WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
YKK (U.S.A.) Inc. and YKK Corporation of America v. Simon Ip
Case No. D2013-1848
1. The Parties
Complainants are YKK (U.S.A.) Inc. and YKK Corporation of America, both of Marietta, Georgia, United States of America (US), represented by Troutman Sanders, LLP, US.
Respondent is Simon Ip of Drums, Pennsylvania, US representing himself and recently represented by Liu & Shields, LLP, US.
2. The Domain Name and Registrar
The disputed domain name <murko.com> (“the Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amended Complaint on November 7, 2013.
The Center verified that the Complaint together with the amended 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”).
Even before the proceedings commenced, but after the Complaint was filed, Respondent sent an unsolicited email (outside the Rules and Policy) to the Center in support of his alleged rights in the Domain Name setting forth technical information about the Domain Name such as the creation date, the registrar, and Respondent’s name.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2013. Respondent failed to submit a formal response in accordance with the Policy and Rules. Accordingly, the Center notified the parties of the default on December 2, 2013.
On December 3, 2013 Respondent sent another unsolicited email and attachment to the Center, again not in accordance with the Policy and the Rules, in support of his alleged rights in the Domain Name. On December 6, 2013, Complainants filed a Supplemental Filing in response to Respondent’s email.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 5, 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.
On December 17, 2013, the Center issued the Administrative Panel Procedural Order No. 1 which states: “The Panel notes that the Complainant asserts common law rights in the MURKO mark based on the mark’s continuous use since 1960 in connection with the production of zipper manufacturing machinery. The Panel therefore orders the Complainant to file, by December 28, 2013, any relevant dated evidence supporting its claim of the continuous use of the MURKO mark since 1960 for this purpose. The Respondent has until January 2, 2014 to submit any comment he may wish to make concerning any evidence submitted by the Complainant on this issue.”
On December 19, 2013, Respondent sent another email to the Center that was not in accordance with the Panel’s Order No.1, but ostensibly was responding to it. On December 23, 2013, Complainants timely responded to the Panel’s Order No. 1.
Thus far in these proceedings Respondent had been representing himself. On January 2, 2014, for the first time, Respondent not only submitted to the Center a formal style document, but it was submitted by counsel representing Respondent. Although the document is entitled Comment of Respondent Simon Ip to Evidence Submitted by Complainants Relating to Their Claim of Continuous Use of the Murko Mark Since 1960 Pursuant to Administrative Panel Procedural Order No. 1, it also was not in accordance with the Panel’s Order No. 1, essentially starting from scratch for Respondent.
On January 6, 2014, the Center issued Administrative Panel Procedural Order No. 2 that, quite simply, stated: “The Panel hereby orders the parties to cease filing submissions for the above-referenced matter.”
4. Factual Background
Complainants (collectively, “YKK”) are privately held New York corporations based in Marietta, Georgia. They manufacture fasteners and zippers used in the garment, apparel and footwear industries. Complainants are part of the YKK Group, a zipper manufacturer that has been making zippers since the 1930s. Pursuant to an Asset Purchase Agreement and a Bill of Sale and Assignment Agreement (dated August 8, 2006), Complainants acquired all of the assets of the going business of Murko Machinery & Die Company, LLC (“Murko”), a privately held New York company. Since 1960, Murko has been widely acknowledged as a manufacturer of zipper machinery, having customers in the United States, the Americas (North, Central and South America), Europe, the Middle East, Far East and Africa. In the acquisition, YKK was conveyed, among other things, all right, title and interest in all of Murko’s rights to the names “Murko” (“the MURKO Mark”), “Murko Machinery & Die” and any other name containing the name “Murko” as well as all of the goodwill associated with the business and purchased assets (including the aforementioned marks).
Since August 2006, YKK has operated a machinery division under the name “Murko Machinery” or “Murko”. All goodwill in the MURKO Mark through the use of the Mark by Murko and its successor-in-interest YKK inures to YKK.
5. Parties’ Contentions
Murko has used the MURKO Mark continuously since at least 1960. YKK’s significant common law rights in the MURKO Mark are sufficient to support this Complaint.
A customer, prospective customer or other Internet user looking for information on Murko and its products would expect and naturally type in “Murko” or “Murko.com” to locate information about the Murko division of YKK and its products. The Domain Name has pointed to the Murko website since at least 1998. Having used the MURKO Mark for over 37 years there is ample evidence to establish that the Murko name and Mark were well known when the Domain Name was registered in 1997. There is an active pending application for the MURKO Mark in the U.S. Patent and Trademark Office (U.S.P.T.O) that was filed on October 1, 2013 based on a date of first use in 1960.
