WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefire Fire & Gas Detectors Ltd. v. Easy Property Management Group / Park Sanghoon
Case No. D2013-1003
1. The Parties
1.1 The Complainant is Telefire Fire & Gas Detectors Ltd. of Petach Tikva, Israel, represented by Dardik Gross & Co. Law Firm, Israel.
1.2 The Respondent is Easy Property Management Group of Ansung, Gyeonggi, Republic of Korea / Park Sanghoon of Guri-si, Gyeonggi-do, Republic of Korea.
2. The Domain Name and Registrar
2.1 The disputed domain name <telefire.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (“GoDaddy”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2013 at 12:29 pm Geneva time. At that time the publicly available WhoIs record for the Domain Name recorded the registrant as Easy Property Management Group and the registrar as GoDaddy.
3.2 At 5:33 pm Geneva time that same day the Center transmitted by email to GoDaddy a request for registrar verification in connection with the Domain Name. Four minutes later (i.e. at 5:37 pm Geneva time), the Domain Name was transferred into the name of a different registrar, “Megazone Corp. Dba Hosting.Kr” At 6:49 pm GoDaddy sent an email to the Center asserting that the Domain Name has been “transferred away and is no longer registered with Go Daddy”.
3.3 On June 7, 2013 the Complainant received an email from “Easy Property Management”. It asserted that it had “managed” the Domain Name on behalf of the “original registrant” but that “the contract had been terminated because of the dispute [and the Domain Name had] been returned to the original owner and the contact information on the whois [had] been updated”. By that date, the publicly available WhoIs record for the Domain Name had been changed to record the registrar as “Megazone Corp. Dba Hosting.Kr” (“Megazone Corp”), and identifying the registrant as “Park Sanghoon”.
3.4 On June 10, 2013 the Center sent a verification request to Megazone Corp but also raised with Go Daddy the possibility that there had in this case been cyberflight contrary to paragraph 8(a) of the Policy. Once it was established that the transfer had taken place after the Complaint was filed with the Center (and only a few minutes after a verification request had been sent to GoDaddy), the Center requested that there be “restoration of the original registrant details”.
3.5 On June 13, 2013 Megazone Corp. responded to the Center’s verification request in which it confirmed that the Domain Name was registered in the name of “Park Sanghoon”.
3.6 Later that day the Center received an email from GoDaddy in which it confirmed that it would attempt to have the Domain Name transferred back to GoDaddy, but stating that it could give no assurance that those attempts would be successful.
3.7 On June 18, 2013, the Center asked for an update from GoDaddy. It confirmed that it had sent an email on June 13, 2013 to Megazone Corp., but that it had not yet received a reply.
3.8 On June 20, 2013, Megazone Corp. sent an email to GoDaddy and the Center which read as follows:
“This is [name of individual] in Megazone Corp. for <telefire.com> registrar.
As we know, the domain name transferred from Godaddy.com to us. And the domain name is applying the dispute.
I’m knowing the registrar-transfer CAN’T be returned to Godaddy.com. Please confirm shall I do.
Thanks! Best regards!!”
3.9 Further email communications ensued between Megazone Corp., GoDaddy and the Center as to the procedure to be followed as to the transfer of the Domain Name back into the control of GoDaddy. By July 15, 2013 that transfer had been effected and this was confirmed by GoDaddy two days later. On July 18, 2013 the Center sent its standard verification request to GoDaddy, and GoDaddy responded the same day confirming that “Easy Property Management Group” was listed as the registrant and provided contact details. In its response GoDaddy also confirmed that English was the language of the relevant registration agreement.
3.10 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”).
3.11 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 July 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for a Response was August 8, 2013.
3.12 On July 21, 2013, “Easy Property Management Team” sent an email to the Center. It asserted that it “managed” the Domain Name for the “original registrant” and asked for guidance as to whether it or the “original registrant” should respond to the Center. Although the email was in English it stated that it and the “original registrant” could only use Korean and asked to be able to write a Response in Korean.
