Maurice Mizrahi / Mizco International, Inc. v. Chi Hyon
Claim Number: FA1710001754962
Complainant is Maurice Mizrahi / Mizco International, Inc. (“Complainant”), represented by Christina S. Loza of Loza & Loza, LLP, California, USA. Respondent is Chi Hyon (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digipower.com>, registered with HANGANG Systems, Inc. dba Doregi.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David L. Kreider, Esq., as the Chair of the three-member Panel, along with Ho-Hyun Nahm, Esq., and The Honorable Neil Anthony Brown QC, as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 20, 2017; the Forum received payment on October 20, 2017.
On October 25, 2017, HANGANG Systems, Inc. dba Doregi.com confirmed by e-mail to the Forum that the <digipower.com> domain name is registered with HANGANG Systems, Inc. dba Doregi.com and that Respondent is the current registrant of the name. HANGANG Systems, Inc. dba Doregi.com has verified that Respondent is bound by the HANGANG Systems, Inc. dba Doregi.com 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 October 30, 2017, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of November 20, 2017 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@digipower.com. Also on October 30, 2017, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 7, 2017.
On November 10, 2017 and November 12, 2017, Complainant and Respondent, respectively, made timely additional submissions pursuant to Supplemental Rule No. 7. The Panel has considered both submissions.
On November 15, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed:
David L. Kreider, Esq., as Panelist;
Ho-Hyun Nahm, Esq., as Panelist; and
The Honourable Neil Anthony Brown QC, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
The registration agreement for the Disputed Domain Name is in the Korean language. Complainant submitted both an English language and a Korean language Complaint. Respondent, in a separate correspondence, stated that it wished to continue with the proceeding in English, and submitted an English Response.
The Panel, having discretion in determining the language of these administrative proceedings under UDRP Rule 11(a), decides under the circumstances that English shall be the language of these administrative proceedings.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
[A.] Complainant has Trademark Rights and Respondent’s Domain
Name and Complainant’s Trademark are Identical
Mizco International, Inc. (“Mizco”) was founded by its President Maurice
Mizrahi and its corporate documents were filed before the Secretary of State in
New York in September 1987. The mark DIGIPOWER has been used in commerce by Mizco since April 1998 in connection with “external battery
packs, batteries, ac adapters, battery chargers, digital camera accessories, namely, carrying cases, gadget bags, tripods, camera cleaning kits, camera connector cables, LCD screen protectors, carrying straps, telephoto lenses, wide angle lenses and rechargeable batteries and ac chargers for use with digital cameras, personal digital assistants and cellular phones.” On November 12, 1998, Mizco purchased the domain name DIGIPOWERSOLUTIONS.COM. On February 10, 2000, Mizco filed for its trademark DIGIPOWER and declared a date of first use in commerce of April 1, 1998. The mark DIGIPOWER registered before the United States Patent and Trademark Office on November 6, 2001.
Respondent purchased DIGIPOWER.COM on June 22, 2001, about a year
after Complainant filed for its trademark and about 3 years after Mizco began
using the mark in commerce. Complainant’s trademark is
DIGIPOWER. Respondent’s domain name is DIGIPOWER.COM and the
website currently resolves to a parked page. In September 2001,
shortly after the purchase, Respondent had the site for sale. At times in the
past, the domain name has redirected to competitor sites like <BATTERIES.COM> for inquiries related to “batteries and adapters”.
In a remarkably similar fact pattern, the Panel held for Complainant in the
recent case Lumen, Inc. v. Daniel Stewart. In that case, the Panel held that
Complainant’s registered trademark was sufficient to show date of first use and
adequate secondary meaning for these purposes. Specifically, the Panel noted
that:
“…Complainant’s USPTO registration lists a first use in commerce date of January 15, 2009, relevant in light of Respondent’s domain name registration in September 2010. The Panel considers such self-reported evidence at the time of the application in a federal publicly-filed document sufficient to show both date of first use and the beginning date for continuous use and accretion of adequate secondary meaning in Complainant’s mark, absent proof to the contrary; and thus Complainant’s submission shows sufficient proof to support a finding of common law rights in the THE LIGHTBULB STORE mark, dating back as far as January 15, 2009, Complainant’s first use, because it permits the presumption of continuous use from that date.”
Lumen Inc. v. Daniel Stewart, FA 1602828 (Forum March 17, 2015).
See also Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29,
2010) (holding that complainant acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
As compared to Lumen, Complainant declared a date of first use in April
1998, purchased the domain name DIGIPOWERSOLUTIONS.COM in
November 1998, and filed for its DIGIPOWER trademark in February 2000. This
is relevant in light of Complainant’s domain name registration about a year later
right before Mizco’s mark registered. Accordingly, as in Lumen, this evidence at
the time of application in a Federal publicly-filed document is sufficient to show
both date of first use and the beginning date for continuous use and accretion of
adequate secondary meaning in Complainant’s mark. Thus, Complainant’s
submission shows sufficient proof to support a finding of common law rights in
the DIGIPOWER mark, dating back as far as April 1998, Complainant’s first use,
because it permits the presumption of continuous use from that date. The facts in the instant case are well supported by the holding in Lumen and so, the domain name should be transferred as it was in the Lumen case.