When this Complaint was filed, the Domain Name was privately registered with Network Solutions. According to the current registrant details on Network Solutions’ WhoIs database, the listing is a private registration under the name “Simon Ip Attn Murko.com care of Network Solutions.” The same private registration is used for the registrant’s administrative and technical contacts thereby potentially shielding the true identity and all of the contact information of the Domain Name’s true owner. YKK does not know who the registrant/Respondent is. The person is not a current employee of YKK. Based on a pre-complaint investigation, YKK believes Respondent was a designer of Murko’s website before YKK purchased Murko’s assets. That person would have been responsible for designing and maintaining Murko’s website at “www.murko.com”.
In a search performed back on September 5, 2013, the WhoIs database shows that Murko Machinery & Die Corp. was the registrant of the Domain Name and Simon Ip was the Administrative and Technical Contacts. Before YKK filed the Complaint it submitted to Network Solutions a request to change the Domain Name registrant’s name to YKK as the owner of Murko’s business assets and all right, title and interest in the MURKO Mark. Network Solutions replied by email and copied Respondent. In response Respondent rebuffed YKK’s request stating: “This is my domain name since 2004 who [sic] can’t try/attempt to do any change without my permission. I hope you can do your job appropriate to protect my privatization [sic] please!” Respondent then changed the registrant to “Simon IP Attn Murko.com care of Network Solutions.” Thus, now, YKK does not control the Domain Name, the current re-direct instructions, or whether the content or re-direct instructions for the website will change in the future. It cannot control the content on the website, prevent Respondent from sabotaging the website by taking steps which will result in the Domain Name no longer being actively associated with YKK or the MURKO Mark, or from directing customers, prospective customers, and other Internet users to some other unknown web address unaffiliated with and not controlled by YKK.
YKK also recently learned that Respondent was listed as the administrative contact for the domain name <murkomachinery.com>. YKK submitted a registrant name change for this domain name and Network Solutions granted its request, sending an email notice of the transfer to YKK and Respondent.
Respondent only became the registrant of the Domain Name after September 5, 2013 when he improperly and fraudulently assigned the Domain Name. YKK’s rights in the MURKO Mark date back to 1960 and long precede Respondent’s assignment in 2013. As a result of substantial investment and promotion of MURKO products, the MURKO Mark has acquired strong commercial distinctiveness and goodwill. The MURKO Mark is coined, arbitrary and fanciful and has no descriptive meaning with regard to zipper making machine products.
The Domain Name is confusingly similar to the MURKO Mark because it incorporates the Mark in its entirety. Because the MURKO Mark is the initial, dominant and distinctive element of the Domain Name, the Domain Name strongly conveys the impression of sponsorship or association with YKK. Respondent has chosen the Domain Name for the very purpose of falsely conveying such an impression to the public and to attract viewers to the website under the impression that they are accessing a website owned and operated by YKK. Adding “.com” does not distinguish the Domain Name from the Mark.
YKK has not given Respondent any permission to assign himself the Domain Name. Respondent does not own and has not acquired any proper rights in the MURKO Mark or the Domain Name. Respondent is not affiliated with or employed by YKK. Respondent does not own any trademark applications or registrations for the MURKO Mark or any variants of it. Even if Respondent was the designer of Murko’s website or worked at Murko years ago, he was in a position of trust and confidence with Murko and only registered the Domain Name as part of and within the scope of his duties and position as confirmed by his status as Administrative and Technical Contact. Only after YKK contacted Network Solutions to update the registration information for the Domain Name with the registrar in 2013 did Respondent claim ownership of the Domain Name. Respondent was thus aware of Murko’s trademark rights in the MURKO Mark when he changed the registration of the Domain Name. Respondent has never been commonly known by the Domain Name.
