Unplugg, Inc. v. JInsoo Yoon
Claim Number: FA1803001778023
Complainant is Unplugg, Inc. (“Complainant”), represented by Jet Arnaez of Unplugg, Inc., New York, USA. Respondent is JInsoo Yoon (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unplugg.com>, registered with DropCatch.com 675 LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2018; the Forum received payment on March 20, 2018.
On March 21, 2018, DropCatch.com 675 LLC confirmed by e-mail to the Forum that the <unplugg.com> domain name is registered with DropCatch.com 675 LLC and that Respondent is the current registrant of the name. DropCatch.com 675 LLC has verified that Respondent is bound by the DropCatch.com 675 LLC 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 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@unplugg.com. Also on March 30, 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.
A timely Response was received and determined to be complete on April 19, 2018.
An Additional Submission from Complainant was received on May 1, 2018. An Additional Submission was also received from Respondent on April 30, 2018. The Additional Submission from Respondent did not comply with Rule 7 as it, like the original Response, was submitted in the Korean language even though it was ordered to submit it in English.
On May 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in English, thereby making the language of the proceedings in English. However, the Respondent in this matter submitted its Response primarily in the Korean language.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English language Complaint and Commencement Notification, and, determines that the remainder of the proceedings shall be conducted in English.
A. Complainant
Complainant is engaged in the professional personal care services market. Complainant also uses its mark when working with personal care providers to deliver personal care services on-site at the locations of its corporate clients and customers. Complainant has rights in the UNPLUGG mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,414,412, registered Feb. 27, 2018). See Compl. Attachment B. Respondent’s <unplugg.com> domain name is identical to Complainant’s mark as it contains the mark in its entirety.
Respondent has no rights or legitimate interests in the <unplugg.com> domain name. Respondent is not commonly known by the UNPLUGG mark and has no permission to use the UNPLUGG mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent only registered the domain name to offer it for sale. See Compl. Attachment E.
Respondent registered and uses the <unplugg.com> domain name in bad faith. Respondent’s only use of the <unplugg.com> domain name is to offer it for sale from USD $4,950 to USD $25,000 -- values which are in excess of out of pocket expenses. See Compl. Attachment E. Further, Respondent is a cybersquatter with a history of acquiring infringing domain names and has a history of prior adverse UDRP decisions. See Compl. Attachment F.
B. Respondent
Other than establishing that the disputed domain name was registered on May 11, 2015, Respondent’s entire Response is written in the Korean language and is, therefore, a non-responsive Response.
C. Additional Submissions
Complainant
On April 26, 2018, Complainant was ordered to provide evidence of trademark rights that subsisted in it prior to May 11, 2015, the date the disputed domain name was registered.
In response to this order, Complainant made three arguments. First, it admitted against interest that it possessed no trademark rights itself in the mark UNPLUGG prior to May 11, 2015. Second, it argued that it may merely piggyback onto the trademark rights of others to establish secondary meaning. Third, it argued that Respondent was engaged in such blatant bad faith that it should be forgiven from establishing prior trademark rights.
Respondent
Respondent submitted an Additional Submission in response to the order of April 26, 2018 as well; however, this response, too, was in the Korean language.
Complainant has failed to carry its burden regarding the first element under the Policy, that it has prior trademark rights in and to the trademark that makes up the disputed domain name. Therefore, the Panel has no choice but to dismiss this complaint. As such, the Panel will address this issue below but forgo an analysis of the rest of the elements in this dispute.
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 has failed to carry its burden regarding the Policy requirement that it possess prior and valid trademark rights in the mark UNPLUGG, the mark that makes up the bulk of the disputed domain name and which is at issue in this proceeding. As such, this complaint shall be dismissed.
