Franklin Covey Co. v. franklincoveykorea
Claim Number: FA1803001774660
Complainant is Franklin Covey Co. (“Complainant”), represented by Alissa R. Owen of Franklin Covey Co., Utah, USA. Respondent is franklincoveykorea (“Respondent”), of (Redacted).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <franklincoveykorea.com>, registered with Gabia, Inc..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 7, 2018, Gabia, Inc. confirmed by e-mail to the Forum that the <franklincoveykorea.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 March 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2018 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@franklincoveykorea.com. Also on March 12, 2018, the 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Franklin Covey Co., is a leading global provider of effectiveness training, business planning, productivity, and organizational products and training. Complainant uses the FRANKLINCOVEY marks to promote its products and services. Complainant has rights in the FRANKLINCOVEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,493,835, registered Apr. 14, 1999). See Amend. Compl. Annex 3. Respondent’s <franklincoveykorea.com> domain name is confusingly similar to Complainant’s mark because it merely appends the geographic term “korea” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <franklincoveykorea.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its FRANKLINCOVEY mark in any fashion and Respondent is not commonly known by the disputed domain name. Respondent is not using the <franklincoveykorea.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Complainant’s customers to other sites.
Respondent registered and is using the domain name in bad faith. Respondent uses the domain name to create confusion between Complainant’s mark and the disputed domain name for Respondent’s own commercial gain. Further, Respondent registered the <franklincoveykorea.com> domain name with constructive and actual notice of Complainant’s rights in the FRANKLINCOVEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Korean language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Korean language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Korean language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, having reviewed the applicable rules regarding UDRP proceedings pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
1. Complainant is a United States company engaged in the provision of effectiveness training, business planning, productivity, and organizational products and training.
2. Complainant has established its trademark rights in the FRANKLINCOVEY mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,493,835, registered Apr. 14, 1999).
3. Respondent registered the <franklincoveykorea.com> domain name on May 8, 2014.
4. Respondent uses the domain name to divert Complainant’s customers to other sites dealing with management planning and related subjects.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Identity Theft
Respondent contends that it has been the victim of identity theft. Specifically, on March 13, 2018, the Forum received email communication from Respondent stating that it does not own the disputed domain name. Further, Respondent explained that the true owner is a company named “franklincoveykorea,” a Franklin Covey US licensed franchise, and that the owners of the franchise are Mr. Abdul Aziz and Mr. Siddique. With the exception of Respondent’s emails denying registration the domain name, Respondent has not provided other evidence in support of a claim of stolen identity. Further, as of April 2, 2018, the Forum had not received any formal Response and proceeded with the Panel appointment.
In the light of the foregoing circumstances the Pane will consider whether it is appropriate to redact Respondent’s identity from the decision when it is published. In that regard, the Panel will take the following rules and prior decisions into account in considering that issue.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
However, according to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.” The Panel notes prior decisions which hold that the registrar-confirmed registrant of a disputed domain (per the WHOIS at commencement of the proceeding) is the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). In this case, neither Claimant nor Respondent have explicitly requested such redaction, but the Panel finds Respondent’s email to imply such a request. Consequently, the Panel determines that the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s name and location from the Panel’s decision, despite the fact that neither party has explicitly requested such redaction.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends it established rights in the FRANKLINCOVEY mark through registration with the USPTO (e.g., Reg. No. 2,493,835, registered Apr. 14, 1999). See Amend. Compl. Annex 3. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant established rights in the FRANKLINCOVEY mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <franklincoveykorea.com> domain name is identical or confusingly similar to Complainant’s FRANKLINCOVEY mark. Complainant submits that Respondent’s <franklincoveykorea.com> domain name is confusingly similar to Complainant’s mark because it merely appends the geographic term “korea” and the gTLD “.com” to the fully incorporated mark. The addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Skype Ltd. v. Sacramento, FA 747948 (Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As such, the Panel finds that Respondent’s <franklincoveykorea.com> domain name is confusingly similar to Complainant’s FRANKLINCOVEY mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FRANKLINCOVEY mark and to use it in its domain name and has added the geographic term ‘korea’ which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the activities of Complainant in Korea;
(b) Respondent registered the disputed domain name on May 8, 2014;
(c) Respondent uses the domain name to divert Complainant’s customers to other sites dealing with management planning and related subjects.
(d) Respondent has engaged in the foregoing activities without the knowledge or consent of Complainant;
(e) Complainant argues that Respondent does not have rights and legitimate interests in the <franklincoveykorea.com> domain name as Complainant has not licensed or otherwise authorized Respondent to use its FRANKLINCOVEY mark in any fashion and Respondent is not commonly known by the disputed domain name. A respondent may lack rights and legitimate interests in a domain name where the respondent was not authorized to incorporate a complainant’s trademark into the domain name and said respondent fails to provide evidence that it is commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). In lieu of a Response, WHOIS information may be considered when determining whether or not a respondent is commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name). Complainant contends that although the WHOIS information of record lists “franklincoveykorea” as the registrant, Respondent is not commonly known by the domain name because Respondent failed to provide additional affirmative evidence beyond the WHOIS information. Therefore, the Panel concludes that Respondent is not commonly known by the <franklincoveykorea.com> domain name;
(f) Complainant claims that Respondent is not using the <franklincoveykorea.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as, instead, Complainant alleges that Respondent uses the disputed domain name to divert Complainant’s customers to other sites by displaying competing hyperlinks at the resolving website. Use of a domain name to feature hyperlinks that compete with a complainant’s business may not be considered a bona fide use under Policy ¶ 4(c)(i) or 4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provided screenshots of the <franklincoveykorea.com> domain name’s resolving website which indicate that the site features hyperlinks for “Principles of Management,” “Franklin Covey Day Planner,” and “Listen to 7 Habits of highly Effective People by Stephen R. Covey.” See Amend. Compl. Annex 5. Accordingly, the Panel finds that Respondent used the domain name to promote competing hyperlinks and holds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <franklincoveykorea.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to benefit commercially by offering competing goods or services. Commercially benefiting via intentional confusion can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshot evidence of the resolving website for the disputed domain name which displays pay-per-click hyperlinks for Respondent’s presumed commercial gain. See Amend. Compl. Annex 5. The Panel agrees that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant contends that in light of the fame and notoriety of Complainant’s FRANKLINCOVEY mark, it is inconceivable that Respondent could have registered the <franklincoveykorea.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case decisions decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s <franklincoveykorea.com> mark has created significant good will and consumer recognition around the world since at least 1997. See Compl. p. 3. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <franklincoveykorea.com> was registered and subsequently used it in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FRANKLINCOVEY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <franklincoveykorea.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated April 11, 2018
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