None of the situations set forth in the Policy at paragraphs 4(c)(i)-(iii) are present here. Respondent cannot demonstrate any rights or legitimate interests in the Domain Name. Respondent is not currently using and has never used the Domain Name in any legitimate commercial or non-commercial manner. Respondent does not make, distribute or sell (nor has it ever) any goods or services under the MURKO Mark. Thus, it cannot satisfy paragraph 4(c)(i) of the Policy. The Domain Name has always directed Internet users to Murko’s website, but Respondent’s recent use of the Domain Name is not a bona fide offering of goods or services by Respondent. This use only highlights Respondent’s efforts to create a likelihood of confusion regarding the source, affiliation or endorsement of the Domain Name. Finally, Respondent is not protected by the safe harbor of paragraph 4(c)(iii) because he has tried to create the impression that the Domain Name is owned and controlled by YKK. Respondent is not making and has never made any commentary or criticism by using the Domain Name. Respondent knew at all times of Murko’s rights in the MURKO Mark as he was (upon information and belief) an employee and/or web designer for Murko. Even if Respondent had no association with Murko, because the MURKO Mark is well-known as a result of Murko’s use of it in commerce for over 53 years, and because of YKK’s additional use, Respondent would have been aware of the Mark. Based on the renown of the MURKO Mark, the incorporation of the entire Mark in the Domain Name, the subsequent posting of content regarding Murko machinery on the accompanying website, and notice of Complainant’s request of Network Solutions to have the Domain Name transferred to it, Respondent had actual knowledge of the Mark before reassigning the Domain Name registration. The only reason for Respondent to register the Domain Name in his name is to sell the Domain Name back to YKK.
The only conceivable reason for Respondent to register the Domain Name under his own name is so that he would control the Domain Name and profit from the goodwill and reputation of Murko and the MURKO Mark, and/or sell the Domain Name back to YKK. The fraudulent use of the Domain Name constitutes “use in commerce” and that use is in bad faith because it prevents users from accessing Murko’s website. Also, under the initial interest doctrine, incorporating a trademark in a registered domain name falls outside the safe harbor of paragraph 4(c)(iii). It also constitutes bad faith intention to divert traffic within the meaning of paragraph 4(a)(iii). Finally, an adverse inference can be drawn from the fact that the Respondent is using a privacy shield service and has rebuffed YKK’s efforts to obtain the Domain Name by demanding the Registrar do its “job” and maintain his privacy.
The Center formally notified Respondent of the Complaint, and the proceedings commenced on November 11, 2013. Even before that, on November 6, 2013 Respondent wrote by name to the Case Manager of this case at the Center setting forth the details of what Respondent referred to as his “personal domain name at murko.com” including the following information:
Registrar URL: http//www.networksolutions.com/en_US/
Updated Date: 2013-08-07
Creation Date: 1997-10-02
Tech Name: Ip, Simon
Tech Street: ATTN MURKO.COM
Tech City: Drums
Tech State: PA
Tech Postal Code: 18222
Tech Country: US
Tech Phone: 570-708-8780
Tech Phone Ext:
Tech Email: […]@networksolutionsprivateregistration.com
The due date for Respondent’s formal response was December 1, 2013. On December 3, 2013 Respondent sent an email to the Center along with an attachment referred to in the email. On December 19, 2013 Respondent sent correspondence to the Center (addressed personally to the Panel) in response to the Panel’s Order No. 1. Neither the December 3 or 19 correspondence is summarized here for the reasons set forth below under (6)(A). Portions of Respondent’s January 2, 2014 submission have been summarized or otherwise discussed in section (6)(B).
6. Discussion And Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Supplemental Filings
Respondent in this case has disregarded the Rules, Policy and the Panel’s Order No. 1 with regard to what to file and when to file it. Whenever it suited Respondent, he would push the send button on informal email communications to the Center picking and choosing what issues to respond to and even helping himself to multiple responses on the same matter whenever and however he chose. In this Panel’s view, these actions have disrupted and confused the presentation of evidence and argument in proceedings otherwise known for their orderly and expeditious presentation of both, and increased unnecessarily the costs of the proceeding.
In general, the UDRP makes no provision for unsolicited filings by either party. Unsolicited filings will be considered only in exceptional circumstances, and only when the party filing the unsolicited submission explains the exceptional circumstances. In the circumstances of this case, the following submissions filed after the proceedings formally commenced are deemed to be unsolicited supplemental or out-of-order filings: (1) a one-paragraph email (dated December 3, 2013) and attachment, which Respondent submitted after the time for his Response was due. In the email Respondent appears to suggest that he did not receive a hard copy of the complaint, but he did not deny receiving the same by email and his emails throughout these proceedings belie any suggestion that he did not receive the Center’s or Claimants’ communications; (2) Complainants’ Supplemental Filing of December 6, 2013 addressing Respondent’s December 3, 2013 filing; (3) Respondent’s December 19, 2013 email; and (4) significant portions of Respondent’s January 2, 2014 formal submission through counsel.
