young Park shared the same phone number and address in Commack, New York. The Complainant presents further evidence that Visel Ce and Young Park each have registered hundreds of domain names, and that Visel Ce, Young Park, and Park Sanghoon (also Park Sanghun and Park Sangwoon) have registered domain names using common email addresses and telephone numbers. According to the Complainant, a number of these domain names are comprised in whole or in part of trademarks owned by third-parties.
The Complainant also cites the UDRP panel decision in Chang's Enterprise v. Young Park, NAF Claim No. 1481445. The complainant's mark was EASY USA. There was a panel determination that the domain name had been registered and used in bad faith. The Complainant has submitted a search of the WhoIs history for <easyusa.com> showing that the domain name had been registered not only to Young Park, but also to Visel Ce and to Park Sanghun.
The Complainant dismisses the Respondent's claim of reverse domain name hijacking as "simply outrageous and ridiculous". The Complainant submits it is the Respondent who has engaged in cybersquatting of the most sophisticated manner.
B. Respondent
The Respondent does not directly address the Complainant's contention that the disputed domain name is identical or confusingly similar to the TELEFIRE mark, but asserts that the Complainant did not apply for its trademark in the Republic of Korea until after the decision in Telefire I. The Respondent contends this is part of a carefully conceived plan of reverse domain name hijacking. The Respondent asserts that the Complainant is not selling its products in the Republic of Korea. According to the Respondent, Ehwa Technologies Information does not sell the Complainant's products and has never heard of the Complainant. The Respondent submits that it searched Naver.com, which the Respondent describes as the most popular search engine in the Republic of Korea, and no results were obtained for "Telefire Fire and Gas Detector Ltd". The Respondent further asserts that the Complainant has not secured authorization from the Korean government to sell its products.
The Respondent maintains that he has been the only registrant of the disputed domain name since June 19, 2008, and that Visel Ce, Young Park, and Easy Property have each managed the disputed domain name for the Respondent. According to the Respondent, such management is needed to ensure that the disputed domain name is not inadvertently dropped. The Respondent submits that his offer to sell the disputed domain name to the Complainant for USD 70,000 "was cleared up in the Response of WIPO Case No. D2013-1003".
The Respondent maintains that the disputed domain name originally resolved to a website advertising the Respondent's Telefire Bulpan Gui, but later was redirected to Easy Property's website. The Respondent alleges that the Complainant's attempts at reverse domain name hijacking have driven Easy Property into serious disgrace and humiliation, and that the Complainant's accusations against Easy Property are false. The Respondent insists his relationship with Easy Property is merely that of a customer and that the Respondent has nothing to do with Easy Property's management or operations. According to the Respondent, Easy Property's main business is real estate, Easy Property is a member of Real Estate 114, and is registered with the Korean National Tax office. The Respondent denies that Easy Property's website is a sham. The Respondent explains there is no contact information in the WhoIs data for the disputed domain name because the Respondent is using the registrar's privacy protection service.
The Respondent submits that he acquired legitimate rights in the disputed domain name long before the Complainant's trademark was registered in either the Republic of Korea or the United States, since the Respondent has been using the term "Telefire" as his business name since 2004, as was explained in the Response in Telefire I. The Respondent explains that it is not easy for him to develop facts about his restaurant since more than 10 years has passed since 2004, and that the landlord is in the best position to confirm that the Respondent operated a restaurant at that location for five years. According to the Respondent, since April 2014 he has circulated hundreds of "Telefire" fliers in various locations and has pending application to register "Telefire" as a trademark for use with his restaurant business.
The Respondent denies that he registered and is using the disputed domain name in bad faith. The Respondent avers he has never infringed upon the Complainant's rights since registering the disputed domain name in June 2008, has never used the disputed domain name with a website to create any confusion among Internet users as to the Complainant, and has never attempted to profit by selling the disputed domain name to the Complainant. The Respondent submits it was the Complainant who approached him regarding the possible purchase of the disputed domain name. According to the Respondent, the Complainant's mark is not famous, and the Respondent's use of the disputed domain name does not cause confusion and is not in bad faith.
The Respondent insists that the Complainant has distorted the facts in an attempt to portray the Respondent and Easy Property as cybersquatters, despite losing in Telefire I, and that the Complainant with full knowledge of the true facts and circumstances is committing reverse domain name hijacking.
