WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patties Foods Pty Ltd v. Hong Young Jin
Case No. D2019-0713
1. The Parties
The Complainant is Patties Foods Pty Ltd of Mentone, Australia, represented by Watermark Intellectual Property Lawyers, Australia.
The Respondent is Hong Young Jin of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <fourntwenty.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 30, 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.
4. Factual Background
The Complainant is an Australian company that produces principally a variety of pies, pasties, pastry, and cakes. It has used the brand name FOUR’N TWENTY since about 1947 and it was first registered in 1958.
The Complainant holds 14 registered trademarks and two applications, of which the following are representative:
FOUR’N TWENTY, Australian trademark, registered October 22, 1958, registration number 151223, class 30;
FOUR’N TWENTY, figurative, Australian trademark, registered June 29, 1990, registration number 537084, class 29.
The Complainant also owns the domain name <fourntwenty.com.au>.
Nothing of substance is known about the Respondent except that he apparently deals in domain names and holds a large stock. The disputed domain name, according to the WhoIs, was registered on September 26, 2005, and has recently resolved to a website announcing that the disputed domain name is for sale and displaying sponsored links related to pastry and bakery.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the registered trademark in which the Complainant has rights. The closest representation of the Complainant’s trademark allowable in a domain name, which cannot contain an apostrophe or a space, is “fourntwenty”, as in the disputed domain name, which is therefore essentially identical.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence to suggest that the Respondent has been associated with the Complainant. The Respondent has owned the disputed domain name for a number of years without any legitimate use or preparations for legitimate use.
The Complainant says the onus is upon the Respondent to demonstrate rights or legitimate interests in the disputed domain name, which it cannot do.
The Complainant says there is no evidence of bona fide use of the disputed domain name for an offering of goods or services because it is in use for sale, with a minimum offer invited on different websites of variously EUR 4,900, USD 4,950, or USD 25,000. The disputed domain name is also used as a platform to gain advertising revenue on the basis of the Complainant’s trademark and reputation. A link-heading labelled “Pastry Bakery” leads to further links to businesses concerned with baking, meat, and cakes, being goods covered by the Complainant’s trademark. There is no evidence that the Respondent is known by the disputed domain name or a similar name. The Respondent is not making a noncommercial or fair use of the disputed domain name.
The Complainant says the words of its trademark do not have any meaning or significance other than as the Complainant’s trademark. There is no legitimate basis on which the Respondent could have chosen the disputed domain name without knowledge of the Complainant’s trademark.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant says the Respondent has engaged in a pattern of the registration of domain names in conflict with the trademarks of others, including two that were the subject of adverse finding against the same respondent in UDRP cases, and another four located by the Complainant in WhoIs records.
The Complainant says the disputed domain name may have been registered by the Respondent under a false identity. The contact email address provided has also been used by two other persons for domain name registration purposes, according to a reverse WhoIs search. The Respondent’s email address has been given as the registered contact in respect of over 30,000 domain names and he has also used other email addresses for domain name registration purposes. A different individual using the Respondent’s email address has been the subject of three adverse findings under the UDRP in relation to famous trademarks, and appears to be the registrant of domain names incorporating another three famous trademarks.
The Complainant says the Respondent must have known or should have known of the Complainant’s trademark at the time of registration of the disputed domain name. The trademark has been in use since about 1947, has been registered since 1958, and is well known, in support of which some reference articles are submitted. The Respondent, particularly as a mass domainer holding over 5,000 domain names, has obligations under paragraph 2 of the Policy.
The Complainant says the Respondent has been using the disputed domain name to host pay-per-click links, including to pastry products in competition with the Complainant. Commercial revenue may thereby be derived by the Respondent as a consequence of visitors searching for the Complainant’s trademark.
The Complainant has submitted a number of precious decisions under the Policy that it considers relevant to the Complainant.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the evidence that the Complainant has the requisite rights in the trademark FOUR’N TWENTY under the Policy.
The disputed domain name <fourntwenty.com> is found to be effectively identical to the Complainant’s trademark within the constraints of the permissible fonts in a domain name.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is not associated with the Complainant.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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.”
The Respondent has not responded and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii), or (iii) of the Policy or otherwise.
In particular the disputed domain name is not evidently in use except to be held and advertised for sale and to host advertising links. There is no evidence of the Respondent having been known by the disputed domain name and no evidence of any noncommercial or fair use of it within the meaning of the Policy.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 web site 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 or service on your website or location.”
In terms of paragraph 4(b)(i) of the Policy, the disputed domain name is clearly for sale at a price in excess of registration costs. Screen captures show it to have been available for sale through SEDO (“www.sedo.com”) on November 18, 2016, requiring a minimum offer of EUR 4,900; through bgroup (“www.bgroup.com”) on March 28, 2019, requiring a minimum offer of USD 4,950; through Afternic (“www.afternic.com”) for USD 25,000; and through bigrock (“www.bigrock.com”) for USD 25,000 “for 1st year”.
The Panel finds sufficient evidence for a finding on the balance of probabilities that the primary purpose of registration of the disputed domain name by the Respondent was for sale to the Complainant, or a competitor of the Complainant, for valuable consideration within the contemplation of paragraph 4(b)(i) of the Policy, and furthermore that it has been used for that purpose, constituting registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
The Panel also finds the disputed domain name to have been used in bad faith with intent to derive at least a share of advertising revenue generated by the referral of visitors from the website to which it has resolved, via links to external advertisers, particularly in the business of pastry, bakery and related goods, by confusion with the Complainant’s trademark under paragraph 4(b)(iv) of the Policy.
The Complainant has referred to three previous disputes under the UDRP in which the Respondent was found to have registered domain names in conflict with well-known trademarks. See, ShopInvest NV v. Hong Young Jin, WIPO Case No. D2015-1224 (trademark, E5 MODE); and Forest Laboratories UK Limited v. Hong young jin, WIPO Case No. D2016-2023 (trademark, INFACOL). According to WhoIs records produced by the Complainant, the Respondent has also registered domain names incorporating variations on the trademarks IPAD, ALDI, DISNEY CHANNEL, and MINECRAFT. The Panel finds these conflicts to provide additional support for a finding of the registration and use of the disputed domain name in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fourntwenty.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: May 11, 2019