Respondent had been communicating with the Center even before the proceedings officially commenced. In that early communication, he provided the Center with details of what he referred to as his “personal domain name at murko.com”. He was already attuned to the issues in dispute and knew how to communicate with the Center. When the time came for filing a Response, however, Respondent failed to file one. Not only did he miss the deadline (as a pro se party he might have requested additional time to respond), he could have sought additional guidance from the Center on how and when to respond, though the Center provides parties with all they need to know through email communications and guidance on the Center’s website. After the Response deadline, Respondent filed an email communication that does not appear to be a late Response. It does not attempt to respond to the points Complainants raise in their amended Complaint, nor does it offer reasons for missing the Response deadline or request that the Panel consider it as a late-filed Response. Respondent clearly had the information in his possession that he referred to in his email, including the document attached to it, well in advance of the due date for a Response.
When the Panel issued its Panel Order No. 1 on December 17, 2013, Respondent was quick to respond on December 19, 2013, albeit through another informal email, so Respondent was obviously receiving and understanding the Center’s communications and was capable of responding on time. The problem here was that the Panel’s Order No. 1 gave Respondent permission to submit any comment “concerning any evidence submitted by the Complainant” but Respondent ignored Order No. 1, emailing the Center even before receiving Complainants’ evidence. Then, at the eleventh hour, after his Response was due, and after already responding to the Panel’s Order No. 1, Respondent decided to retain counsel and start the proceedings all over again. Disregarding the Panel’s Order No. 1 (“to submit any comment he may wish to make”) Respondent filed a formal document that reargues what he has argued previously to the Panel and presents arguments and evidence that could have been presented earlier – with our without counsel.
Respondent has not offered any exceptional circumstances for why the Panel should consider any evidence or arguments that were not filed on time, were not invited, or do not comply with the Rules, Policy or Order governing these proceedings. For these and all of the aforementioned reasons, and in accordance with paragraphs 10 and 12 of the Rules, the Panel has not considered Respondent’s December 3, 2013 email or Complainants’ response to it. The Panel also will not consider Respondent’s December 19, 2013 email, or any evidence or argument in the January 2, 2014 submission that does not relate to the narrow subject matter set forth in Order No. 1, or that could have and should have been presented earlier in a Response so that the Panel might have determined in accordance with the Policy and Rules what other information it wanted/needed from the parties. In any event, had the Panel considered Respondent’s aforementioned submissions this would not have affected the outcome of this case.
B. Identical or Confusingly Similar
Complainants have not proffered a US federal trademark registration to prove their rights in the MURKO Mark. Respondent argues that Complainants cannot rely on the trademark application filed on October 1, 2013 with the U.S.P.T.O claiming first use in 2006 [sic, 1960] to show continuous rights since 1960. Complainants, however, have not relied in their submissions on that application to show rights since 1960. Rather, they are relying on common law rights in the Mark.
Respondent argues that Complainants’ evidence does not show Complainants ever acquired any rights to the MURKO Mark. He notes that Murko Machinery & Die Corp. and Murko Machinery & Die Company, LLC were separate entities as of the date of the purchase agreement and that the Bill of Sale and Assignment that Complainants made of record to show ownership of the MURKO Mark is between Murko LLC and YKK. Respondent further notes that a declaration Complainants made of record states that YKK purchased Murko Corp. (not Murko LLC). From this he alleges that Complainants therefore never acquired rights to the Mark. Complainants allege that pursuant to an Asset Purchase Agreement and a Bill of Sale and Assignment Agreement (dated August 8, 2006), YKK acquired all of the assets of the going business of Murko. More specifically, they allege that YKK was conveyed, among other things, all right, title and interest in all of Murko’s rights to the names “Murko” (“the MURKO Mark”), “Murko Machinery & Die” and any other name containing the name “Murko” as well as all of the goodwill associated with the business and purchased assets (including the aforementioned marks). Respondent has not alleged that the Bill of Sale and Assignment agreement are not valid and the Panel has no reason to believe they are not. Similarly, even if the LLC and the Corp. were separate legal entities that does not mean that there was not some privity or legal relationship between them. In any event, the Panel finds that Complainants have shown that they did acquire rights from at least Murko LLC in the MURKO Mark and, thus, they have the requisite rights to satisfy this element of the Policy.
