Sharp Electronics
Corporation v. Yun Sung Lee (registration changed to Minkyoung Yoon on 9/5/02)
Claim Number:
FA0209000124517
PARTIES
Complainant is
Sharp Electronics Corporation, Mahwah, NJ, USA (“Complainant”) represented
by Fusae Nara, of Pillsbury Winthrop LLP. Respondent is Minkyoung Yoon, Wonju, SOUTH KOREA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <sharponline.com>, registered with Melbourne IT, Ltd.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on September 3, 2002; the Forum
received a hard copy of the Complaint on September 6, 2002.
On September 6, 2002, Melbourne IT, Ltd confirmed by
e-mail to the Forum that the domain name <sharponline.com>
is registered with Melbourne IT, Ltd and that Respondent is the current
registrant of the name. Melbourne IT,
Ltd has verified that Respondent is bound by the Melbourne IT, 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 September 24, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of October 14, 2002 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@sharponline.com
by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On November 7, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed
Sandra Franklin 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.” Therefore, the Panel may issue its decision based on the
documents submitted and in accordance with the ICANN Policy, ICANN Rules, the
Forum’s Supplemental Rules and any rules and principles of law that the Panel
deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <sharponline.com> domain name is
confusingly similar to Complainant's SHARP mark.
Respondent has no rights or legitimate interests in
the disputed domain name.
Respondent registered and used the disputed domain
name in bad faith.
B. Respondent
Respondent failed to submit a Response.
FINDINGS
Complainant has used the SHARP mark
since 1938 in relation to the sale of electronics products and household
appliances for more than forty years.
Complainant currently owns 17 trademark registrations with the United
States Patent and Trademark Office including Registration Numbers 2,207,058; 1,859,359;
and 1,985,630. Complainant also holds a
trademark registration in South Korea, Respondent’s place of domicile.
Complainant has
spent close to a billion dollars advertising and promoting its SHARP family of
marks in the past ten years.
Complainant spent approximately $100 million on advertising and
promotion in 2001 alone. Complainant is
one of the largest manufacturers and distributors of electronics products and
household appliances in the world.
Complainant’s SHARP mark is world renowned, and well-known in South
Korea.
Respondent
registered the disputed domain name on January 7, 2001. Respondent is not using the disputed domain
name in connection with a business or a service. Respondent is advertising the domain name registration for sale,
and its website at the domain name features phrases such as, “[a] good domain
name creates substantial value leading you to the great success in the internet
business,” and, “Are you interested in purchasing this domain? Contact
us.” Respondent does not have a license
from Complainant to use the SHARP mark.
DISCUSSION
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 the 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.
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 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.
Identical and/or
Confusingly Similar
Complainant has
established rights in the SHARP mark through registration in the United States
and South Korea as well as its continuous and extensive use of the mark since
1938.
Respondent’s <sharponline.com> domain name is
confusingly similar to Complainant’s mark because it incorporates the entirety
of Complainant’s mark and merely adds the generic term “online.” The addition of the term “online” does not
create a distinct mark because “online” merely acts to signify that an entity
is on the Internet. As a result, <sharponline.com> is confusingly
similar because Internet users could very easily believe that the domain name
links to information about Complainant’s products. See Broadcom Corp. v.
Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to Complainant’s
BROADCOM mark); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has
failed to come forward with a Response.
Therefore, the Panel is permitted to make reasonable inferences in favor
of Complainant and accept Complainant’s allegations as true. See
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless clearly contradicted by the evidence); 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”).
Furthermore,
based on Respondent’s failure to respond, it is presumed that Respondent lacks
all rights and legitimate interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain name, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interest in the domain name because Respondent never submitted a
Response nor provided the Panel with evidence to suggest otherwise).
Respondent has
made no use of the disputed domain name other than to offer the registration
for sale. Respondent’s website at the
domain name advertises that the domain name registration is for sale. The
website states, “Are you interested in purchasing this domain? Contact
us.” When Respondent’s only use of the
domain name is to attempt to sell its registration for profit, Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See J. Paul Getty Trust v. Domain
4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights
or legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the Respondent registered the domain name with
the intention of selling it).
There is no
evidence on record, and Respondent has not come forward with any proof that it
is commonly known as SHARP ONLINE or <sharponline.com>. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent has
not used the disputed domain name for any other purpose than to put the domain
name registration up for sale, it can therefore be inferred that Respondent
registered the domain name for the purpose of selling, renting, or transferring
the domain name registration. This
behavior is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov.
16, 2000) (finding bad faith based on the apparent willingness of Respondent to
sell the domain name in issue from the outset, albeit not at a price reflecting
only the costs of registering and maintaining the name); see also Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that
Respondent registered the domain name for the purpose of selling it, as
revealed by the name Respondent chose for the registrant, “If you want this
domain name, please contact me”).
Based on the fame
of Complainant’s SHARP mark it can be inferred that Respondent had knowledge of
Complainant’s rights when it registered the infringing domain name. Registration of a domain name that
incorporates Complainant’s mark, despite knowledge of Complainant’s rights, is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See
Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO
June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration of the <yahooventures.com>
domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly, it
is Ordered that the domain name <sharponline.com>
be transferred from Respondent to
Complainant.
Sandra Franklin,
Panelist
Dated: November
14, 2002
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