Hoar Construction, LLC v.
Jinsu Kim
Claim Number: FA0710001093845
PARTIES
Complainant is Hoar Construction, LLC (¡°Complainant¡±), represented by Michael S. Denniston, of Bradley Arant Rose & White LLP, 1819 Fifth Avenue North, Birmingham, AL 35203. Respondent is Jinsu Kim (¡°Respondent¡±), 1113-1406 GreenVille Jugong Apt. 11 Choji-dong, Danwon-gu, Ansan, Gyeonggi-Do 425-873, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hoar.com>, registered with Cydentity,
Inc. d/b/a Cypack.com.
PANEL
The undersigned certifies that he or she has
acted independently and impartially and to the best of his or her knowledge has
no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 12, 2007.
On October 12, 2007, Cydentity, Inc. d/b/a Cypack.com confirmed by
e-mail to the National Arbitration Forum that the <hoar.com> domain name
is registered with Cydentity, Inc. d/b/a
Cypack.com and that the Respondent is the current registrant of the
name. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is
bound by the Cydentity, Inc. d/b/a Cypack.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN¡¯s Uniform Domain Name Dispute
Resolution Policy (the ¡°Policy¡±).
On October 22, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
¡°Commencement Notification¡±), setting a deadline of November 12, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent¡¯s
registration as technical, administrative and billing contacts, and to
postmaster@hoar.com by e-mail.
A timely Response was received and determined to be complete on November 12, 2007.
Complainant submitted a timely Additional Submission that was received
and determined to be complete on November 19, 2007.
On November 26, 2007, pursuant to
Complainant¡¯s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun
Nahm as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES¡¯ CONTENTIONS
A. Complainant
i)
The disputed
domain name is confusingly similar to Complainant¡¯s HOAR and HOAR CONSTRUCTION marks.
ii)
Respondent
has no rights or legitimate interests in respect of the domain name.
iii) Respondent registered, used, and continues to use the disputed domain name in bad faith.
iv) And thus, the domain name in dispute should be transferred to Complainant.
B. Respondent
i)
Complainant
does not have either registered
or common-law rights in HOAR mark. Complainant
is attempting ¡°reverse domain name hijacking.¡±
ii)
Respondent
has rights or legitimate
interests in respect of the domain name in dispute because he has registered
and intended to use the domain name for his business purposes, while admitting he registered the domain name as part of a ¡°keyword search
advertisement¡± scheme. Respondent has
registered or acquired a few domain names as they helped increase the number of
Internet users visiting its advertisement website. The domain name in dispute,
which was obtained by paying a considerable amount of money, is one of those
domain names.
iii)
He did not
acquire and use the disputed
domain name in bad faith.
C. Additional Submissions
Complainant has asserted in the Additional Submission to the effect that:
i)
Respondent¡¯s claim that Complainant does not have either statutory or common-law rights in HOAR, HOAR CONSTRUCTION, is simply wrong as a matter of law, and Complainant submitted evidence supporting
its common law rights in the mark or name HOAR and HOAR CONSTRUCTION,
ii)
Respondent¡¯s claim that ¡°hoar¡± allegedly is a
common word is irrelevant,
iii)
Respondent¡¯s Response shows that he has no
rights or legitimate interests in the domain name by admitting he is not
now using or commonly known under, never have used or been commonly known under the name ¡®HOAR,¡¯
iv)
Respondent also has no rights because the use of a domain name to
display a series of hyperlinks unrelated to the Complainant¡¯s business ¡°does not constitute a
bona fide offering of goods and
services,¡±
v)
Respondent
knows from another
panel decision, ¡°Respondent¡¯s use of linking a pornographic website to
the disputed domain name is not a
legitimate noncommercial, or fair use of the disputed domain name,¡±
vi)
Using
someone else¡¯s mark to offer directory services is not a bona fide
offering of goods or services, nor a legitimate noncommercial or fair use of
the domain name),
vii)
The fact
that Respondent is using Complainant¡¯s HOAR mark to attract Internet users and profit by it also is evidence of his bad faith,
viii)
There
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant¡¯s trademarks, actually or constructively, and
ix)
The existence of relevant metadata shows Respondent¡¯s actual knowledge of
Complainant.