3.13 The Center responded to that email on July 24, 2013. It stated that the formal Respondent in this case was “Easy Property Management Group” and that if a Response was filed by another person it would be a matter for the appointed Panel to determine the relevance of that filing. It also informed “Easy Property Management Team”, that GoDaddy had already confirmed that the language of the relevant registration agreement was English and that, therefore, this was the language of the proceedings.
3.14 On August 3, 2013 a Response was filed with the Center. It was sent as an attachment to an email signed “Park Sanghoon”.
3.15 On August 8, 2013, the Complainant sent an email to the Center which sought to respond to the assertions in the Response. On August 10 and 12, 2013 the Center was sent an email from “Easy Group Management Team” seeking a response to the Complainant’s email.
3.16 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 13, 2013. 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.
3.17 On August 14, 2013 the Respondent sent a further email to the Complainant enclosing a Supplemental Filling which responded to the Complainant’s email of August 8, 2013.
4. Factual Background
4.1 The Complainant is a company organized and registered under the laws of Isreal. It was founded in 1979. It specializes in the development, manufacture and sale of fire alarms and automatic extinguishing systems. Its products have been installed in various buildings around the world, including Singapore and the Philippines.
4.2 The Complainant is the owner of various trade marks and applications for trade marks that take the following form:
(i) Israeli trade mark no. 232876 in class 9 and applied for on September 16, 2010;
(ii) Community trade mark no 011471562 applied for on January 8, 2013 and which proceeded to registration on June 7, 2013 (i.e. 2 days after the Complaint was filed in these proceedings); and
(iii) Chinese trade mark application no. 12053285 in class 9 dated January 16, 2013.
4.3 The Complainant has also been the owner since December 1998 of the Domain Name <telefire.co.il>, which it has used for a website from which to promote market and sell its products.
4.4 The Domain Name was first created on May 7, 2004. It is currently registered in the name of Easy Property Management Group, although there is a question as to whether this is the person or entity that actually controls the Domain Name.
4.5 Until recently, only a domain name parking page was being displayed from the Domain Name. On May 2, 2013 the Complainant sought to contact the owner of the Domain Name through Go Daddy’s “Domain Buy” service. At some point thereafter the Domain Name may have been briefly used to display a “free Starter Web Page” advertising “Ecoproduct Co., of Mayfair Gardens, Commack NY, USA”.
4.6 On May 15, 2013 the Complainant received an email from GoDaddy’s “Domain Buy” service which stated as follows:
“We have successfully contacted the current domain registrant for domain TELEFIRE.COM. The domain registrant is giving serious consideration to selling TELEFIRE.COM but has not yet committed to entering negotiations. Once the domain registrant expresses an interest in reviewing offers, we will open negotiations with the guidelines you have set and contact you with updates and/or counter-offers that may exceed your maximum bid amount”
4.7 A further email from GoDaddy’s “Domain Buy” service later that same day stated:
“The current registrant of the domain telefire.com has indicated that they may be willing to sell the domain, however, they declined your maximum offer and are asking for $70,000.”
5. Parties’ Contentions
5.1 The Complainant first addresses the language of proceedings asserting that to the best of the Complainant’s knowledge the language of the relevant registration agreement is English. It then makes various additional submissions as to why these proceedings should proceed in English, which it is not necessary to set out in this decision.
5.2 The Complainant next describes its business and marks. Although it would appear to be a not insubstantial business with activities in various countries around the world, how big or well-known the Complainant is, is not described. It contends that the Domain Name is identical to its trade marks and the <telefire.co.il> domain name.
5.3 It further contends that the Respondent has no rights or legitimate interests in the Domain Name asserting that it is instead a business that specialises in the registration and ownership of domain names. In that respect it relies on the fact that the email contact address provided for by the Domain Name is “easydomaintools@[...].com”. It also provides a Domain Tools service WhoIs print-out that suggests that this email address is associated with 1,440 domain names.
5.4 It also refers to its discussions with the registrant through Go Daddy’s “Domain Buy” service in which the Respondent offered to sell the Domain Name. This is said to reveal evidence that the Respondent is not seeking to make a legitimate, noncommercial or fair use of the Domain Name. It also makes the claim that during those discussions the web page displayed from the Domain Name changed and advertised the business of “Ecoproduct Co in Commack New York”. However, the Complaint does not annex any material to evidence this use of the Domain Name.