In its original complaint, Complainant based its trademark rights on a trademark registration for the mark UNPLUGG which issued on Feb. 27, 2018. See Compl. Attachment B. As this date is subsequent to the date Respondent registered the disputed domain name, the only way this element of this proceeding can be satisfied is if Complainant has secondary meaning in the mark which predates Respondent’s registration of the disputed domain name. As this point was not established in Complainant’s original complaint, the Panel gave Complainant the extra opportunity to establish prior trademark rights. In an order dated April 26, 2018, this Panel requested that Complainant provide evidence of such secondary meaning that predated the registration of the disputed domain name. In response to this order, Complainant responded with language that reads, in part, as follows:
Complainant is unable to provide evidence of secondary meaning prior to May 11, 2015 to its trademark UNPLUGG. . .
As such, Complainant fails to satisfy its burden to establish under the Rules that it has a trademark registration or a mark with secondary meaning that precedes the registration of the disputed domain name.
However, Complainant’s arguments regarding valid, prior trademark rights do not end here. Complainant further argues that there are valid trademark rights in and to the trademark UNPLUGG because of others’ use of the mark in commerce. Complainant cites no cases that support the proposition that the Rules allow a complainant to piggyback on others’ trademark rights to establish its own trademark rights. To the extent that such panel opinions exist, they are wrong and inapplicable. The Rules do not permit one complainant to rest on the trademark rights of another, with no license or nexus to establish a relationship between two users, to establish its own trademark rights and then rely on those trademark rights to enforce the Policy against a third party. In its Additional Submission, Complainant provides apparent screen shots of others’ usage of the trademark UNPLUGG and attempts to rely on these other uses to establish trademark rights in itself. Although commenting on the strength of a trademark is generally beyond the scope of a Panel opinion, it is worth pointing out that much of this usage by others that Complainant relies on may be dismissed as they are not evidence of registrations and many, if not most, are generic uses of a weak trademark.
The balance of Complainant’s Additional Submission is irrelevant to this first element. Complainant would have this Panel believe that Respondent has engaged in such blatant bad faith that this first element should be ignored. The Panel is quite certain that Respondent is, at least, not responsive in its filing of its Responses in the Korean language and may very well be engaged in bad faith use and registration of the disputed domain name. However, the Panel refuses to accept the invitation that it ignore this essential first element of a UDRP proceeding.
Complainant goes to much effort in its Additional Submission arguing that Section 3, Third UDRP Element, of the WIPO Overview 3.0 permits it to ignore the first element of a UDRP proceeding, the requirement that the complainant have prior trademark rights in and to the trademark that is arguably confusingly similar to the disputed domain name. To support this claim, Complainant cites Americor Mortgage, Inc. v. Robert D. Bowman, Claim Number: FA0002000093548. This case does not support this proposition. In fact, this case stands for precisely the finding made by the Panel. In the American Mortgage case, complainant used its ZAPLOAN mark starting in 1995 in relation to mortgage lending services. Complainant registered the mark with the United States Patent and Trademark Office as Registration No. 2,144,120 on March 17, 1998. Complainant used the mark continuously and invested large sums of money into its promotion. That is, it had secondary meaning in the mark dating back at least to 1995. Respondent registered the disputed domain name on April 14, 1999, some 4 years after secondary meaning was established in complainant. As such, the Panel in that case appropriately found prior rights in and to the trademark upon which the claim there was based. This is precisely what Complainant here failed to do.
Rather, Complainant here jumps past the first element and lands on the third element hoping that this showing of Respondent’s bad faith would outweigh its obligation to establish that it had trademark rights that preceded Respondent’s registration of the disputed domain name. Nowhere do the cases stand for the proposition that if the respondent is bad enough, some or any of the three elements in a domain name proceeding may be ignored.
In the same order of April 26, 2018, Respondent was ordered to provide a Response in English. It troubles the Panel that both the initial language requirement and the order dated April 26, 2018 were essentially ignored by Respondent as it responded to both in the Korean language and, therefore, will be deemed non-responsive. However, one does not have to reach any of Respondent’s non-responsive Responses, to come to the conclusion that Complainant here has failed to meet its burden regarding the first element that it possesses prior trademark rights in or to the disputed domain name.
As such, the Panel finds that Complainant has failed to meet its initial burden and will forgo an analysis of the subsequent elements under the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <unplugg.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: May 7, 2018
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