FINDINGS
Complainant and its predecessor have
used the HOAR and HOAR CONSTRUCTION marks in interstate commerce to identify construction services since at least 1940.
The disputed domain name was registered on February 28, 1995. Respondent
concedes that on April 9, 2006 he acquired the domain name in dispute at an
auction site by way of competition for the purpose of his business gaining profits
by attracting Internet users to the advertisement or other commercial service
site to which the disputed domain name is linked.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the ¡°Rules¡±) instructs this Panel to ¡°decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.¡±
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name
has been registered and is being used in bad faith.
Respondent
contends that Complainant does not
have either registered or
common-law rights in the mark ¡®HOAR in
the
It is now well established that the Policy protects rights in
unregistered trademarks: see: Bennett Coleman & Co. Ltd. v. Steven
S. Lafwani, D2000-0014 (WIPO March 11, 2000); SeekAmerica Networks Inc.
v. Tariq Masood, D2000-0131 (WIPO Apr. 13, 2000); and the cases cited by
Complainant, Brisbane City Council v. Warren Bolton Consulting Pty Ltd.,
D2001-0047 (WIPO May 7, 2001) and
However, the fact that an unregistered trademark is sufficient to
bring the proceedings does not necessarily mean that a Panel will automatically
accept that there is an unregistered trademark in any particular case simply
because a complainant asserts that there is. The question is what evidence will
enable a panel to conclude that the evidence establishes the existence of an
unregistered trademark. The answer to this question is to be found in the
useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Consensus
view on what needs to be shown for the complainant to successfully assert
common-law or unregistered trademark rights:
The complainant must show that the name has become a distinctive
identifier associated with the complainant or its goods and services. 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. The fact that the secondary meaning may only exist in a small
geographic area does not limit complainant¡¯s rights in a common law trademark.
Unregistered rights can arise even when the complainant is based in a civil law
jurisdiction.
Relevant decisions:
Uitgeverij Crux v. Isler, D2000-0575 (WIPO Oct. 30, 2000); Skattedirektoratet v. Eivind
Nag, D2000-1314 (WIPO Dec. 18, 2000); Amsec Enters., L.C. v.
McCall, WIPO D2001-0083 (WIPO Apr. 3, 2001); Australian Trade Comm¡¯n v.
Reader, D2002-0786 (WIPO Nov. 12,
2002).
Complainant and its predecessor have
used the HOAR and HOAR CONSTRUCTION marks in interstate commerce to identify construction services since at least 1940. In light of the length of using over sixty (60) years of Complainant¡¯s
and its predecessor¡¯s service marks HOAR and HOAR CONSTRUCTION especially on construction services, its business performance of billions
of dollars worth of general contracting and construction services, and the advertisement expenditure of
hundreds of thousands of dollars on advertising its services, using the HOAR
name and mark, its ranking as one of the
top ten healthcare facilities contractors and one of the top 125 in the United States overall and one of the 50 Best Small
& Medium Companies to Work for in America, it is found that Complainant owns common law rights in the marks
HOAR and HOAR CONSTRUCTION, prior to the
registration and acquisition of the domain name in dispute.
Although Respondent also contends that the word
¡®hoar¡¯ is a common dictionary word, it is not considered as being descriptive
in respect of construction services or Internet advertisement services. As
such, the Panel finds that Respondent¡¯s argumentation on the ¡®reverse domain
name hijacking¡¯ on the basis of Complainant¡¯s lack of rights and
non-distinctiveness of the word ¡®hoar¡¯ is groundless.
It is undisputed that the domain name in
dispute is identical with or confusingly similar to Complainant¡¯s marks HOAR
and HOAR CONSTRUCTION.
Respondent contends
that he has conducted the business
by offering the domain name in dispute for the domain traffic advertisement and
gaining profits in return by way of offering the domain name in dispute at
commercial advertisement sites, and further contends that such a domain traffic
advertisement is a rightful business. As such, he has rights or legitimate
interests for the domain name in dispute.