5.5 So far as bad faith is concerned, the Complainant contends that the business model of the Respondent is to register domain names identical or very similar to active business for possible future sale to interested or offended parties for valuable consideration. It also relies on the fact that when registering a domain name, the registrant warrants that it will not infringe upon or otherwise violate the rights of a third party.
5.6 It further contends that the Respondent has set out to deliberately mislead Internet users and to direct Internet traffic from the Complainant’s website to it. In support of that contention it refers to and annexes a letter from an Italian customer and an email from an Israeli customer that complained about the fact that on entering the URL “www.telefire.com” they came across a blank page or an advertisement page unrelated to the Complainant.
5.7 The Response notes that the Complainant’s marks are recent and that the initial registration of the Domain Name predates by several years those trade marks and that those marks do not exist in the United States of America or the Republic of Korea. The significance of the fact that the Complainant does not have registered trade marks in the United States is not coherently explained, but so far as the Republic of Korea is concerned this is said to be the territory in which the “the Respondent lives and operates its business”.
5.8 The Response also takes issues with any contention on the part of the Complainant that it has a worldwide business. Again there is a rather odd reference to a lack of business in the United States and an express claim that the Complainant has not engaged in business activity in the Republic of Korea.
5.9 The Response asserts that “Easy Property Company” was founded in 1995 by Choi Byunk Kuk and provides both real estate and Internet services. In this respect, it provides what appears to be a “Certificate for Business Registration” in English and Korean which appears to be consistent with those claims.
5.10 “Easy Property Company” is said to “manage a lot of domain names from companies and individuals” in various cities in the Republic of Korea. It claims that “Park Sanghoon” is the “real and substantial” respondent in these proceedings and that it “represents Park Sanghoon” in these proceedings. In this respect it annexes a document in Korean dated February 20, 2013 and what appears to be an English translation of this document.
5.11 On its face the document appears to be some form of trust document in which “Easy Property Management Group” agrees to hold the Domain Name as “Trustee” on behalf of the “Trustor”. In clause 1 the purpose of the agreement is said to be:
“in order to prevent the Trustor’s ownership from being terminated from dropping after that is expired”.
However, clause 5 states:
“the Trustee will run parking pages discretionally when it is idle and when it doesn’t mention its home page separately”.
Clause 7 also states that:
“The Trustee will notify immediately the Trustor of that when any disputes or lawsuits for the domain occur, and transfer rapidly that to the Trustor reversely buy one of the methods listed in the above 3”.
This appears to be a reference to clause 3 of the document which talks about transfer by one of three methods, i.e. “push between accounts, account ID and password, registrar transfer”.
5.12 The Response does not appear to deny that the Domain Name was offered for sale to the Complainant for USD 70,000. However, it claims that at that time Park Sanghoon was preparing for a restaurant business and hoped to make its business more luxury and this is what prompted him to ask for this sum for the Domain Name. So far as that alleged restaurant business is concerned, the Response annexes photographs of the inside and outside of the restaurant and a menu. One of those photographs appears to show the term “Telefire” being used as a name for the restaurant and this term also appears prominently on the menus. The Response also annexes what appears to be some form of lease agreement in Korean with an English translation, which appears to bear the date March 29, 2013. In the English translation the “Business type and name” is described as “Food business, Telefire” and contains the statement “’T’ will occupy the rent on 05/15/2013”.
5.13 So far as the choice of name is concerned it is perhaps easiest to simply record that the Response asserts:
“The Respondent is using the term ‘Telefire’ as its restaurant’s name. While the Complainant regards that as dangerous and destructive fire, the Respondent does as fantastic and productive fire. There is a Korean dish called Bulpan Gui. It is to roast meat such as pork or beef on a metal plate, and when it is medium-cooked, high degree alcohol is added on the plate, just then, delicious flames rise up from the plate as seen in Annex 8. When seeing the same scene first time at a restaurant in Seoul in 2000, the Respondent named it ‘Telefire’ and thought it is likely more suitable to the situation than the Korean name, Bulpan Gui. After that, in 2004, the Respondent ran a restaurant called ‘Telefire’ for five years, located at Dachundong 147, Ansung, Korea. At the time, Telefire become famous in the area and recognized as something to stimulate their appetite.”
