national arbitration forum

 

DECISION

 

The Burton Corporation v. Com & Networks

Claim Number:  FA0602000646033

 

 

PARTIES

 

Complainant is The Burton Corporation (“Complainant”), represented by Douglas R. Wolf, of Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, Massachusetts 02210. Respondent is Com & Networks, Inc. (“Respondent”), 207-1501 Metro Palace, Manchon 1-dong, Suseong-gu, Daegu, 706021, South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <anon.com>, registered with CyDentity, Inc. d/b/a CyPack.com (“CyDentity”).

 

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.

 

Kyung-Han Sohn as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum on March 9, 2006.

On March 9, 2006, upon request from the National Arbitration Forum, CyDentity replied by e-mail to the National Arbitration Forum and provided the registration date, expiration date, and update date of the <anon.com> domain name and the information of Respondent.

 

On March 10, 2006, the National Arbitration Forum sent a notice to Complainant to file a Korean translation within five (5) days from the date of the notice received.

 

On March 13, 2006, a Korean Notification of complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a starting date of March 13, 2006 and a deadline of April 3, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent.

 

By April 3, 2006, the National Arbitration Forum received no response from Respondent. However, the Response was received in electronic form on April 4, 2006.  the Response was not received in hard copy.

 

On April 11, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kyung-Han Sohn as Panelist.

 

The Panel may issue its decision based on the documents submitted and in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”), Rules, the National Arbitration Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant makes the following assertions:

 

1. Respondent’s <anon.com> domain name is identical to Complainant’s ANON mark.

 

2. Respondent does not have any rights or legitimate interests in the <anon.com> domain name.

 

3. Respondent registered and used the <anon.com> domain name in bad faith.

 

B. Although Respondent failed to submit a Response by the due date in this proceeding, the belated response states as follows:

 

1. Complainant has no right to use <anon.com> domain name.

 

2. It is suspicious that Complainant’s behavior appears to be reverse squatting.

 

3. The word “anon” is in every dictionary in the world.

 

4. Respondent does not have any interest with Complainant.

 

FINDINGS

 

Complainant is a manufacturer and seller of, among other things, snowboards, sunglasses, goggles, and other sportswear and sporting goods. Complainant sells goggles and sunglasses under the trademark ANON (the “Trademark”). On July 18, 2000, Complainant filed the aforementioned registration for the ANON trademark with the United States Patent and Trademark Office (“USPTO”).

 

Respondent registered the domain name <anon.com> (the “Domain Name”) on November 1, 2000 through CyDentity, which is located in Seoul, Korea three (3) months after the application for registration of the Trademark was filed and Respondent has renewed the registration of the Domain Name which will expire on November 1, 2006.

 

Complainant ultimately obtained U.S. Federal Registration No. 2,568,324 dated May 7, 2002 for the trademark ANON about nineteen (19) months after the registration of the Domain Name.

 

Complainant requested on March 9, 2006, after sixty-four (64) months had passed since Respondent had registered and used the Domain Name, that the Panel order the transfer of the Domain Name to Complainant for the reason that Respondent’s acts constitute bad faith registration and use of the Domain Name in violation of the Policy.

 

DISCUSSION

 

In view of Respondent’s deficient response, the Panel may decide this administrative proceeding on the basis of Complainant’s representations pursuant to paragraphs 5(e) of the Rules. However, Paragraph 15(a) of the Rules also provides that this Panel may “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 right; 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.

 

Although this Panel could have decided this dispute based upon the Complaint since Respondent did not submit a response by the due date, this Panel decided to continue to proceed with the dispute based on the materials submitted by Respondent on the following two (2) grounds: 1) Respondent submitted its Response only one (1) day after the due date which is fixed by the Rules and 2) the Panel may, on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel pursuant to Paragraph 10(c) of the Rules.

 

Identical and/or Confusingly Similar

 

Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark or service mark to establish rights in a mark. Thus, it is not necessary for the ANON trademark owned by Complainant to be registered in order to file this Complaint. However, since the aforementioned Trademark has been used on goggles and sunglasses, snowboards, and other sporting goods under ANON and a U.S. Federal Registration No. 2,568,324 was obtained on May 7, 2002, it appears that Complainant has a right to the Trademark.

 

Respondent registered the Domain Name dated November 1, 2000. The Domain Name <anon.com> is identical to Complainant’s registered trademark ANON in all respects except for the “.com” and the use of small letters.

 

As a result, the Panel finds that Respondent’s <anon.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <anon.com> domain name for the following reasons:

 

l      Respondent does not own any trademarks containing ANON or any similar term. Complainant has searched the USPTO and has found no applications or registrations which indicate any rights to ANON belonging to Respondent.

l      Respondent has not been commonly known by the mark ANON, or by the Domain Name (as an individual, business or other organization).

l      Respondent has not made any demonstrable preparations to use the Domain Name in connection with any bona fide offering of goods or services.

l      Respondent is not making any legitimate non-commercial or fair use of the Domain Name.

l      Respondent is not licensed by Burton to use the mark ANON.

 

However, although Complainant has to prove foregoing reasons pursuant to 4(a) of the Policy and 3(b)(ix)(2) of the Rules, it appears that Complainant does not submit any evidence proving that the foregoing facts are present. Also, the point in time Respondent registered the Domain Name with CyDentity is nineteen (19) months before Complainant registered its trademark at the USPTO. Therefore, the fact that the filing date for registering the Trademark is a bit ahead of the registered date for the Domain Name is not sufficient to determine that Respondent lacks rights or legitimate interests based on the aforementioned fact itself.

 

As a result, the Panel finds that Policy ¶ 4(a)(ii) has Not been satisfied.

 

Registration and Use in Bad Faith

 

Finally, Complainant has alleged that Respondent’s website links to various sporting goods related websites which are products and trademarks normally associated with Complainant’s products such as goggles, snowboard and other sporting goods. Although Complainant presented evidence which shows that Respondent directly uses Complainant’s trademarks such as “Burton” and “Burton Snowboard” to confuse Internet users who know it is Complainant’s and Respondent generates revenue by submitting the first page of the Domain Name printout of View Source of the Domain Name and FAQ of domainsponsor.com, this evidence only recognizes the fact that Respondent’s website is in relation to domainsponsor.com. Also, Complainant did not submit evidence sufficient to admit the fact that Respondent generates 50% of profit from domainsponsor.com by setting up paid search and popup advertising on websites under the Domain Name.

 

In the meantime, based on the Response submitted by Respondent, this Panel finds that there are many subcategories including ANON under Respondent’s website as opposed to the Complaint submitted by Complainant. In addition, when ANON is clicked among these subcategories, some links appeared, which direct Internet users to go on websites selling some of ANON products. Therefore, there is no sufficient evidence to admit the fact that Respondent seeks commercial profit by the use of the Domain Name to operate a website featuring links associated with Complainant that will result in confusion among Internet users as to the affiliation with or sponsorship of Complainant.

 

The Panel finds that Policy ¶ 4(a)(iii) has Not been satisfied.

 

DECISION

 

Not having established the two elements of which all three elements must be satisfied under the Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is ordered that the <anon.com> domain name REMAIN WITH Respondent.

 

 

Kyung-Han Sohn, Panelist

Dated: April 25, 2006