ROI Solutions, Inc. v Lee Jaewan

Claim Number: FA0011000095914

PARTIES

The Complainant is ROI Solutions, Inc. , Medford, MA, USA ("Complainant"). The Respondent is Lee Jaewan, Gwangsangu, KOREA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is roisolutions.com, registered with IBI.

PANELIST

Moon Sung Lee

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 2, 2000; The Forum received a hard copy of the Complaint on November 3, 2000.

On November 6, 2000, IBI confirmed by e-mail to The Forum that the domain name roisolutions.com is registered with IBI and that the Respondent is the current registrant of the name. IBI has verified that Respondent is bound by the IBI registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 7, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 2000 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@roisolutions.com by e-mail.

On December 22, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Moon Sung Lee as Panelist.

On November 8 and 29, 2000, the Respondent submitted via e-mail an answer prepared in Korean language.

On November 17, 2000, in accordance with Paragraph 11 of ICANN Uniform Domain Name Dispute Policy ("Policy"), this panel determined the language of proceedings be English and Korean and ordered the Respondent to file the English translation of the answer. The Respondent did not follow the order.

On December 28, 2000, this panel re-ordered the Respondent to submit the English translation of the answer, and gave the Respondent a notice that the failure to abide by the order by January 4, 2001, would be deemed the non-submission of an answer by the Respondent and the decision would be rendered without considering the answer of the Respondent. The Respondent continuously failed to respond to such order of this Panel.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

Complainant

(1) The Complainant contends that the domain name is identical or confusingly similar to a trademark owned by the Complainant.

(2) In addition, the Complainant contends that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name for the following reasons:

[i.] Naum Web Media (domain-name holder) is not part of any such corporation operating under the name of ROI, or ROI Solutions;

[ii.] The Respondent's use of the domain name or a name corresponding to the domain name is not in connection with a bona fide offering of goods or services;

[iii.] The Respondent has not been commonly known by the domain name, nor has the Respondent acquired trademark or service mark rights;

[iv.] The Respondent is making or attempts to make a non-legitimate, non-fair use of the domain name, with intent for commercial gain to seek to resell and to tarnish the trademark or service mark at issue.

(3) The Complainant contends that the domain name should be considered having been registered and being used in bad faith for the following reasons:

[i.] The domain name is advertised as "being for sale";

[ii.] On November 15, 2000, the Respondent proposed to sell the domain name to ROI Solution, Inc., at the price of US $5,000.

B. Respondent

The Respondent failed to respond to the order of December 28, 2000, given by this Panel. Therefore, this Panel deems that, in accordance with the Policy 14 and the aforementioned order, the Respondent did not submit his answer.

FINDINGS

Complainant is known as ROI Solutions, Incorporated, located in Medford, Massachusetts, U.S.A. Complainant has been using ROI Solutions as a trademark to identify its goods and services since July 20, 1998. Complainant filed a Federal Trademark Application on November 18, 1999, seeking exclusive right to use ROI Solutions as a service mark in connection with "providing on-line database in the fields of managing and administering non-profit organizations and consultation services related thereto." The application is pending.

The Respondent registered the domain name on October 31, 2000.

DISCUSSION

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.

Identical and/or Confusingly Similar

There should be little question that the domain name is confusingly similar to Complainant’s claimed trademark. Roisolutions.com is identical to Complainant’s claimed trademark.

Complainant has been using ROI Solutions as a trademark to identify its goods and services since July 20, 1998. However, the application for the trademark "ROI Solutions" filed by the Complainant is currently pending and, therefore, the Complainant is not currently a registered trademark owner of "ROI Solution." As such, there is an issue as to whether the Complainant has rights of trademark or service mark even under such circumstances.

The requirement that the Complainant has a right to a trademark, however, does not necessarily mean that the Complainant must be the registered owner of a trademark. Rather, a pending federal trademark application, combined with prior use of the mark is sufficient evidence on which to find that Complainant ‘has rights’ in a trademark or service mark. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000)

Accordingly, this Panel finds that the domain name at issue meets the Identical and/or Confusingly Similar requirement.

Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interest in the contested domain name. Complainant points out that Respondent is not using the domain name in connection with a bona fide offering of goods or services. See ICANN Policy 4(c)(i). Respondent does not appear to be commonly known by the domain name roisolutions.com or a name corresponding to that domain name. See ICANN Policy 4(c)(ii). Respondent’s limited use of the domain name does not appear to be noncommercial or fair use, but instead appears to be commercial use. Complainant’s evidence indicates that on November 1, 2000, (the next day immediately following the date of registration) the web page corresponding to roisolutions.com indicated that the domain name was for sale. (SEE ANNEX C) Then, on November 16^th and 18^th, the corresponding web pages displayed pornography (SEE ANNEX D and E).

Respondent is also using the domain name to lure Internet users to pornographic web sites, from which Respondent likely derives revenues. (SEE ANNEX D and E) Such use also amounts to bad faith under the Policy 4(b)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000)

If Respondent does not provide evidence of any rights or legitimate interest in the contested domain name as it is stated in Policy 4(c), this Panel should find that Respondent has no such rights. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000)

Because the Respondent did not establish that he has any rights or legitimate interests in respect of the domain name, this Panel finds that the Respondent does not have any rights or legitimate interests in respect of the domain name.

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive criteria, which shall be evidence of the registration and use of a domain name in bad faith

Paragraph 4(b)(i) concerns acquisition of the Domain Name in order to sell it. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant. Paragraph 4(b)(iii) involves disruption of the business of a competitor. Paragraph 4(b)(iv) involves use of the Domain Name for the purpose of attracting visitors to the Respondent’s online location in the mistaken belief that they are visiting a location of or associated with the Complainant.

The Respondent registered the domain name on October 31, 2000, and indicated on the Respondent's website that the domain name roisolutions.com was for sale on the next day, November 1, 2000. (SEE ANNEX C) In addition, on November 15, 2000, the Respondent proposed to sell the domain name to ROI Solution, Inc., at the price of US $5,000. (SEE ANNEX F) It is determined registering another’s trademark as a domain name and offering it for sale demonstrates bad faith under the Policy 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000)

Based on the above, the Panel determines that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the Policy 4(a), it is the decision of Panel that the requested relief be granted.

Accordingly, for all the foregoing reasons, it is ordered that the domain name "roisolutions.com" be transferred from the Respondent to the Complainant.

Moon Sung Lee, Arbitrator

Dated: January 17, 2001

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