Novell, Inc. v. Taeho Kim
Claim Number: FA0307000167964
PARTIES
Complainant
is Novell, Inc., Provo, UT, USA
(“Complainant”) represented by Vanessa
B. Pierce, of Parsons Behle & Latimer.
Respondent is Taeho Kim,
Seoku-Kwangju, Republic of South Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <novellsolutions.com>,
registered with Hangang Systems, Inc. d/b/a Doregi.Com (hereinafter
“Doregi.Com”).
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Dennis
A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on July 9, 2003; the Forum received a hard copy of the Complaint on August 15,
2003.
On
August 13, 2003, Doregi.Com confirmed by e-mail to the Forum that the domain
name <novellsolutions.com> is
registered with Doregi.Com and that the Respondent is the current registrant of
the name. Doregi.Com has verified that Respondent is bound by the Doregi.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
August 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
10, 2003 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@novellsolutions.com by e-mail.
A
timely Response was received on September 9, 2003. However, the Response was
submitted in English, while the Registration Agreement with the Registrar was
in the Korean language. Pursuant to UDRP Rule #11(a), the “language of the
administrative proceeding shall be the language of the Registration Agreement,”
and as the Response did not comply with UDRP Rule #11(a), it was deemed
deficient by the Forum. Respondent was given a deadline of September 16, 2003
with which to correct this deficiency by submitting a Response in the Korean
language. Respondent did not submit a Korean language Response by this
deadline. However, as both parties in this dispute have agreed to conduct these
proceedings in English, the Panel chooses to consider Respondent’s deficient
Response in reaching its decision.
Both
Complainant and Respondent submitted a supplemental filing in this proceeding:
Complainant on September 15, 2003, and Respondent on September 20, 2003. These filings were timely under the Forum’s
Supplemental Rule #7, and the Panel did consider the parties’ supplemental
filings in reaching the decision below.
On September 26, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Dennis A.
Foster as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant’s Contentions
Complainant
owns the NOVELL family of trademarks.
Complainant also owns the domain names <novell.com>, <novellsolutions.org.>,
and <novellsolutions.net>.
Respondent’s
clear intent, as evidenced by the subject matter of its website (Complaint
Exhibit B), is for commercial gain by misleadingly diverting customers from
Complainant’s website.
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services, nor is Respondent making a legitimate noncommercial or
fair use of the domain name.
Respondent
is not commonly known by the disputed domain name, <novellsolutions.com>,
nor by the name Novell, nor has Respondent acquired any trademark or service
mark rights in this famous mark.
Further, Respondent is not authorized or licensed to make use of the
NOVELL mark for any purpose.
The
disputed domain name resolves to a search page including information on escorts
and sexually explicit materials. In
addition, Respondent’s website makes use of pop-up advertisements for sexually
explicit materials, further supporting a finding that Respondent reaps
commercial gain from its infringing use of Complainant’s NOVELL trademark in
the disputed domain name.
When
the public mistakenly access Respondent’s website, they will initially believe
they have arrived at Complainant’s own website, or otherwise wrongly believe
Complainant sponsors or endorses Respondent’s website. Such diversion tarnishes Complainant’s
NOVELL marks and causes substantial confusion.
Complainant
further alleges that by intentionally attempting to attract, for commercial
gain, Internet users to Respondent’s website, by creating a likelihood of
confusion with Novell’s marks as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website, Respondent registered and used its domain
name in bad faith.
Respondent
has a history of bad faith in registering domain names, including famous marks
or misspellings of famous marks in an attempt to profit from the trademarks of
others.
The
disputed domain name should be transferred to Complainant.
B.
Respondent’s Contentions
The
disputed domain name, <novellsolutions.com>, is composed of two
common English words. It is a generic
domain name that is capable of a multitude of applications. The words “novell” and “solutions” generally
connote a solution of some kind that provides the user with flexibility.
The
subject domain name was certainly not registered with Complainant in mind, or
any specific company in mind.
Respondent had never even heard of Complainant as “novellsolutions”.
Due
to the well-known failure of the Internet and information technology markets
and Respondent’s own lack of time, the website and service originally intended
by Respondent was never developed. To
date, Respondent has maintained the domain name and has not solicited the sale
of the domain name to any party, especially Complainant.