Additionally, “[it] has been established that the addition of a generic top-level
domain is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.” See Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Forum Dec. 6, 2003). As such, the use of the .COM is not relevant when determining whether the domain name is
identical.
With that in mind, it is clear that Complainant has trademark rights associated
with its mark, DIGIPOWER. Given Respondent’s purchase of an identical
domain name, the marks are confusingly similar. The Panel should therefore find that Complainant established rights in the mark contained in its entirety within the
dispute domain name that Respondent purchased. Complainant has satisfied the elements of ICANN Policy ¶ 4(a)(i).
[B.] Respondent Has No Legitimate Rights in the Domain Name
It is well settled law that there are no rights or legitimate interests in a domain
name where Respondent is not commonly known by the mark and has never
asked for permission to use or license the mark. See Ferring B.V. v. John
Mastrell / ferringpharmaceutical, FA 1632792 (Forum Sept. 9, 2015)
(holding no legitimate interest in mark because the “the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii)); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
In the instant case, WHOIS information for the at-issue domain name lists Chi
Hyon as the domain name’s registrant and there is nothing in the record that
otherwise suggests Respondent is commonly known by the DIGIPOWER mark. Additionally, Mizco has not granted Respondent any license, permission, or authorization to use its DIGIPOWER mark in the disputed domain name. As such, the Panel should conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that Respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that Respondent was commonly known by the disputed domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark).
Additionally, at this time, there is no active use of the domain name and there has not been for several years. Failure to make active use of a domain name is not a bona fide offering of goods or services under the Policy. See Diners Club
International Ltd. v. Private Registrations Aktien Gesellschaft, FA 1362464 (Forum Jan. 13, 2011) (holding that “a parked website unrelated to
Complainant’s business…is not a bona fide offering of goods or services….”);
See also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that Respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Moreover, in the past, Respondent has provided links to competitor sites. Respondent is not making a legitimate noncommercial fair use of
the domain name. Now, the domain name is parked and inactive and in the past it was only using the domain name to misleadingly divert consumers to other sites. It has long been held that “maintaining a website that features hyperlinks leading to businesses that compete with Complainant is not a bona fide offering of goods or services under the Policy and is not a legitimate noncommercial use. AgreeYa Solutions, Inc. v. Domain Privacy Group, FA 1479037 (Forum Feb. 18, 2013); see also Disney Enters., Inc. v. Kamble, FA 918556 (Forum Mar. 27, 2007); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003)(“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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)”).
The Panel should undoubtedly find that Respondent does not have legitimate
rights in the domain name given that Respondent is not commonly known by this
mark. Respondent also has not and is not making a bona fide, legitimate
offering of services given the linkage to competing sites in the past and the
current parked site resolving at the domain name at this time. Accordingly, the
domain name should be transferred to Complainant.
[C.] Respondent Acted in Bad Faith
Respondent’s infringing domain name was registered after Complainant’s
trademarks were in use and after Complainant’s domain name and website had
been created. “The Panel may look beyond Policy ¶ 4(b) to the totality of the
circumstances when determining bad faith.” Diners Club International Ltd. v.
Private Registrations Aktien Gesellschaft, FA 1362464 (Forum Jan. 13,
2011).
In Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May
18, 2000), the panel stated that “the requirement in the ICANN Policy that a
complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.” Bad faith can certainly be inferred from the totality of the circumstances here.
First, Respondent uses the disputed domain name to resolve to an inactive
website. It has been held that Respondent’s use of the confusingly similar
disputed domain name, even with an inactive website, is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (ForumAug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Second, it would be very difficult to explain the purchase of the disputed domain
name without bad faith involved. Complainant’s mark is a suggestive, coined
mark alluding to power for digital devices. In Cellular One Group v. Brien, the
Panel found bad faith when (1) the domain name contained Complainant’s
mark in its entirety; (2) the mark was a coined word and in use prior to the
respondent’s registration of the domain name; and (3) Respondent failed to
allege any good faith basis for use of the domain name. D2000-0028 (WIPO
Mar. 10, 2000); See also Albrecht v. Natale, FA 95465 (Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable
possibility, and no evidence from which to infer that the domain name was
selected at random since it entirely incorporated Complainant’s mark.)
In this case, the totality of the circumstances certainly supports the fact that the
Respondent acted in bad faith. Given the timing of the registration of the domain
name, the parked nature of the domain presently, the linking to competing sites in the past, and the use of a coined, identical trademark, bad faith registration is the only logical finding.
