Freiberger Holding GmbH v. Goi Media
Claim Number: FA1206001447427
Complainant is Freiberger Holding GmbH (“Complainant”), represented by Bruce A. McDonald of BUCHANAN INGERSOLL & ROONEY PC, Virginia, USA. Respondent is Goi Media (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medicalpark.com>, registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM.
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 June 4, 2012; the National Arbitration Forum received payment on June 6, 2012. The Complaint was received in English and Korean.
On June 8, 2012, KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM confirmed by e-mail to the National Arbitration Forum that the <medicalpark.com> domain name is registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM and that Respondent is the current registrant of the names. KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM has verified that Respondent is bound by the KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 14, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@medicalpark.com. Also on June 14, 2012, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <medicalpark.com> domain name is confusingly similar to Complainant’s MEDICAL PARK mark.
2. Respondent does not have any rights or legitimate interests in the <medicalpark.com> domain name.
3. Respondent registered and used the <medicalpark.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the MEDICAL PARK mark, registered with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 8,479,602 registered February 22, 2010). Complainant also owns the MEDICAL PARK and Design mark with the following trademark authorities:
Germany’s Patent and Trademark Office (“GPTMO”) (Reg. No. 397 20 832 registered July 5, 1997); OHIM (Reg. No. 1,609,999 registered July 31, 2001); World Intellectual Property Office (“WIPO”) (Reg. No. 683,819 October 27, 1997); and United States Patent and Trademark Office ("USPTO") (Reg. No. 3,087,832 registered May 2, 2006).
Respondent registered or acquired the disputed domain name in 2009, previously using it in an attempt to sell the domain name, and currently using it to offer a parked website with pay-per-click advertising.
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."
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.
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.”).
The Panel finds that Complainant has rights in its MEDICAL PARK mark through its various trademark registrations for the mark. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). The Panel notes that Complainant need not own a trademark registration in Respondent’s country of Korea for Policy ¶ 4(a)(i) rights to attach. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <medicalpark.com> domain name is identical to Complainant’s MEDICAL PARK mark because it merely removes the space between the terms of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com,” insufficient to distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information identifies the registrant of the <medicalpark.com> domain name as “Goi Media.” Based upon this, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant states that Respondent has parked the disputed domain name and is using it for ‘pay-per-click’ advertising, as shown in a screenshot of the resolving website. This use is not 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Complainant states that Respondent’s disputed domain name previously resolved to a website stating, “DOMAIN FOR SALE,” and remains for sale via a link on the current resolving website. Complainant further states that Respondent offered to sell the disputed domain name for $25,000 and $45,600. The Panel finds that these offers to sell the disputed domain name are further evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent attempted to sell the disputed domain name to the general public, and to Complainant - first for $45,600 and then for $25,000. The Panel finds that Respondent’s offers to sell the disputed domain name are evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent uses the disputed domain name to direct Internet users to pay-per-click advertising, which disrupts Complainant’s business. The Panel finds that this disruption is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also asserts that Respondent owns more than 1,790 domain names in addition to the name in dispute. Complainant asserts that because Respondent is a sophisticated registrant of domain names, that it cannot “willfully close his eye to colliding third-party rights in a trade mark.” Further, Complainant asserts that, because it has registered its marks worldwide, Respondent should have been aware of Complainant’s mark. Complainant cites several UDRP cases in support of the proposition that because Respondent is a “sophisticated domainer” there may be an inference of Respondent’s knowledge as to a trademark owners’ rights in a mark. Here, the Panel finds that Respondent had actual knowledge of Complainant’s mark prior to acquiring the disputed domain name and thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medicalpark.com> domain name be TRNASFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 18, 2012
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