Walsh Bishop Associates, Inc. v. Honggi, Honggi Kim
Claim Number: FA0701000907521
PARTIES
Complainant is Walsh Bishop
Associates, Inc. (“Complainant”), represented by Linda M. Byrne, of Crawford
Maunu PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <with.com>, registered with Register.com, Inc.
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2007.
On February 1, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <with.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 February 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2007, 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@with.com by e-mail.
A timely Response was received on February 16, 2007. It was deficient under ICANN Rule 5(a) as it was not received in hard copy.
An Additional Submission was received from Respondent on February 19, 2007. It was deficient under Supplemental Rule 7, as it was not accompanied by the required payment. Respondent submitted further Additional Submissions on February 20, 2007, which are deficient under Supplemental Rule 7. Supplemental Rule 7(e) permits only one Additional Submission (7(a)) or response to an Additional Submission (7(c)) to be filed per party.
On February 21, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant contends as follows:
1
Complainant owns and operates a well-known business
called “Walsh Bishop” in
2 By virtue of its preparations to use the WITH trademark, and Complainant’s federal trademark application for WITH, Complainant owns valid rights in the WITH trademark. The <with.com> domain name is identical to Complainant’s WITH mark.
3 Respondent has no statutory or common-law trademark rights or any other rights or legitimate interest to the mark WITH or in the infringing domain name <with.com>. The Respondent is not commonly known by the domain name. The <with.com> website immediately resolves to a website featuring third-party links and makes no reference to the “With” trademark on the website. On December 5, 1996, Respondent registered the domain name <with.com> with Register.com. The <with.com> website provides a wide variety of links to various third-party sites, primarily game sites.
4 Respondent is using Complainant’s mark to attract Internet users to Respondent’s website for Respondent’s commercial benefit. The content of Respondent’s site allows computer users to link to several unrelated, third party sites, and Respondent presumably receives click-through fees as a result. Therefore the use of <with.com> can not be considered a fair use. Respondent has not made 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). In summary, Respondent has no rights or legitimate interests in the <with.com> domain name.
5 Respondent’s registration of <with.com> prevents Complainant from reflecting the WITH trademark in a <with.com> domain name to promote Complainant’s architectural design services. Moreover, Respondent has engaged in a pattern of such conduct. The last page of the <with.com> website lists approximately 60 other domain names that are associated with Respondent, divided into the following categories: game, movie, music, sports, video, image, business, story, news, communication and shop.
6
The administrative contact for <with.com>,
Mr. Junho Kim, has been the registered owner of the <pradaboji.com>
domain name, which was ordered to be transferred to Prada
7 Mr. Honggi Kim owns the following domain names: <just.com> (online games); <untrue.com> (fantasy games); <like.net>, (soliciting donations and relating to celebrities); <when.net> (celebrities and movie stars); <dislike.net> (in Korean); <feel.net>, (movie trailers); <take.net> (in Korean, with links to <beatsmoking.net> and <welcometouk.co.uk>), and <they.net> (books). Mr. Junho Kim owns <accuse.net> (soliciting donations, with links to news stories); <excessively.com> (games); <heighten.net (in Korean, with links to <hackersuniv.com>, <focushomestudy.com>, etc.); <sufficiency.net> (in Korean, with links to <hackersuniv.com>, <japancupid.com>, etc.); <resent.net> (computer games); <scold.net> (in Korean, with links to <internet-phon.co.kr>, <koreancupid.com>, etc.); <sufficiency.net> (in Korean, with links to <hackersuniv.com>, <japancupid.com>, etc.); <than.net> (advertising video rentals and cell phones); <watchfulness.com> (with links to <vitaminktown.com>, <imtelmail.co.kr>, etc.); <pxxp.com> (with links to various games); <hfhh.com> (links to various games); <sportsgames.net> (links to online sports games).
8 Respondent's activities have the potential to create actual confusion with Complainant’s mark WITH. Customers will be confused as to the source or affiliation of Respondent’s <with.com> website and as to the proper Internet site for reaching the Complainant. Other factors pointing to Respondent’s bad faith are that the <with.com> domain name was not associated with an operational website for several years, and that the <with.com> domain name was associated with a pornographic site several years ago. In the event that Respondent continues its current content, or reverts to past content for the <with.com> domain name, the effect would be tarnishment of Complainant’s “WITH” trademark and architectural design services.
B. Respondent
Respondent has not submitted a Response in hard copy. However, Respondent did timely send an email to The Forum, dated February 16, 2007, intended as a Response, and supplemented it with one email of February 19, 2007, and two emails of February 20, 2007, received by The Forum before the applicable deadline of February 26, 2007. In order to address possible fairness and natural justice concerns, as Respondent appears to be un-represented, the Panel will consider all four emails jointly as a Response. Therein, Respondent contends as follows:
1
Everybody can distinguish Complainant from the <with.com>
website, which connects
2 Respondent’s concern is buying domains, connecting them, and making people surf the Web easily. Complainant underestimates Respondent’s efforts and is giving false information about Respondent.