Pursuant Section 4(a)(iii) of the UDRP Rules, the circumstances above are evidence that the use of the domain name by Respondent is in bad faith.
B. Respondent
[A] Respondent Makes No Reply In Relation To The First Element Of The Policy
[B] Respondent Should Be Considered As Having Rights Or Legitimate Interests In Respect Of The Disputed Domain Name
Respondent registered <digipower.com> on
June 22, 2001 because it is a combination of two English words
“digi”(abbreviation of digital) and “power”, to which Respondent believed no
party could claim exclusive rights.
Complainant's business began in April 1998, but was not well known in Korea when the domain name was registered. Respondent has never known of Complainant' business name or trademark in Korea.
The registration of domain names that contain common words and terms are permissible on a first-come, first served basis. Respondent has rights and legitimate interests in the <digipower.com> domain name.
[C] The Disputed Domain Name Should Not Be Considered As Having Been Registered And Being Used In Bad Faith
Respondent has consistently used the disputed
domain in good faith.
Respondent used domain names to display
PPS(pay-per-sale) links supplied by Rakuten marketing related to general
interest topics related to the general meaning of the words "digi"
and "power."
Respondent did not select the links on its
resolving website with the intent to profit from any trademark owners,
including Complainant. The links result from
selections made by automated software technology.
Respondent is producing content on the website
and is using the domain name to notify users of such information.
Even if Respondent would sell the domain name,
there is no evidence to show or suggest that Respondent’s main purpose was to
sell it to Complainant or a competitor.
The Complaint was filed more than 16 years after the disputed domain name was registered. This long delay bars the Complaint under the doctrine of laches, which has been recognized under the Policy. Long delay also raises an inference that Complainant does not truly believe that Respondent registered the disputed domain name and is using the same in bad faith.
Complainant asserts use of the mark DIGIPOWER in commerce since April 1998 in connection with “external battery packs, batteries, ac adapters, battery chargers, digital camera accessories, namely, carrying cases, gadget bags, tripods, camera cleaning kits, camera connector cables, LCD screen protectors, carrying straps, telephoto lenses, wide angle lenses and rechargeable batteries and ac chargers for use with digital cameras, personal digital assistants and cellular phones. Complainant registered the DIGIPOWER mark with the United States Patent and Trademark Office (“USPTO”) on November 6, 2001. Complainant alleges common law rights in the DIGIPOWER mark dating back as far as April 1998, the date of Complainant’s first use as represented in its USPTO trademark registration, which gives rise to a presumption of continuous use from that date. Respondent has proffered no evidence to rebut this presumption.
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.
The Disputed Domain Name <digipower.com> is identical with Complainant’s registered mark DIGIPOWER. The top-level domain “.COM” is irrelevant and is not to be considered in deciding whether a domain name is identical or confusingly similar under the Policy.” See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Forum Dec. 6, 2003).
The Panel finds that Complainant has satisfied the first element of the Policy, ¶ 4(a)(i).
The record reflects that Respondent, Chi Hyon, is not commonly known by the Disputed Domain Name. Complainant had not authorized Respondent to register or use a domain name containing its registered mark. Complainant’s evidence shows that the Disputed Domain Name is “parked” and inactive, and was used by Respondent in the past to misleadingly divert consumers to sites of Complainant’s competitors selling batteries and adapters.
Complainant having made out a prima facie case that Respondent lacks rights or legitimate interests in and to the Disputed Domain Name, the burden then shifts to Respondent to come forward with evidence to show that it does have rights or legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Although Respondent registered the Disputed Domain Name sixteen years ago, Respondent has failed to produce evidence of use of the Disputed Domain Name to make 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), beyond the bare assertion that “the website [to which the domain name resolves] is still under development, and Respondent plans to complete it in a short time”.
The Panel finds that Respondent has no legitimate interest in respect of the Disputed Domain Name. Complainant has satisfied the second element of the Policy, ¶ 4(a)(ii).
Respondent claims it registered the <digipower.com>domain name because it is a combination of the two English words “digi,” the abbreviation of the word “digital,” and the word “power,” to which Respondent believed no party could claim exclusive rights, but has proffered no evidence to establish its purpose in registering the Disputed Domain Name, nor that Respondent made use of the domain name in a manner consistent with any proper purpose. In fact, the only use Respondent has made of the Disputed Domain Name is to link it to batteries, which is the exact same business Complainant is in.
In light of the notoriety of Complainant's mark, the Panel finds that Respondent’s inactive holding of the Disputed Domain Name constitutes bad faith registration and use. Complainant has satisfied the third element of the Policy, ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <digipower.com> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Esq., as the Chair, along with Ho-Hyun Nahm, Esq.,
and The Honorable Neil Anthony Brown QC, Panelists
Dated: November 20, 2017
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