5.14 No evidence is offered of a restaurant operating from that address under the “Telefire” name or of the alleged fame of that restaurant.
5.15 The Response also takes issues with the Complainant’s claim that its customers were confused by the pages operating from the Domain Name. It claims that no one would be confused by “Go Daddy’s promotion page” operating from that page. The Response also appears to take issue with the claim that at one point a web page operating from the Domain Name advertised eco-products, but the claims here are somewhat difficult to follow and understand.
C. Complaint’s Supplemental Submission
5.16 As has already been explained in section 3 of this decision, on August 8, 2013, the Complainant sent an email to the Center which sought to respond to the assertions in the Response.
5.17 In that email the Complainant claimed that it had asked a business associate in the Republic of Korea to go to the address said to be the location of the “Telefire business” referred to in the Response and the lease agreement annexed to the Response. It claims that this associate was unable to locate any “Telefire” restaurant operating from that address. In this respect it attaches photographs said to be of the relevant address and a declaration signed by its business associate confirming that he “couldn’t see or find any restaurant called Telefire”.
D. Respondent’s Supplemental Submission
5.18 In its Supplemental submission the Respondent asked the Panel to reject the evidence provided by the Complainant in its email dated August 8, 2013. The reasons offered for this are that the identity of the Complainant’s business associate is not clear and that there had been a failure to observe “due process such as getting permits of the building’s landlord and tenants before taking the photos”. Further there appears to be some sort of claim that this evidence will unfairly embroil the landlord and tenants of the relevant property. However, it then goes on to annex to that submission a short statement in English from someone who is said to be the landlord of that property and which purports to confirm that one of the pictures annexed to the Response is of the “Tenant[‘s], Pak Sanghoon’s shop” located at the relevant address.
6. Discussion and Findings
6.1 The Complainant must make out its case in all respects as set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements of the Policy in turn, but before it does so it is necessary briefly to deal with a number of procedural matters in this case.
A. Procedural Matters
6.3 The first Procedural matter it is necessary to comment on in this case is the fact (as is recorded in some detail in the Procedural History section of this decision) that following the filing of the Complaint in these proceedings the Domain Name appears to have been transferred into the name of another registrar and the name of the registrant changed. The change in registrars caused particular difficulties and delayed the formal “commencement of proceedings” for approximately six and a half weeks.
6.4 Paragraph 8(b) of the Policy, which is binding not just on registrants but on registrars, contains the following provision:
“You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded”.
6.5 The transfer in this case therefore appears to have been in clear breach of that provision. It may also have been in breach of paragraph 8(a) of the Policy, which prevents transfer to a new domain name holder in the course of proceedings under the Policy.
6.6 There is nothing that the Panel has seen in this case to suggest that any registrar actively connived in this breach of the Policy. The transfer took place only four minutes after GoDaddy was sent an email informing it of the dispute. Further, the email of June 20, 2013, from Megazone Corp. (and subsequent emails in a similar vein) as far as the Panel can tell, did not involve any attempt on the part of that registrar to actively frustrate the operation of the Policy but instead was a genuine plea for help and guidance as to what it should do in such circumstances1. But the fact remains that regardless of the intent of the registrars in this case, the operation of the Policy was both impeded and for a period of time frustrated by this transfer.
6.7 The issue of domain name locking and cyberflight was recently the subject of a report prepared by the Generic Names Supporting Organization Working Group. Public comments in relation to that report were sought and although the time for public comment is over, the Panel understands that the Working Group is still finalizing its report for submission to the GNSO Council. In the circumstances, insofar as the Center considers this to be of any value, the Center may wish to bring this decision and the facts of this case to the attention of the Working Group.