Respondent also alleges that Complainants have not offered the complete Bill of Sale and Assignment and suggest that there might be excluded assets. Even if there are excluded assets listed on an unattached schedule, the fact is that the document of record unequivocally confers rights in the MURKO Mark to Complainants.
An unregistered trademark that is used in commerce may be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy if a complainant can show that the mark is inherently distinctive or at least has acquired secondary meaning and thus has become a distinctive identifier associated with complainant or its goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 1.7. Relevant evidence of such secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Id.
In addition to evidence already of record showing use of the Mark (which Respondent never controverted), in response to the Panel’s Procedural Order No. 1, Complainants provided additional evidence to support common law use of the MURKO Mark since 1960 (i.e., two sworn declarations by the Director and the Office Manager of YKK Field Technology Center (the division of YKK in charge of zipper machinery), as well as supporting documentary evidence). Grasping at straws, Respondent argues that this evidence does not show continuous use because one of the declarations states that the continuous use was by Murko “Corp.” or that the brochures/ads were under that name, but the Assignment was given by Murko “LLC” and Respondent claims, without more, that there is no privity between them. The Panel is not persuaded that this hypothetical parsing negates the evidence of continuous use of the MURKO Mark that Complainants have made of record.
Respondent argues that some of the pages that are exhibits to the declarations are not dated and thus they do not show continuous use, but this ignores many other pages that do show dates and it ignores what a holistic review of the evidence reveals.
Respondent attacks both declarations, among other things, on the ground that the declarants do not have personal knowledge of certain facts contained in the declarations, but he does not state why the declarants do not have the personal knowledge they allege. If this were not a proceeding on the papers, Respondent might be able to prove what he argues, but without contrary proof, the Panel has no reason not to believe the declarants based on their long-standing positions with YKK, their industry knowledge, and the information and exhibits provided.
Respondent argues that “[a]t most Complainants’ evidence shows the use of the Murko name by Murko Corp. until 2006; from 1997 to 2004 or 2005 in murko.com by Murko Corp.; from 2004 or 2005 to the present in murko.com by Respondent; and from August 8, 2006 until September 30, 2013 by YKK (U.S.A.) Inc.” In this statement, Respondent essentially concedes the continuous use of the MURKO Mark by either Murko or Complainants. Indeed, collectively Complainants’ evidence is sufficient to establish common law trademark rights in the MURKO Mark since 1960 by Complainants and their predecessor-in-interest Murko. Thus, the Panel concludes that Complainants have established common law rights in the MURKO Mark that are sufficient for this proceeding.
Respondent claims that at present Complainants are not using the “Murko name” by virtue of certain letters sent by Complainants to customers. One letter dated June 27, 2013 notes that “Murko, a Division of YKK (U.S.A.) Inc. will be closing its doors September 30, 2013.” Among other things, the one-page letter informs customers what they should do for ordering replacement parts and wire. It says nothing about the MURKO Mark including that it will no longer be in use. The other letter dated November 21, 2013, informs customers that “[o]n November 8, 2013, YKK (U.S.A.) Inc. sold equipment used in Murko Division’s wire and parts businesses to Harry Gold and Johnny Rhambharose, respectively. . . . YKK will no longer be associated with this business in any way, and all future orders and correspondence should be directed to these gentlemen.” Again, nothing in this letter says anything about the non-use of the MURKO Mark.
