VeriSign, Inc. v. Dong-Soo Kim
Claim Number: FA0609000805013
Complainant is VeriSign, Inc. (“Complainant”), represented by Patrick McGarry, of McGarry & McGarry, LLC, 120 N. LaSalle Street, Suite 1100, Chicago, IL 60602. Respondent is Dong-Soo Kim (“Respondent”), 157-3 Seocho-dong Seocho-gu, Seoul 137-070, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <verisigncorp.com>, registered with Communigal Communications Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2006.
On September 28, 2006, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <verisigncorp.com> domain name is registered with Communigal Communications Ltd and that Respondent is the current registrant of the name. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 October 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2006 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@verisigncorp.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <verisigncorp.com> domain name is confusingly similar to Complainant’s VERISIGN mark.
2. Respondent does not have any rights or legitimate interests in the <verisigncorp.com> domain name.
3. Respondent registered and used the <verisigncorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VeriSign, Inc., holds a registration with the United States Patent and Trademark Office (“USPTO”) for the VERISIGN mark (Reg. No. 2,302,350 issued December 21, 1999). Complainant utilizes the VERISIGN mark in connection with its technology and communications products.
Respondent registered the <verisigncorp.com> domain name on March 21, 2005. To date, Respondent has not posted any content on a website associated with the disputed domain name, and there is no evidence that Respondent is making preparations to use the disputed domain name.
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."
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(e), 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 (Nat. Arb. 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.”).
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’s registration of the VERISIGN mark with the USPTO predates Respondent’s registration of the disputed domain name by many years. The Panel finds that Complainant’s registration of the VERISIGN mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <verisigncorp.com>
domain name is confusingly similar to Complainant’s VERISIGN mark. The disputed domain name includes
Complainant’s mark in its entirety with the additional term “corp.” The term “corp” is a common abbreviation for
the word “corporation” and appears to be descriptive of Complainant’s business
and a large business organization, or corporation. The Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does
not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the <verisigncorp.com> domain name. Complainant’s assertion constitutes a prima
facie case pursuant to the Policy, thus, shifting the burden to Respondent
to demonstrate that it does have rights or legitimate interest pursuant to
Policy ¶ 4(a)(ii). Respondent failed to
avail itself of the opportunity to present the Panel with evidence and
arguments in support of its rights and legitimate interests by failing to
submit a Response. The Panel considers
this failure to respond as potential evidence that the Respondent lacks rights
or legitimate interests.
Notwithstanding Respondent’s failure to respond, the Panel will evaluate
the available evidence to determine whether Respondent has rights or legitimate
interests as outlined in Policy ¶ 4(c).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also Bank of
Am. Corp. v. McCall, FA 135012 (Nat. Arb.
Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain name.”)
Respondent is not currently making active use of the <verisigncorp.com> domain name, as the disputed domain name does not resolve to any content. Respondent’s nonuse of the disputed domain name cannot constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial use pursuant to Policy ¶ 4(c)(iii). There is no available evidence that Respondent is engaged in demonstrable preparations to use the disputed domain name. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
There is no evidence that Respondent
is commonly known by the <verisigncorp.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Dong-Soo Kim,” an identification with no obvious relationship to
the disputed domain name. Complainant asserts
without contradiction that Respondent is not affiliated with Complainant and
does not have authorization from Complainant to reflect Complainant’s mark in a
domain name. The Panel finds that
Respondent is not commonly known by the disputed domain name as outlined in
Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where the respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel is not limited to the circumstances outlined in
Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and
use. See Digi Int’l Inc. v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets
forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in [¶
4(b)], does not mean that the domain names at issue were not registered in and
are not being used in bad faith.”).
There is no evidence that Respondent is engaged in
preparations to use the disputed domain name, and even if such preparations
were extant, it is difficult to imagine a good faith use of the disputed domain
name since it contains Complainant’s mark in its entirety. The Panel finds that Respondent’s failure to
use the disputed domain name, or demonstrate preparations for the use of the
disputed domain name is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <verisigncorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 14, 2006
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