Respondent's Supplemental Submission
In relation to <easyusa.com>, the Respondent contends that the Complainant is skewing the facts for the purpose of reverse domain name hijacking. Regarding the registration of the <easyusa.com> domain name at various times by Visel Ce, Young Park, and Park Sanghun, the Respondent submits that the names Park Sanghoon or Park Sanghun are among the most common names in the Republic of Korea. The Respondent further observes that Visel Ce and Young Park are not Korean, but they have lived at the Respondent's address before, and the Respondent has from time to time allowed them to use the Respondent's telephone. In view of this, the Respondent remarks that it would not be strange if the Respondent's address and phone number is seen as theirs in the WhoIs records.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See 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". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, 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 other rules or 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 with respect to 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 are the sole remedies 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 disputed 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 disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed 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.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant's TELEFIRE mark. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Although generic Top-Level Domains (gTLDs) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The disputed domain name is identical to the Complainant's mark. The Respondent registered the disputed domain name without the Complainant's authorization or consent. There is no indication in the record that the Respondent has been commonly known by the disputed domain name. The Respondent has allowed the disputed domain name to be used by Easy Property with a website that purportedly involves the sale of real estate, but which with the exception of a few pictures of commercial and residential properties appears largely inactive.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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 contends that he established rights or legitimate interests in the disputed domain name in connection with a restaurant he ran for 5 years beginning in 2004 under the name "Telefire". Yet, as the distinguished panelist in Telefire I noted, the Respondent failed to produce any evidence that he had operated a restaurant named "Telefire" beginning in 2004. The Respondent has yet to produce any credible evidence to support this claim. Despite ostensibly acquiring <telefire.com> because of the restaurant the Respondent has provided no evidence that the disputed domain name has ever been used with a website promoting the restaurant.
In light of the foregoing, the Panel concluded that the Respondent has provided no evidence that prior to notice of this dispute he had used or undertaken demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence in the record that the Respondent has ever been commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Further, new evidence has been adduced respecting the connection between the Respondent, Easy Property, Visel Ce, and Young Park, and their collaboration in registering large numbers of domain names, including domain names consisting of third-party trademarks. This new evidence, not reasonably available at the time of the decision in Telefire I, significantly undermines the credibility of the Respondent when claiming to have registered the disputed domain name solely for use with a restaurant that this Panel has significant doubt ever existed. Having regard for the totality of circumstances in the record, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
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 circumstances where the registrant seeks to profit from or in some manner exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel finds that the new facts identified by the Complainant, including affidavits attesting to these facts, evidence that the disputed domain name was never used with a restaurant as alleged by the Respondent and that the disputed domain name is currently being used for a sham and/or largely inactive website. In the Panel's view, this new evidence sheds new light on the Respondent's intent when registering the disputed domain name. Based on the foregoing, and, having carefully considered the evidence on record, including the Complainant's evidence of use of its TELEFIRE trademark since the year 2000, the Panel finds it more likely than not that the aim of the registration by the Respondent was to target the Complainant.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent's bad faith use of the disputed domain name is clearly established, first in Telefire I and again in this proceeding, and the Respondent's bad faith intent when registering the disputed domain name is equally clear in light of the attendant circumstances set out above.
8. Reverse Domain Name Hijacking
In view of the Panel's findings and determination as set forth above, the Respondent's request for a finding of reverse domain name hijacking is denied.
9. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <telefire.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 14, 2015
1 The language of the Registration Agreement is Korean, but the Complainant requested that the language of the proceeding be in English. The Panel in its Procedural Order noted that the Respondent claimed to be the respondent in a prior UDRP proceeding concerning the disputed domain name and involving the same complainant. The language in the prior administrative proceeding was English, and all submissions of the parties, which included supplemental filings, were in English. Having regard to such circumstances, the Panel concluded that the instant proceeding should also be conducted in English, and requested English translations of the Respondent's submissions.
2 It would appear the Telefire I panel held a similar view, observing that if Easy Property was the formal respondent and held the domain name on behalf of Park Sanghoon, the latter's knowledge and intent could be imputed to Easy Property.
3 See WIPO Overview 2.0, paragraph 1.2.