Incorporating a trademark in its entirety in a domain name is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark for purposes of the Policy. Insofar as <murko.com> incorporates verbatim the MURKO Mark, in which Complainants have rights, the Panel finds the Domain Name is identical to the Mark. When comparing a disputed domain name and a trademark, the addition of the “.com” suffix is generally irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
Complainants must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
Complainants contend: (1) on August 6, 2006 YKK acquired all right, title and interest in the MURKO Mark and the goodwill associated with it; (2) Respondent neither owns nor acquired any proper rights in the MURKO Mark nor have Complainants given Respondent permission to use the Domain Name or assign it to himself; (3) Respondent has no affiliation with YKK; (4) Respondent does not own any trademark applications or registrations for the MURKO Mark or any variants of it; (5) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with an offering of (his) goods or services. Using the Domain Name as it always has been used to direct the public to Murko’s, and now Complainants’, website is not a bona fide offering of goods or services by Respondent or a legitimate noncommercial or fair use; it only highlights Respondent’s efforts to create a likelihood of confusion about the source, affiliation or endorsement of the Domain Name with YKK; and (6) Respondent has not been and is not commonly known by the Domain Name. Complainants further argue that even if Respondent was the designer of Murko's website or worked at Murko in the past, he was in a position of trust and confidence and registered the Domain Name within the scope of his duties as confirmed by his status as Administrative and Technical Contact. It was only after YKK contacted the Registrar to update the Domain Name registration information in 2013 that Respondent claimed to own the Domain Name. The Panel concludes that Complainants have set forth a prima facie case that Respondent does not have any rights or legitimate interests in the Domain Name.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the respondent to rebut the complainant’s evidence. As discussed above, Respondent has failed to do this in accordance with the Rules and Policy. It bears mentioning that a refrain in Respondent’s emails was that: (1) the MURKO Mark was not trademarked/ registered when he registered the Domain Name for Murko; and (2) Respondent somehow owns the Domain Name. With regard to the first point, Respondent appears to believe that ownership of a trademark is synonymous with registration of a mark, ignoring the legal import of common law rights. With regard to the second point, Respondent hasn’t made of record any document between himself and Murko showing that Murko gave Respondent ownership rights to use or own the Domain Name for his own use. Such a claim is contradicted by the Network Solutions WhoIs database information for the Domain Name dated September 5, 2013 showing that Murko, not Respondent, was listed as the registrant and owner of the Domain Name. Even assuming that Respondent designed and/or hosted a website for Murko, it is doubtful that the company intended for Respondent to own the Domain Name for his own use, insofar as other than the work done for Murko, Respondent has not argued he has any rights or legitimate interests in the Domain Name as defined under the Policy. In any event, whether Respondent has any contractual rights to the Domain Name by virtue of work he did for Murko is outside the ambit of these proceedings and the Panel’s authority to determine.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. When this Complaint was filed the registrant details on Network Solutions’ WhoIs database showed a private registration under the name “Simon Ip Attn Murko.com care of Network Solutions.” The same private registration was used for the registrant’s administrative and technical contacts. Complainants performed a search back on September 5, 2013, and the WhoIs database showed at that time Murko as the registrant of the Domain Name, and Simon Ip was listed solely as the Administrative and Technical Contacts.
Before filing the Complaint, YKK submitted to Network Solutions a request to change the registrant of the Domain Name to YKK to reflect the new ownership of the MURKO Mark. Network Solutions replied by email and copied Respondent. In response Respondent wrote: “This is my domain name since 2004 who [sic] can’t try/attempt to do any change without my permission. I hope you can do your job appropriate to protect my privatization [sic] please!” Respondent then changed the registrant to “Simon IP Attn Murko.com care of Network Solutions.” It is clear both from Respondent’s submissions to the Center and the WhoIs database information that Respondent knew of both Murko and Complainants before naming himself as the registrant of the Domain Name. Furthermore, it is evident that Respondent understood at some level Murko’s long-standing rights in the MURKO Mark insofar as he acknowledged the same in the January 2, 2014 submission. Until recently, he was listed solely as the Technical/Administrative Contact, not the registrant. Upon learning of Complainants’ desire to be named as the registrant after acquiring rights in the Mark, Respondent acted and changed the Domain Name registration to his own. Based on these circumstances, and having already concluded that Respondent does not have any rights or legitimate interests in the Domain Name, the Panel concludes that Respondent registered the Domain Name in bad faith.
As a result of Respondent’s acquisition of the Domain Name and use with Complainants’ own website, Complainants do not control the Domain Name, the current re-direct instructions, or whether the content or re-direct instructions for the website will change in the future. Complainants cannot control the content on the website, prevent Respondent from sabotaging the website by taking steps which will result in the Domain Name no longer being actively associated with YKK or the MURKO Mark, or from directing customers, prospective customers, and other Internet users to some other unknown web address unaffiliated with and not controlled by YKK. This case does not fall neatly into any of the four criteria in paragraph 4(b) of the Policy that are to be considered as evidence of the registration and use of a domain name in bad faith. Those criteria, however, do not limit a panel’s authority to find bad faith use of a domain name as is evidenced here. In this case, with the Domain Name in the hands of someone who refuses to be identified and has not proved any rights or legitimate interests in the Domain Name, Respondent’s use of the Domain Name with Complainants’ own website is disruptive to Complainants’ business, and harmful to their reputation and commercial viability and constitutes bad faith use.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <murko.com> be transferred to Complainants.
Harrie R. Samaras
Date: January 7, 2014