3 The disputed domain name is a common word in the dictionary, so it is similar to many trademarks. “With” is the 25th popular word in the English dictionary. <with.com> is the most powerful domain name among all those owned by Koreans.
4 <love.com> is important to AOL, <live.com> is important to Microsoft, <open.com> is equally important to American Express, and <with.com> is important to Respondent.
5
Nobody outside the
6 Respondent does have a legal right and legitimate interest in the domain name, otherwise he would not have bought it.
7 Every one-word domain name has value because of briefness, so that everybody will be interested in buying it. Therefore, Respondent bought it, not because of Complainant’s trademark, which nobody knows.
8 Respondent bought the domain name and used it in good faith. Although the creation date is shown to be 1996, Respondent bought the domain name in January 2004.
9 <with.com> was a free message board in Korean language during 2004-2005.
10 Respondent definitely is not related to strange web sites such as <pradaboji.com> or <hackersuniv.com>.
11 Complainant’s statement that customers will be confused as to the source of affiliation of Respondent’s website is wrong. There are lots of “with” in the world.
12 The domain name is a short word, and everybody buys the same products with same price at the nearest store, and not at a distant one.
13 Respondent never sold its domain names; he is not a domain squatter.
C. Additional Submissions
A “Reply Brief” was submitted by Complainant on March 1, 2007, and was determined to be deficient. Respondent sent five emails on March 2, 2007, and three emails on March 3, 4 and 5, 2007, respectively, to The Forum. All emails from Respondent also were considered to be deficient. The Panel has not chosen to consider the Additional Submissions by either Party, as all have been made after The Forum had appointed the Panel, and also after the Panel had begun drafting its decision. Moreover, none of these submissions appears to add any new element or argument to those already contained in the Complaint and the Response.
FINDINGS
On January 25, 2007, Complainant filed an application for the word mark WITH before the Principal Register of the USPTO (Application No. 77/090697), in international classes 35 (real estate services, namely, real estate management and consulting services), and 42 (custom design for others in the fields of architecture and interior design for commercial and residential use, interior planning and layout design services, landscape architectural design services, and interior decorating services).
The domain name at issue was registered on December 5, 1996.
Complainant failed to establish that it has rights in the WITH mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent’s <with.com> domain name is identical to the WITH mark, as the disputed domain name contains this mark in its entirety, with the addition of the generic top-level domain (“gTLD”) “.com.” Pursuant to Policy ¶ 4(a)(i), Complainant also must prove that it has rights in the WITH mark. Complainant contends that it does, because it has filed an application before the Principal Register of the USPTO, and because it intends to use the mark. This application is pending.
In order to establish common-law or unregistered trademark rights a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services, i.e. that the name has acquired secondary meaning. In the instant case, Complainant failed to present any evidence – such as amount of sales, advertising, consumer surveys or media recognition – showing that the WITH name has achieved sufficient secondary meaning, and hence trademark rights, in respect of any goods or services. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Amsec Enters., L.C. v. Sharon McCall, D2001-0083 (WIPO Apr. 3, 2001), and Australian Trade Comm’n v. Matthew Reader, D2002-0786 (WIPO Nov. 12, 2002). Nor has Complainant submitted any evidence of its alleged investment in time and money in the WITH trademark, including professional naming consultations, and preliminary production of promotional materials. Complainant has also not shown that the WITH word has acquired goodwill or reputation in a limited field, which might have established common-law trademark rights within the meaning of Policy ¶ 4(a)(i). See Imperial Coll. v. Christophe Dessimoz, D2004-0322 (WIPO Jun. 30, 2004). Therefore, the Panel is not satisfied that Complainant has rights in the WITH mark.
Had the Panel accepted that Complainant has nascent
rights in the WITH mark based on its application for registration plus
intent-to-use form, the Complaint also would have to be denied, since it fails
to meet the second and third requirements of the Policy.
“WITH” is a very common English preposition. Respondent states that “WITH” is the 25th popular [sic] word in the English dictionary.” Actually, in terms of frequency per million English words, “WITH” is ranked 17th, counting from the most recurrent word (“the”).
The wide-ranging dictionary definition for “WITH” suggests that the <with.com> domain name most probably was registered because of its generic, multi-purpose nature. This nature makes it particularly apt for generating web traffic, as many Internet users typing this word into their browsers can easily be offered links to third-party web sites, thus increasing the likelihood of click-through revenues and other income for Respondent.
At present, Respondent’s site at the disputed domain name (<with.com>) contains numerous links to other websites, most of which correspond to domain names also of a generic nature, such as <they.net>, <feel.net>, <than.net>, <when.net>, <just.com>, <sportsgames.net>, <resent.net>, etc., or to domain names with apparently no meaning at all, such as <hfhh.com>, <bbzb.com>, <pxxp.com>, <vuvv.com>, <yzzz.com> and <kqqq.com>.
It has been found that that a respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word. See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services); see also Accetta v. Domain Admin c/o Covanta Corp., FA 826565 (Nat. Arb. Forum January 2, 2007) (finding that the respondent established rights and legitimate interests through the use of the generic domain name <rollabout.com> to operate a links page that did not contain references to the complainant or its products).
