WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ultra Mega Rad, Inc. v. James H. Park

Case No. D2019-2098

1. The Parties

The Complainant is Ultra Mega Rad, Inc., United States of America (the “United States”), represented by Ervin Cohen & Jessup, LLP, United States.

The Respondent is James H. Park, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <ultramegarad.com> is registered with DropCatch.com LLC 1242 (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 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 September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 3, 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 owns and operates an e-commerce website and platform where clothing and related items are sold. Its website is located at the domain name <ultramegaradshop.com>.

The Complainant is the registered owner of the following trademark registrations for the sign ULTRA MEGA RAD (the “ULTRA MEGA RAD trademark”):

- the United States trademark ULTRA MEGA RAD with registration No. 5829879, filed on May 23, 2018 and registered on August 6, 2019 for goods in International Class 25, with first use on May 22, 2018; and

- the United States trademark ULTRA MEGA RAD with registration No. 5829880, filed on May 23, 2018 and registered on August 6, 2019 for goods in International Class 25, with first use on May 22, 2018.

The disputed domain name was registered on April 2, 2019. It resolves to a parking webpage containing third-party links and a notice that the disputed domain name may be purchased for USD 3,300.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the ULTRA MEGA RAD trademark in which the Complainant has rights.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, since it is not used for an active website and the Respondent provides a link to the online platform at “www.sedo.com” (the “Sedo platform”) where the disputed domain name may be purchased. The Complainant adds that before notice of this dispute, there has been no use of the disputed domain name by the Respondent in connection with a bona fide offering of goods or services, and the Respondent is not commonly known by the disputed domain name and has not acquired any trademark rights in ULTRA MEGA RAD. The Complainant further states that the Respondent has registered 7,000 domain names, none of which are affiliated with functional websites, but each of them contains a link to the Sedo platform where the respective domain name may be purchased.

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, the Respondent has engaged in a pattern of bad faith registrations of 7,000 domain names, and the Respondent’s sole purpose in registering these domain names, including the disputed domain name, was to extort money from the respective trademark owner. The Complainant adds that the Respondent has also provided false contact information to the Registrar. On June 5, 2019, in an attempt to demand transfer of the disputed domain name, the Complainant submitted a cease and desist letter to the Respondent via email to the Respondent’s email address listed with the Registrar. However, the email was returned and declared undeliverable.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent has however not submitted a Response and has not made any comments on the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the ULTRA MEGA RAD trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the element “ultramegarad”. It literally reproduces the ULTRA MEGA RAD trademark, only omitting the spaces between the three words comprising the trademark. In any case, spaces cannot form part of domain names for technical reasons, and their omission in the disputed domain name does not change its overall appearance in which the Complainant’s trademark is easily recognized and dominates.

In view of the above, the Panel finds that the disputed domain name is identical to the ULTRA MEGA RAD trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by it and has not acquired trademark rights in the sign “ultramegarad”. The Complainant also points out that the Respondent has not made any use of the disputed domain name in connection with a bona fide offering of goods or services, but is offering the disputed domain name for sale. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it.

The disputed domain name is identical to the ULTRA MEGA RAD trademark. As summarized in Section 2.5.1 of the WIPO Overview 3.0, a domain name that is identical to a complainant’s trademark carries a high risk of implied affiliation. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Respondent has not provided any explanation for its choice of a domain name and for its plans in connection with the use of the disputed domain name. In view of it being a specific combination of three words, it appears to the Panel as more likely than not that its registration by the Respondent was not a coincidence, but was made in view of the Complainant and its ULTRA MEGA RAD trademark, which the Complainant started to use almost one year prior to the registration of the disputed domain name. The disputed domain name resolves to a parking website containing a notice that the disputed domain name may be purchased for USD 3,300, which is an amount significantly above the normal out of pocket expenses related to the registration of a domain name.

In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the ULTRA MEGA RAD trademark, has registered the disputed domain name in an attempt to extract commercial gain through its sale. In the Panel’s view, this conduct of the Respondent does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances 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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is identical to the ULTRA MEGA RAD trademark, and resolves to a parking webpage that includes a notice that the disputed domain name may be purchased for an amount that is significantly above the normal out of pocket expenses related to the registration of a domain name. The Complainant submits that it has started using the ULTRA MEGA RAD trademark almost a year prior to the registration of the disputed domain name, and its statements have not been disputed by the Respondent. The Panel notes the nature of the disputed domain name which is identical to the Complainant’s nascent rights on the trademark ULTRA MEGA RAD (and highly similar to the Complainant’s corporate name). See section 3.8.2 of the WIPO Overview 3.0. In addition, the Panel notes that, while the word trademark ULTRA MEGA RAD is composed of three different words, the combination of these words seems arbitrary.

Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the ULTRA MEGA RAD trademark primarily for the purpose of selling the disputed domain name to the Complainant who is the owner of the ULTRA MEGA RAD trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ultramegarad.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: October 9, 2019