Complainant
accuses Respondent of intentionally attempting to attract Internet users to a
website for commercial gain by creating a likelihood of confusion. This argument fails because of the numerous
other companies that use the trademark, NOVELL SOLUTIONS, all over the
world. Also, Complainant is not known
worldwide.
Although
Complainant is the registered owner of the trademark NOVELL SOLUTIONS, the
territorial scope of its trademark is limited to the United States.
Complainant
accuses Respondent of advertising on his website. It is not clear how this is indicative of bad faith. The fact is that because the domain name is
generic, Respondent is free to use the web site in any manner that does not
attempt to confuse users.
In
accordance with paragraph 15(e) of the Rules, Respondent requests that the
Panel make a finding of reverse domain name hijacking, i.e., using the Policy
in bad faith to attempt to deprive a registered domain name holder of a domain
name.
C.
Complainant’s Additional Submission
Respondent
has alleged but has failed to meet its burden of proof for a finding of reverse
domain name hijacking.
Because
Respondent does not possess and cannot demonstrate any legitimate interest in
the domain name containing the registered trademark NOVELL, the date on which
Complainant attempted to register a domain name containing its own registered
trademark is irrelevant.
Respondent
asserts that the disputed domain name is generic and that “numerous companies
use the name, ‘novell solutions’, all over the world for a variety of
services.” Respondent has provided no
evidence of such numerous companies, nor do such companies exist. In fact, Respondent’s entire argument
appears to be based on its mistaken use of the registered trademark NOVELL in
place of the term “novel”, an error that Complainant pointed out to Respondent
prior to filing the present Complaint, which Respondent curiously fails to
acknowledge.
Respondent
admits that it has failed to develop the website that it allegedly intended to
develop, and also admits that it has been holding this undeveloped web site for
over 2 years (since August 31, 2001).
To date, the disputed domain name, <novellsolutions.com>,
still resolves to a search page including information on escorts and sexually
explicit materials.
Complainant
attaches herewith as (Complainant’s Additional Response) Exhibit 2 a copy of
its sales data for its products in Korea.
It is highly unlikely, given Respondent’s position as a system solution
engineer for four years, that he was not aware of Complainant and its products.
Respondent
alleges that Complainant’s mark is not known worldwide and that its territorial
scope is limited to the United States.
To the contrary, Complainant’s trademark is known and registered throughout
the world. See Exhibit 1, which is a
summary of Complainant’s world-wide registrations for the mark NOVELL.
The
disputed domain name should be transferred to Complainant.
D.
Respondent’s Additional Submission
The
fact is that no bad faith exists in this case.
Likewise, Respondent has a legitimate interest in the disputed domain
name. The disputed domain name is
generic.
Numerous
companies use the name, NOVELL SOLUTIONS, all over the world for a variety of
services, and most of them have used the trademark, NOVELL SOLUTIONS, way
before Complainant started using it.
Complainant’s entire case rests on the fact that the disputed domain
name is identical or similar to its registered trademark. Complainant has resorted to these
proceedings because it is cheaper than buying the domain name from the lawful
registrant.
Complainant
has failed to demonstrate any NOVELL SOLUTIONS trademarks in Korea where
Respondent resides. Complainant has
also failed to show that it does any business in Korea.
The
fact is that Respondent registered the disputed domain name in August 31, 2001
as the first person. Complainant, on
the other hand, registered its domain names, <novellsolutions.net> and
<novellsolutions.org> on May 6, 2003 (Exhibit B).
Complainant
sought to entrap Respondent by contacting it to transfer the disputed domain
name and then using this as “evidence” against Respondent.
The
Complaint should be denied.
FINDINGS
Complainant is a well-known international
provider of software. Respondent is an
Internet businessman in South Korea.
Respondent registered the disputed domain name, <novellsolutions.com>,
on August 31, 2001. Before initiating
this proceeding, Complainant contacted Respondent and they discussed
Complainant buying the disputed domain name, but they did not reach an
agreement.
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.
Complainant has exhibited a vast number
of citations for registrations of its NOVELL trademark all over the world,
including in South Korea, where Respondent is located. While the word “solutions” is descriptive
when used for software, Respondent has used this word paired with Complainant’s
trademark NOVELL (the Complaint Exhibit A;
Complainant’s Additional Response, Exhibits 1 and 2). The disputed domain name means a software
solution attributable to Complainant.