It also has been found that reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of Policy ¶ 4(c): the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links; the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; the domain name in question is a “dictionary word” or a generic or descriptive phrase; the domain name is not identical or confusingly similar to a famous or distinctive trademark; and there is no evidence that the respondent had actual knowledge of the complainant’s mark. See Media General Commc’ns, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006). In the present case, Respondent appears to fully comply with this test.
Further, had Complainant succeeded in creating nascent rights in the mark WITH by filing its trademark application by January 25, 2007, the present dispute could not have existed before such date, and Respondent would accordingly be likely to have been using the domain name in connection with a bona fide offering of services, pursuant to Policy ¶ 4(c)(ii). Respondent has been using the domain name since January 2004, at the latest, or since December 1996, at the earliest.
The Panel thus finds that Respondent has rights and legitimate interests with respect to the disputed domain name.
Complainant did not produce any evidence that the disputed domain name was registered in bad faith or is being used in bad faith.
The UDRP makes no specific reference to the date of which the owner of the trademark acquired rights. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Significantly, the Policy does not require the Complainant to prove that it had rights in a trademark "as of the date of the domain name registration"”); see also Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO Sep. 23, 2001), and Motorola, Inc. v. R3 Media, D2006-1393 (WIPO Feb. 15, 2007) (“According to established precedent, Complainant need only have the rights at the time the Complaint was filed.”). Instead, the date of the registration of the domain name may be relevant to the assessment of bad faith pursuant to Policy ¶ 4(a)(iii). The Panel notes that the disputed domain name was registered on December 5, 1996, that is more than ten years before the filing of the trademark application and declaration of intent-to-use by Complainant.
Complainant failed to prove that the domain name was
registered with an existing or future WITH trademark or trademark application
in mind. See Diamond Shamrock Ref. and Mktg.
There also has been no evidence that the domain name was registered with the primary purpose of selling it to Complainant, or to anybody else. Therefore, Policy ¶ 4(b)(i) does not apply.
As to Complainant’s allegation that the domain name at issue was registered with the purpose of preventing Complainant to reflect its mark as a domain name, Complainant has only shown that a Mr. Juno Kim has been involved in the registration of one domain name found to be confusingly similar to the PRADA trademark. See Prada S.A. v. Mr. Juno Kim, D2003-0757 (WIPO Nov. 13, 2003). However, Complainant has failed to prove, as required by Policy ¶ 4(b)(ii), a) that at the moment of registering the domain name at issue Respondent had the purpose of preventing Complainant to reflect the WITH mark in a domain name, and b) that a “pattern of such conduct” was present. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (refusing to find that registration of two domain names confusingly similar to third parties marks rises to the level of a pattern of conduct).
Nor has Complainant established that Respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor,” pursuant to Policy ¶ 4(b)(iii).
Complainant also has failed to demonstrate that present or past uses of the domain name at issue were in bad faith. Presently, the disputed domain name allows Internet users to type an Internet address consisting of a generic word into their browsers, and be shown links to other websites - also corresponding to generic terms, or terms without any apparent meaning. The Panel’s finding in the previous subsection suggests that the “targeted ads” automatically posted by the AdSense Google program also do not amount to a use in bad faith, having in mind the generic nature of the WITH word. As to past uses, Complainant does not evidence a use in bad faith by Respondent in 2002, 2004 or 2005. Were it true that Respondent or the original registrant of the disputed domain name has posted adult photographic content and links to sex videos in 2001, Complainant has not shown that any of them had aimed at Complainant, its business activities or to any of its marks in any manner. Instead, Respondent and/or his predecessor in title is more likely to have been profiting from the fact that the domain name at issue consists of a generic word in the English language, very apt to generate Internet traffic, totally unrelated to Complainant. In sum, Policy ¶ 4(b)(iv) also does not appear to be applicable.
Accordingly, the Panel finds that the third requirement of the Policy is not met.
In its email of
February 20, 2007 to The Forum, Respondent, under the heading of “Reverse
Domain Name Hijacking”, states that, after having bought the <with.com>
domain name in 2004, he received numerous emails and phone calls – whose origin
Respondent has not identified – asking whether he would be willing to sell the
domain name at issue. Respondent states that he always replied that he
wouldn’t. Respondent then adds without further elaboration: “If they
[apparently meaning Complainant] want with.com so long why apply the trademark
now? At first I misunderstood they [also meaning Complainant] had already
trademark in
While the Panel agrees that Complainant’s filing of the federal trademark application for the WITH mark just three working days before the filing of the present Complaint may appear to have been opportunistic, the Policy does not require any specific priority for Complainant to establish – or to attempt establishing - registered or nascent rights in a mark. In absence of more compelling evidence that Complainant abused of these proceedings in bad faith, the Panel is not ready to make a finding of reverse domain name hijacking.
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Roberto A. Bianchi,
Panelist
Dated: March 6, 2007
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