6.8 The second procedural issue in this case is the filing by both parties of supplemental submissions. Absent exceptional circumstances a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780, the panel stated as follows:
“As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”
6.9 The Panel is of the view that the assertion in the Response that the Domain Name was being used in connection with a restaurant in the Republic of Korea and the evidence presented in this respect constitute an unexpected factual assertion of the sort referred to in the DK Bellevue, Inc. d/b/a Digital Kitchen case supra. There is nothing before the Panel to suggest that the Complainant was or ought to be aware of that claimed use at the time its Complaint was filed. Accordingly the Panel admits the Complainant’s Supplemental Submission. Given this, the Panel is also minded to admit the Respondent’s Supplemental Submission. Whether the Complainant’s claims that supplemental submission was “unexpected” somewhat depends upon what view one takes as to the truthfulness of the Respondent’s assertions in this respect. However, the Respondent’s contentions are short and, out of fairness to the Respondent, the Panel is prepared to consider the same.
6.10 The third procedural point is the issue of language. As has already been described, at one point the Center received an email in which the question was raised whether the Response could be filed in Korean. The Center responded that the language of these proceedings was the language of the relevant registration agreement that had been confirmed to be English. The statement is clearly correct under paragraph 11 of the Rules. It is also open to a panel under paragraph 11 of the Rules either to determine that the language of the proceedings should be in some other language or to order that certain documents should be translated. No request has been made by the Respondent to exercise either of these powers under the Rules and it needs to be remembered in any event that the identity of a registrar, and thereby the language of the relevant registration agreement, is something that is under a respondent’s control. In the circumstances, there is no reason why the Panel should do so.
B. Identical or Confusingly Similar
6.11 The Panel accepts that the Domain Name is “confusingly similar” to the Complainant’s registered Israeli trade mark as that term is understood under the Policy.
6.12 The Panel does not accept it is identical. The mark comprises the word “Telefire” but in a specific and very stylised form. The Panel is aware that other panelists have held that when considering whether a mark and domain name are identical or confusingly similar, the non-textual elements can be disregarded because non-textual elements cannot be represented in a domain name; see the discussion in paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). It is an approach with which this Panel disagrees. The mark is what is registered. Non-textual elements are as much a part of the mark as the textual elements. Indeed, sometimes the non-textual elements may be the only reason why the mark was registered in the first place. Accordingly, the mark as a whole must be considered when conducting the necessary comparison.
6.13 However, the test of confusing similarity is a “threshold test” and a low threshold test at that (see, for example Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531). Given this, in most cases where the only difference between a mark and a domain name is that the mark has non-textual elements and the domain name comprises a TLD such as “.com”, the domain name will still be confusingly similar with the mark, and so in practical terms this makes no difference. However, each case must be considered on its own merits rather than by the adoption of a formulaic rule.
6.14 In the case now before the Panel, the mark relied upon is simply the word “Telefire” in a stylised design. The word “Telefire” would appear to have no independent or descriptive meaning and there appears to be no good reason for ignoring that textual part of the mark. Give this, the Domain Name is confusingly similar with the Complainant’s trade mark and the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.15 The Complainant also seeks to rely upon a number of trade mark applications for marks which are essentially identical to the Israeli mark but in different jurisdictions. Generally UDRP panels have tended to hold that trade mark applications provide insufficient rights for the purposes of the Policy (see the analysis of previous competing cases in Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994). However, there is a complication in this particular case that arises out of the fact that at the time that the Complaint was filed, the Complainant held a Community Trade Mark that proceeded to registration only a few days later. There may be something in the argument that given that a Community Trade Mark grants certain rights from the date of publication that are conditional on subsequent grant, then in this particular case the Community Trade Mark can be relied upon. The fact that the mark proceeded to registration after the Complaint was filed but before the proceedings formally “commenced” on July 19, 2013, may also be of relevance. However the Complainant did not seek to put its case in this fashion and it is unnecessary to consider this issue further given the Panel’s findings in relation to the Israeli registered trade mark.
C. Rights or Legitimate Interests
6.16 The Panel doubts that the Respondent has either rights or a legitimate interest in the Domain Name. If Easy Property Management Group is the true Respondent, then it is questionable whether it has any right or legitimate interest by reason of the fact that it merely holds the Domain Name as a “trustee” for someone else. So far as “Park Sanghoon” is concerned, there is perhaps an argument that he can satisfy paragraph 4(c)(i) of the Policy which requires “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”. Perhaps the purported lease agreement dated March 29, 2013 is of that character, but this somewhat depends upon to what extent this agreement can be relied upon and when exactly it is that the Respondent became aware of the Complainant’s trade mark rights.
