Teavana Corp v. Lee Sam Lee Sam
Claim Number: FA1112001419368
Complainant is Teavana Corp (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Lee Sam Lee Sam (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teavana.co> (hereinafter referred to as “disputed domain name”), registered with Key-Systems GmbH.
The undersigned certifies that he 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, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2011; the National Arbitration Forum received payment on December 9, 2011. The Complaint was submitted in English and Korean.
On December 20, 2011, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <teavana.co> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 27, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of January 17, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@teavana.co. Also on December 27, 2011, the Korean language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 16, 2012.
On January 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On February 2, 2012, the Panel issued its Procedural Order pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy asking Complainant to file additional submissions to clarify the contractual parties of the Affiliate Agreement as submitted as Exhibit J and to specify the provisions which Respondent violated, setting a deadline of February 10, 2012.
On February 10, 2012, Complainant filed the Additional Submission pursuant to the Panel’s Procedural Order.
The deadline to render the Decision was initially set as February 8, 2012 and subsequently changed to February 27, 2012 due to the Panel’s Procedural Order.
Complainant requests that the domain name be transferred from Respondent to Complainant.
On December 20, 2011 the Registrar in this matter notified the National Arbitration Forum that the language of the Registration Agreement was in Korean. Rule 11(a) states:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In the instant proceeding there has been no submitted agreement between the parties to conduct the hearing in a language different from that of the Registration Agreement. However, the Panel notes that Rule 11(a) provides it with discretion to determine the proper language of the proceeding under the circumstances of this case. See Farouk Sys., Inc. v. QYM, D2009-1572 (WIPO Jan. 19, 2010) (“In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ abilities to understand and use the proposed language, time and costs”). In the instant proceeding, the Panel notes that Respondent submitted its Response to this matter wholly in the English language. Further, the screenshots submitted by Complainant show that the disputed domain name resolves to Complainant’s official English language website. Therefore, the Panel finds that conducting the instant proceeding in English will not injure either party in these proceedings. See Orbis Holdings Ltd. v. Feng, D2007-0515 (WIPO July 25, 2007) (finding that where Respondent responded in English and cited English UDRP cases while receiving important documents of the case in its native language, conducting the proceeding in English was not prejudicial to either party); see also Farouk Sys., Inc. v. QYM, D2009-1572 (WIPO Jan. 19, 2010) (finding that where the facts indicate that, “it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceedings,” the proper language of the proceeding could be English rather than Chinese).
A. Complainant
- The disputed domain name is identical and confusingly similar to a trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
B. Respondent
- The website resolved by the disputed domain name is only for Respondent’s personal fan page or blog to provide Koreans and other Asian countries with useful information about the brand TEAVANA. As such, Respondent has legitimate interests in the disputed domain name; and
- The main purpose for the registration and use of the disputed domain name is neither making a profit nor business. Therefore, Respondent does not have a bad faith in the registration and use of the disputed domain name.
C. Additional Submissions
On February 10, 2012, pursuant to the Panel’s Procedural Order, Complainant submitted the Additional Exhibits to clarify the contractual parties of the Affiliate Agreement and to specify the provisions of the Affiliate Agreement which Respondent violated.
- The Complainant owns rights in the TEAVANA mark with United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,612,225 registered August 27, 2002);
- The disputed domain name is identical and confusingly similar to a trademark or service mark in which Complainant has rights;
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant submits evidence that it owns rights in the TEAVANA mark with United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,612,225 registered August 27, 2002). The Panel finds that such a trademark registration is sufficient for Complainant to satisfy the requirements under Policy ¶ 4(a)(i), regardless of Respondent’s physical location. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Further, Complainant argues that the disputed domain name is identical to its TEAVANA mark where the disputed domain name <teavana.co> merely adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark. Several prior UDRP panels have decided that the addition of a ccTLD does not distinguish the domain name from the asserted mark. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). The Panel finds that the disputed domain name is identical to Complainant’s TEAVANA mark under Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the disputed domain name. Complainant points the Panel’s attention to the WHOIS information for this proposition which identifies “Lee Sam Lee Sam” as the registrant of the disputed domain name. The Panel accepts this information and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain name to resolve to Complainant’s official <teavana.com> website in violation of its affiliate program. The Panel finds that Complainant’s screenshot confirms this fact. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolved to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program).
Complainant argues that Respondent has engaged in typosquatting through its registration of the disputed domain name. Complainant argues that Respondent is attempting to prey on those Internet users that simply leave off the letter “m” from the common “.com” suffix. The Panel finds that Respondent has engaged in typosquatting, which is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Complainant alleges, and supplies screenshot evidence to show, that Respondent is using the disputed domain name as an end around Complainant’s affiliate program. Complainant argues that Respondent uses the domain name to redirect Internet users to Complainant’s official website, thereby increasing its own commercial gain through the affiliate program. The Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where it registered the domain name in order to create a likelihood of confusion with Complainant for commercial gain through Complainant’s affiliate program. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith).
Further, previous panels have determined that using a confusingly similar or identical domain name to redirect to Complainant’s official website is also evidence of bad faith under Policy ¶ 4(a)(iii). See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."). The Panel finds accordingly in this case.
The Panel also finds that typosquatting is, in itself, evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teavana.co> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 22, 2012
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