Thus, the disputed domain name, <novellsolutions.com>, is
confusingly similar to a trademark (NOVELL) in which Complainant has rights. See
Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term).
Complainant has satisfied paragraph
4(a)(i) of the Policy.
Respondent
argues that it has rights and legitimate interests in the disputed domain name
because, as provided under paragraph 4(c)(i) of the Policy, “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.”
Respondent
argues that both “novell” and “solutions” are descriptive terms that are in the
public domain, and thus Respondent and anyone else are free to use them.
However,
as Complainant argues, it appears to the Panel that Respondent has confused the
English word “novel”—meaning new, or a long work of fiction--with Complainant’s
coined or family name, “novell”, which is spelled and pronounced differently,
and which has no meaning in English.
The
Panel does not believe Respondent could genuinely have thought that
Complainant’s trademark NOVELL was the same as the common English word,
novel. In particular, the Panel
observes that Respondent states that he has a degree in industrial engineering
from the National University in South Korea, and also worked with Samsung
Electronics Co., Ltd. for four years as a systems solution engineer
(Respondent’s Response to the Initial Complaint, p. 4). The Panel believes it is highly unlikely
that a person with Respondent’s educational and professional background would
not know about Complainant’s NOVELL trademark, which is in a select class of
strong international software trademarks. See Target Brands, Inc. v. Bealo
Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (“Misdirecting Internet traffic by utilizing
Complainant’s registered mark does not equate to a bona fide offering of goods
or services . . . nor is it an example of legitimate noncommercial or fair use
of a domain name . . . . Respondent was merely attempting to capitalize on a
close similarity between its domain name and the registered mark of
Complainant); see also Paws, Inc. v. Zuccarini, FA 125368
(Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is
confusingly similar to an established mark to divert Internet users to an
adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial
or fair use of the domain name by a respondent”).
The
Panel thus finds Respondent does not have legitimate rights and interests in
the disputed domain name.
Complainant
contends Respondent registered and is using the disputed domain in bad faith
because it has held the domain name for more than two years without developing
a web site for it. Although this is not
one of the enumerated bad faith grounds under the Policy at ¶¶ 4(b)(i)-(iv),
the Rules, at paragraph 15(a), allow the Panel to find additional bad faith
grounds where appropriate.
However,
the Panel finds Respondent has been using the disputed domain name intensively
to drive Internet traffic to its other web sites where it offers paid adult
entertainment and advertising. The Panel finds this is evidence of bad faith
registration and use of the disputed domain name pursuant to the Policy at ¶
4(b)(iv). See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc –
BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well
known that pornographers rely on misleading domain names to attract users by
confusion, in order to generate revenue from click-through advertising,
mouse-trapping, and other pernicious online marketing techniques”); see also
Youtv, Inc. v. Alemdar, FA 94243
(Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted
users to his website for commercial gain and linked his website to pornographic
websites).
Respondent
argues that he could not have been in bad faith vis-à-vis Complainant when he
registered the disputed domain name because he was not aware of who or what
Complainant was at the time. The Panel
does not believe Respondent at all: as the Panel discussed in the Legitimate
Rights and Interests part of this Decision, a highly educated computer
specialist like Respondent would be bound to know about Complainant and its
software products. The Panel does not
find that Respondent’s being in South Korea makes this any less likely since
Complainant has shown that it does lots of business in South Korea and has
numerous registered trademarks in South Korea, and since Internet business is
worldwide. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) ( “there is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
The
Panel finds Respondent has registered and is using the disputed domain name in
bad faith.
Reverse Domain Name Hijacking
Respondent
has requested that the Panel make a finding that Complainant initiated this
proceeding either in bad faith or to harass Respondent per paragraph 15(e) of
the Rules. Since the Panel has found
Complainant prevails under the Policy at ¶¶ 4(a)(i)-(iii), it is obvious the
Panel finds Respondent’s request untenable. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has
satisfied [all of] the elements of the Policy, Respondent’s allegation of
reverse domain name hijacking must fail”).
DECISION
Based on the above discussion, paragraph
4(i) of the Policy and paragraph 15(a) of the Rules, the Panel orders that the
disputed domain name, <novellsolutions.com> be TRANSFERRED
to Complainant, Novell, Inc.
Dennis A. Foster, Panelist
Dated: October 24, 2003
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