6.17 However, given the Panel’s conclusions as to bad faith, it is not necessary to consider this issue further.
D. Registered and Used in Bad Faith
6.18 There is a question in this case as to whether the person who is the real underlying registrant in this case (i.e. the person or entity which actually controls the Domain Name) is “Easy Property Management Group” or “Park Sanghoon”. However, on the evidence currently before the Panel, the Panel doubts it matters that much which is correct.
6.19 The Complainant at one point appeared to contend that “Easy Property Management Group” independently was engaged in dealings in domain names that took advantage of the trade mark rights of others. However, there is very little evidence to support this. The Complainant has provided a Domain Tools print out which shows that “Easy Property Management Group” (“Easy Property”) appears to be the registrant of approximately 1,400 domain names, but the holding of a large number of domain names and the business of trading in domain names is not per se abusive or in bad faith. No evidence is offered that suggests either that any of these 1,400 domain names unfairly take advantage of the rights of others, or that “Easy Property” has a track record of registering and holding domain names in bad faith. Further, for “Easy Property” to hold that number of domain names is not inconsistent with its claims that it holds a large number of domain names in trust for others.
6.20 However, even if “Easy Property” merely holds domain names on behalf of others and it is arguably the formal Respondent in these proceedings does not mean that the question of bad faith is to be judged by its knowledge alone. Insofar as the Domain Name is held on behalf of “Park Sanghoon”, that person’s knowledge and intent can be imputed to “Easy Property” for the purposes of these proceedings.
6.21 As to the substantive allegations of the Complainant, its contentions in relation to bad faith use are prima facie persuasive. There are a number of factors in this case that on their face appear to point to bad faith use.
6.22 First, there is what appears to be an uncontested claim by the Complainant that the Domain Name has been held without substantive use for a number of years, save that is for a brief period when it was used to advertise the business of “Ecoproduct Co” after the Complainant contacted the registrant through GoDaddy.
6.23 Second, there is the offer to sell the Domain Name to the Complainant for the sum of USD 70,000. The most likely explanation for the magnitude of the sum sought is the possible association of the term “Telefire” with the Complainant’s mark.
6.24 Third, although the Respondent has brought forward evidence that suggests that “Park Sanghoon” intends to use the Domain Name in connection with a restaurant of that name in the Republic of Korea, there are serious questions as to whether that evidence can be trusted. In this respect, there is the Complainant’s evidence that no restaurant is actually operating from the relevant address under that name. The Respondent appears to claim that somehow this evidence was improperly obtained and therefore the Panel should not take this into account. The Panel does not agree. Given that the Respondent claimed that a restaurant existed at that address, for the Complainant to have investigated whether this was so was a perfectly proper and sensible thing to do.
6.25 Further the way in which the Respondent reacted to this evidence is of itself arguably telling. The suggestion that the Complainant should have followed “due process such as getting permits of the building’s landlord and tenants before taking the photos” is wholly unpersuasive. A far more sensible response if the Respondent wanted to claim the assertions were false, would be to address the substance of the Complainant’s evidence head on. For example, if a restaurant were truly operating at that address, one would expect the Respondent to substantively address whether the photographs relied upon by the Complainant in the Complainant’s Supplemental Submission are in fact of the relevant address (with if necessary supporting evidence on that point). And if the Respondent accepted that the photographs were indeed of the right address, then one would expect some form of explanation to be offered as to why those photographs did not show the “Telefire” restaurant.
6.26 The Respondent, does provide some further evidence of the restaurant’s existence in the form of a declaration which is purportedly from the landlord of the property confirming that the Respondent’s earlier photographs were accurate. But the Panel is unconvinced that much reliance can be placed on this document. The document is in English and it is unclear whether the Korean landlord speaks this. Also, what that person had before them when they signed that document is unclear. There is merely a reference in the statement to photos and there is no direct statement that the photos accurately show that there has been a restaurant at that property using the “Telefire” name.