The Panel, however, finds it unlawful to utilize and offer the domain name for the monetization of the
site under that domain name, which is confusingly similar to a third
party¡¯s mark and its use is not authorized by the third party. Such an act also constitutes a
violation of ICANN policy where the domain name of the monetized site is
confusingly similar to a third party¡¯s mark and its use is not authorized by
the third party (ICANN Policy 4(b)(iv)). Therefore, the
Panel cannot recognize that the traffic advertisement business (irrespective of
direct or indirect) offered by Respondent is lawful, and concludes that
Respondent has no rights or legitimate interests in the domain name in dispute.
See MatchNet plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for
commercial gain by attracting Internet users to third party sites offering
sexually explicit and pornographic material, where such use is calculated to
mislead consumers and tarnish the complainant¡¯s mark), see also
Hewlett-Packard Co. v. Jinsu Kim, FA 98012 (Nat. Arb. Forum Sept. 5, 2001) (finding that it
is not a bona fide offering of goods
or services for a respondent to link the
disputed domain name to a website that offers pornographic material.).
Respondent
contends to the effect that i) he acquired the disputed domain name for his
own business not for sale and that he acquired the disputed domain name at the
auction site for domain names by way of a fair competition, and ii) Complainant¡¯s
mark is neither well known around the world especially in Korea nor considered
as having obtained a secondary meaning, and thus he did not know the existence of the mark ¡®HOAR,¡¯ and thus he did not register or use the disputed domain
name in bad faith.
On the other hand, Respondent concedes that he
had acquired the domain name in dispute for the purpose of his business turning
profit by attracting Internet users to the advertisement or other commercial
service site to which the disputed domain name is linked. As such, it is
constructively noted that Respondent found the value of the disputed domain
name being useful to attract Internet users to its linked sites thereby
increasing his commercial gains because the word ¡®hoar¡¯ would not be useful in
that it is not considered as being popular or attractive enough to be used as
an Internet keyword by Internet users in terms of the connotation of the word
unless otherwise having been well known as a trademark or service mark. As
such, it is highly probable that Respondent was aware of the existence of
Complainant¡¯s mark being well known enough to be used to attract Internet
users.
Furthermore, in light of the length of use over
sixty (60) years of Complainant¡¯s and its predecessor¡¯s service marks
HOAR and HOAR CONSTRUCTION especially on
construction services, its business
performance of billions of dollars worth of general contracting and
construction services, and the
advertisement expenditure of hundreds of thousands of dollars on
advertising its services, using the HOAR name and mark, its ranking as one of the top ten healthcare facilities contractors
and one of the top 125 in the
United States overall and one of
the 50 Best Small & Medium Companies to Work for in America, it is recognized that Complainant¡¯s marks
HOAR and HOAR CONSTRUCTION had been well
known at least in the United States prior to the registration and acquisition
of the disputed domain name. It is
not necessarily required to enjoy the remedies under the Policy that
Complainant¡¯s mark should be well known or registered in the territory where
Respondent resides. The circumstances above enable
the Panel to assume Respondent¡¯s prior knowledge and intent to trade on Complainant¡¯s marks.
The Panel finds that Respondent
has allowed the domain name in dispute to
be used for diverting
Internet traffic that was initially intended for Complainant to online advertisement site which was subsequently linked to a website containing pornographic materials and to profit from such traffic. Respondent knows from prior panel
decisions where Respondent himself is a
party: Respondent¡¯s use of the disputed
domain name to redirect Internet users to a website containing
pornographic material is evidence of bad faith. (Hewlett-Packard Co. v. Jinsu Kim, FA 98012 (Nat. Arb.
Forum Sept. 5, 2001).
(On this kind of bad
faith behavior, see Microsoft
Corporation v. Mindkind,
D2001-0193 (WIPO Apr. 20, 2001); Tata Sons Ltd. v. Advanced
Info. Tech. Ass¡¯n, D2000-0049 (WIPO Apr. 4, 2000); Am. Online, Inc. v. Exit
As such, the Panel concludes that Respondent
registered and used the domain name in dispute in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hoar.com> domain name be TRANSFERRED
from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Dated: December
10, 2007
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