The Complainant is Association for Educational Communications and Technology (AECT), United States of America (“United States”), represented by The DuBoff Law Group, LLC, United States.
The Respondent is InterAd.com, Inc., Republic of Korea, self-represented.
The disputed domain name <techtrends.com> is registered with Gabia, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2019, 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.
On July 3, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On July 4, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and Korean of the Complaint, and the proceedings commenced on July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Center received an email communication from the Respondent on July 11, 2019. The Response was filed with the Center on July 31, 2019.
The Center appointed Moonchul Chang as the sole panelist in this matter on August 29, 2019. 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, Association for Educational Communications and Technology (AECT), located in the United States, registered the TECHTRENDS trademark on January 2, 2007 in the United States. The Respondent, InterAd.com, Inc., registered the disputed domain name <techtrends.com> on October 3, 2002.
The Respondent has used the disputed domain name in association with the website of technology trends magazine since 2018.
(1) The Complainant contends that the disputed domain name is identical or confusingly similar to the TECHTRENDS trademark. The Complainant registered the trademark in 2007 and has used the mark since 1985 for inter alia a magazine. The disputed domain name <techtrends.com> includes the TECHTRENDS trademark in its entirety. The Respondent’s website of online magazine has been in use since May 2018. The confusing similarity also takes place in common business channels and subject matter in the Respondent’s website.
(2) The Complainant contends that the Respondent has no rights in the disputed domain name. Although the Respondent registered it in 2002, its use of the disputed domain name <techtrends.com> has only begun in May 2018. The Respondent has not been active long enough to acquire its own distinctiveness.
(3) The Complainant further contends that the Respondent has used the disputed domain name in bad faith. Although the Complainant has emailed the letter against infringing its trademark, there was no reply from the Respondent. The Wayback Machine Internet Archive at “web.archive.org” shows several instances where the disputed domain name is up for sale asking price USD 45,000 (Annex 8). The Complainant also asserts that the disputed domain name went to a competitor who runs a magazine in a similar and identical class 16.
(1) The Respondent replies that he has registered the disputed domain name <techtrends.com> on October 3, 2002, five years earlier than the Complainant registered its TECHTRENDS trademark in 2007. On the other hand, the Complainant has registered its trademark only in the United States and never in the Republic of Korea. Since 2002 the Respondent has owned the disputed domain name in attempt to provide information of online technical trends. However, until recently the Complainant has never contacted the Respondent to discuss about infringing its trademark.
(2) The Respondent replies that there are many domain names including <techtrends.tech>, <techtrends.ca>, <techtrends.app>, <techtrends.co.zm>, <techtrends.io>, <techtrends.biz>, and <techtrends.ru>, which use the same name and cover the subject matter as the Complainant’s marks. If the Complainant claims his exclusive right of his trademark in the world, he should demand all of them to cease their online magazine services of technical trends.
(3) The Respondent also replies that there are many other famous news sites and technology companies such as Fox News, JP Morgan, NBC, LG, CNN, Microsoft, and CIO Journal which provide the same mark and name of technical trends information service as the Complainant’s trademark.
(4) Although the Respondent does not own the trademark, he has allegedly provided the online information service at the disputed domain name <techtrends.com>. It took quite a time to open the website of online technical trends information service due to slow growth of his small business. However, the Respondent could contact a famous United Kingdom-based author and started to provide the contents of technology information magazine service in 2018. The website of the disputed domain name <techtrends.com> is now operating noncommercial business fairly without any advertisements and external investments. The English author neither demands any monetary reward nor produce commercial contents.
(5) The Respondent replies that it has legitimate rights to use the disputed domain name. The reason why the Complainant’s letter of cease and desist in the Annex 7 could not reach the Respondent, might be a temporary failure of email service. The Complainant could have reached the Respondent by the email address and phone number on the Whois Information or by webmail contact on the website of the disputed domain name “www.techtrends.com/contact”. The failure of contacting the Respondent by the Complainant does not prove the bad faith use of the disputed domain name. In addition the Annex 8 just shows the Respondent’s customer companies’ websites such as “www.buykorea.org” and “www.korea.net”, which are not the Complainant’s competitors in the similar business. Regarding the offer for sale of the disputed domain name <techtrends.com> in Annexes 8.1 to 8.3, the two screenshots show that the administrator of the disputed domain name is not “InterAd.com, Inc.” but an individual using a personal email “[…]@dreamwiz.com”. Since the Respondent has never considered the sale of the disputed domain name, it closed the parking page and corrected the email address information on the Whois data in 2012. Now, the Respondent updates the website of the disputed domain name <techtrends.com> with one post a day with the help of the English author in the 109 subjects of technology trends.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the Parties. In this present case the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean.
However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons. Firstly, the Respondent’s online business associated with the disputed domain name conducts its commerce and activity primarily in the United Kingdom. Secondly, its website’s primary default language is English and it does not have to be translated to be viewed in English. The technology and clients sought after by the media magazine are English. Finally, to proceed otherwise would be to apply a strict application of paragraph 11 that may result in delay and considerable and unnecessary expenses of translating documents. On the other hand the Respondent requests to conduct the administrative proceeding in the Korean language since he is a Korean national and the language of the registration agreement is Korean.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in this administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Administrative Panel Decision in English.
Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name <techtrends.com> incorporates the term “techtrends” which is entirely identical to the Complainant’s TECHTRENDS trademark. The Complainant has submitted evidence to show that it owns the TECHTRENDS trademark, with a United States registration dating from 2007 and asserts that the mark has been used since 1985. The Panel observes that the disputed domain name was registered in October 2002, predating the Complainant’s trademark; however, for purposes of the first element under paragraph 4(a) of the Policy, the “UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights[.] […] Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.” (Section 1.1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In addition, numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to find the domain name “identical or confusingly similar” within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant.
It is unnecessary to consider this element in light of the Panel’s conclusion below under the third element.
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith.
In the present case, the disputed domain name was registered on October 3, 2002 before the Complainant’s TECHTRENDS trademark registration that took place on January 2, 2007.
Previous UDRP panels’ consensual view is that, absent exceptional circumstances, when a domain name is registered by the Respondent before the Complainant’s trademark right, the domain name can generally not have been registered in bad faith, as the Respondent could obviously not have been aware of the non-existing Complainant’s trademark as of the time the domain name got registered (see section 3.8.1 of WIPO Overview 3.0).
The Complainant presents no explanation as to why, at that time, the Respondent knew or should have known that the Complainant was using the TECHTRENDS name or intending to register any potential mark and how such registration of the disputed domain name could have occurred in bad faith. While the Complainant asserts that the name of TECHTRENDS was in use since 1985, it provides no evidence as to how widely the name or the mark was internationally known at that time. In those circumstances, whatever its motive, the Respondent could not have set out to target the then non-existent rights of the Complainant. It is therefore unnecessary to consider in detail the various arguments raised by the Complainant, for example relating to allegedly false contact details, likelihood of confusion etc. as these can only relate to use, rather than registration, in bad faith. In any case, in the Panel’s view, none of the evidence put forward by the Complainant constitutes use of the disputed domain name in bad faith.
The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: September 23, 2019