6.27 Perhaps more important is the evidence that the Respondent does not provide. The Respondent claims that the “Telefire” restaurant first started from a different address for five years from 2004 and that it was a restaurant that acquired some degree of fame, at least locally. If that is so, one would have expected the Respondent to be able to easily provide evidence of that prior use and to have done so. No such evidence has been offered.
6.28 Fourth, there is the fact that if “Park Sanghoon” is the real underlying registrant in this case, he has not decided to register the Domain Name in his own name. That calls for some explanation. A “trust” document of some sort is provided, but no real coherent explanation is offered as to why “Park Sanghoon” entered into such an arrangement.
6.29 Fifth, and particularly compelling, is the fact that there was in this case what appeared to be cyberflight as soon as a Complaint was filed. 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.
6.30 Perhaps it might be said that this was not of “Park Sanghoon’s” doing and that this was a somewhat misguided action on the part of “Easy Property”. Indeed, it is an action that might be said to be consistent with clauses 7 and 3 of the “trust” agreement. However, that is nothing more than speculation on the Panel’s part and no explanation along these lines is offered by the Respondent.
6.31 Perhaps so far as cyberflight is concerned and given that it is not expressly raised (nor could it have been expressly raised) in the Complaint, the appropriate course before relying upon this fact would be for the Panel to have issued a procedural order seeking further submissions on this point. If this were the only unresolved issue in this case, this is something that the Panel would have been minded to do.
6.32 Unfortunately, for the Complainant there is a more fundamental problem in this case. To succeed in proceedings, a complainant must show not only that there has been bad faith use but also bad faith registration. Paragraph 3.1 of the WIPO Overview 2.0 refers to a number of cases in which the panel concluded that bad faith use was sufficient and that whether, and to what extent, the requirement of bad faith registration could be dispensed with was a “developing area of UDRP jurisprudence”. Although the WIPO Overview 2.0 was published only in 2011, matters have moved on since then. This Panel would suggest that the view that bad faith use is not necessary is now at best a minority view. Regardless of whether that suggestion is right, it is not a view that is shared by this Panel (see for example Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470).
6.33 The reason why this is a problem for the Complainant is that the Domain Name was initially registered in 2004, which pre-dates by many years any of the trade marks relied upon by the Complainant in this case. That need not be fatal for the Complainant. If the Complainant could credibly show that it had nevertheless developed something akin to unregistered trade mark rights, or even that it was using the term “Telefire” in a trade mark sense, that might answer this point. However, none of this is alleged in the Complaint. Although the Complainant refers to the fact that it was founded in 1979, when it first started to use the “Telefire” name is neither explained nor evidenced.
6.34 Further, regardless of the exact state of the Complainant’s rights, it would usually also be necessary to show that the Respondent must have known of those rights at the time of registration. Although there is evidence that the Complainant has undertaken business in various parts of the world, no explanation is given as to how large that business is or was at that time. Certainly, from the way that the Complaint is structured it is not possible to draw any inference as to the Respondent’s likely knowledge. No other evidence is presented from which that knowledge might be inferred (for example, evidence that “Easy Property” or “Park Sanghoon” has a track record of registering the “.com” equivalents of “co.il” domain names).
6.35 Perhaps it might be said that the term “Telefire” is of itself so inherently unusual and distinctive that the only possible inference is that it must have been registered with the Complainant in mind. However, this is not what the Complainant contends and as the Panel will go on to explain, this may not be correct.
6.36 The preceding discussion assumes that the relevant date so far as registration is concerned is 2004. This is the date mentioned in the Response and the Complainant does not appear to take issue with this. However the Panel is not sure that this is right. Significantly, historic WhoIs records for the Domain Name available on the Domain Tools website suggest that:
(a) as at February 7, 2008 the Domain Name was registered in the name of “TeleFire” in Mill Valley, California.
(b) from at least June 19, 2008 the Domain Name was registered in the name of “Visel Ce” of Commack, New York State;
(c) from at least April 10, 2012 the Domain Name is first recorded as registered in the name of “Young Park” of Commack New York State; and
(d) from February 26, 2013 the Domain Name is first recorded as registered in the name of “Easy Property Management Group”.2
6.37 The reason why this is significant is that the prevailing view among panelists is that where a domain name is transferred into the name of a different registrant, there is a fresh registration and that it is from this fresh registration date that the issue of bad faith is to be determined (see paragraph 3.7 of the WIPO Overview 2.0). This Panel has previously expressed the view that this is so even where the identity of the person who has underlying control of the domain name remains the same (see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785).
6.38 If this is right, the date upon which the question of bad faith registration is to be assessed is at some point in or around February 2013, although the Panel cannot help but wonder whether the facts that (a) the Domain Name was registered prior to that date in the name of “Young Park” and (b) that “Park” also forms part of the name of the claimed underlying registrant in this case, is simply coincidence or suggests that the two “registrants” are somehow connected.
6.39 Further, the Panel notes that the Complainant contends that after the registrant was approached in early May 2013, a web page appeared from the Domain Name that advertised a business in Commack, New York State. This is the address of a number of the previous registrants. Unfortunately, no evidence is offered to support that claim. But if such evidence was provided, can it be inferred from this that the underlying registrant for the Domain Name changed after the Domain Name was transferred into the name of “Easy Property”?
6.40 Further, material available on the Internet Archive and in the Screenshot archive of Domain Tools suggests that the early use by “Telefire” in California was use in connection with a genuine business unconnected with the Complainant. How and in what circumstances it came into the hands of “Easy Property” or “Park Sanghoon” is not clear, but even if either of these persons are dealers in domain names as the Complainant suggests, it does not follow that the reason why the Domain Name was acquired is because of its associations with the Complainant (although this in turn raises questions as to whether the circumstances of acquisition were such that there was nevertheless “wilful blindness” of the Complainant’s rights at the time of the acquisition as is discussed in paragraph 3.7 of the WIPO Overview 2.0).
6.41 Despite the requirements under the Policy (to demonstrate both registration and use in bad faith), and the unusual elements of the WhoIs record and supplemental submissions, none of these facts of arguments forms part of the Complainant’s case. One way to address these issues would have been to set out the above statements in a procedural order and to seek the further comments of the parties in this regard. On reflection, the Panel does not think this is the right way to proceed. The issuing of procedural orders is not an uncontroversial practice. The complaint is that they can give a complainant a “second bite of the cherry” in perfecting its case that is unfair in circumstances where it is the complainant who can choose when to issue proceedings and how much time it spends preparing its case, and it is the complainant who bears the burden of proof in the proceedings. This Panel has perhaps issued more procedural orders than most in order to do what it considers to be justice in any particular case, but usually this has been in circumstances where a small number of facts or issues require clarification. In the present case an order would effectively amount to a suggestion that the Complainant construct a case very different from that originally put forward in the Complaint and to ask the Respondent to then deal with that completely new case.
6.42 Further, that new case would have been easily assisted with material available in Domain Tools’ historic WhoIs records and material available on the Internet archive and/or Domain Tools’ screenshot archive. This database will be familiar to any lawyer who professes to have expertise in the area of domain name disputes and ordinarily one would expect a complainant’s lawyers to have checked those records as a matter of course. The Panel is reluctant to issue an order which would invite the Complainant to reformulate its case on the basis of this material, when had it wanted to rely on this material previously, it could have done so. This is particularly so in this case where it is clear that the Complainant’s lawyers were aware of the existence of Domain Tools given their reliance upon a print out from the Domain Tools website.
6.43 In the circumstances, and bearing mind that it is the Complainant that bears the burden of proof in proceedings under the Policy, the Panel dismisses this Complaint.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Date: September 6, 2013
1 Although the question of to what extent registrars can or should reverse a transfer in breach of the policy and the extent to which a panel may have the power to order that a transfer be reversed, is something that was touched upon in the recent decision of Tadano Ltd. v. Stanley Pace / Xaichie Tadano, WIPO Case No. D2013-0865. However, the panel did not reach any firm conclusions in this regard. In the circumstances, Megazone’s plea for help may well be understandable.
2 Although this is the date upon which "Easy Property Management Group" first appears in the historic WhoIs records, it would appear from the Registrar's response to the Center's verification request that the Domain Name was actually first registered in that name on January 28, 2013.