Raise Labs, Inc. v. Hong young jin
Claim Number: FA1607001685247
Complainant is Raise Labs, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Hong young jin (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <raiseme.com>, registered with Inames Co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2016; the Forum received payment on July 26, 2016. The Complaint was submitted in both Korean and English.
On July 25, 2016, Inames Co., Ltd. confirmed by e-mail to the Forum that the <raiseme.com> domain name is registered with Inames Co., Ltd. and that Respondent is the current registrant of the name. Inames Co., Ltd. has verified that Respondent is bound by the Inames Co., Ltd. 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 August 1, 2016, the Forum served the Korean language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2016 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@raiseme.com. Also on August 1, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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
Complainant is a social enterprise company focused on expanding access to higher education, especially among low income and first generation students. Complainant has used and promoted the RAISE ME mark to assist students and colleges for nearly four years, and has garnered substantial publicity dating back to September of 2012 which establish common law rights in the RAISE ME mark. Respondent’s <raiseme.com> domain name is identical to Complainant’s RAISE ME mark. Respondent’s disputed domain name incorporates the entire RAISE ME mark absent the space between the words of the mark while adding the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <raiseme.com> domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the disputed domain name resolves to a parked webpage. Also, Complainant has previously owned the registration for the disputed domain name.
Respondent has engaged in bad faith registration and use. Respondent is a serial cybersquatter with a history of adverse UDRP proceedings against it. Respondent uses the resolving website to disrupt Complainant’s business by providing links to third parties that compete with Complainant. Complainant previously owned the <raiseme.com> domain name and Respondent only acquired it when Complainant inadvertently allowed the registration to lapse. Complainant attempted to purchase the domain name back from Respondent, however, Respondent asked for compensation in excess of out-of-pocket costs.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is a United States company engaged in the business of expanding access to higher education, especially among low income and first generation students.
2. Complainant has used and promoted the RAISE ME mark to assist students and colleges for nearly four years, has garnered substantial publicity by its use of the mark dating back to September of 2012 and has established common law rights in the RAISE ME mark from that time.
3. The disputed <raiseme.com> domain name was originally registered by an unknown party on December 27, 2005 and was subsequently registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date.
4. Respondent is a serial cybersquatter and the disputed domain name resolves to a parked webpage providing links to third parties that compete with Complainant.
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(f), 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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the RAISE ME mark, one of the group of marks it describes as the RAISE.ME marks, as part of its social enterprise company focused on expanding access to higher education, especially among low income and first generation students. Complainant argues that it has acquired common law rights in the RAISE.ME marks, including RAISE ME, under Policy ¶ 4(a)(i) from a date prior to the date on which Respondent registered the domain name. Panels have routinely held that a complainant can establish rights in a mark through continuous and exclusive use of the mark in commerce, and that a mark need not be registered with a trademark authority. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant argues that because the RAISE ME mark has been continuously and exclusively used by Complainant in connection with its informational materials since at least 2012, it has demonstrated common law rights in the mark for purposes of Policy ¶ 4(a)(i). See Compl., at Attached Exs. D–F. Panels have found that use of a mark for an extended period of time demonstrates secondary meaning. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”). Accordingly, as the Panel agrees with Complainant, the Panel finds that Complainant has demonstrated common law rights in the RAISE ME mark, pursuant to Policy ¶ 4(a)(i). Those rights date back to September 2012.
The second issue that arises is whether the disputed <raiseme.com> domain name is identical or confusingly similar to Complainant’s RAISE ME mark. Complainant argues that the <raiseme.com> domain name is identical to the RAISE ME mark as it fully incorporates Complainant’s mark, absent space between the words of the mark, while adding the gTLD “.com.” The Panel agrees that these changes do not remove Respondent’s domain name from the realm of confusing similarity in relation to Complainant’s RAISE ME mark pursuant to Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s RAISE ME mark pursuant to Policy ¶ 4(a)(I).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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 Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s RAISE ME mark and to use it in its domain name;
(b) The disputed <raiseme.com> domain name was originally registered by an unknown party on December 27, 2005 and was subsequently registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date.
(c) The domain name resolves to a parked webpage providing links to third parties that compete with Complainant.
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Hong young jin” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the disputed domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <raiseme.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant notes that the domain name resolves to a parked webpage containing links that compete with Complainant’s goods and services. See Compl., at Attached Ex. I. Prior panels have found that use of a confusingly similar domain name to divert Internet users searching for complainant to a site promoting hyperlinks that compete with complainant cannot consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent does not have rights or legitimate interests under Policy ¶¶ 4(c)(i) or (c)(iii);
(g) Complainant argues that it was the owner of the disputed domain name from or about September 20, 2013 and ending in December, 2013, and that this further highlights Respondent’s lack of rights or legitimate interests. See Compl., at attached Exs. G–H. Prior panels have found that a complainant’s prior registration of the domain name at issue is evidence of a lack of rights or legitimate interests on the respondent’s behalf. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name). Thus, the Panel relies on Complainant’s prior registration for the disputed domain name as evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and used the disputed domain name in bad faith because Respondent’s primary purpose was to sell the domain back to Complainant in excess of out-of-pocket costs. See Compl., at Attached Ex. I. Panels have found bad faith where a Respondent holds a domain name out for sale to the general public. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). As the Panel agrees with Complainant, it finds that the circumstances support a finding of bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent has been the subject of prior adverse UDRP rulings, thereby demonstrating a pattern of bad faith. In support of its argument, Complainant cites to: ShopInvest NV v. Hong Young Jin, D2015-
1224 (WIPO Sept. 15, 2015). Panels have consistently held that a respondent’s prior adverse UDRP rulings are sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). As the Panel agrees with Complainant’s argument, it finds that Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(ii).
Thirdly, Complainant claims that Respondent’s use of the domain name to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Panels have decided that a respondent demonstrates bad faith registration and use per Policy ¶ 4(b)(iii) where it uses a domain name to display links to products and/or services that are in direct competition with a complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant submits that it previously owned the registration for the <raiseme.com> domain name, and that Respondent only acquired it when Complainant inadvertently allowed its registration to lapse. Complainant submits that it held the registration until its expiration in December 2013, at which point Respondent purchased it. Past panels have found that when a complainant has previously used a disputed domain name, subsequent use by anyone else indicates bad faith, unless there is evidence to the contrary. See InTest Corp. v. Servicepoint, FA 95291 (Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”). Further, panels have found that purchasing a domain name after a complainant has failed to renew it is evidence of bad faith. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith). Accordingly, the Panel finds that Respondent registered and uses the <raiseme.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Next, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <raiseme.com> domain name using the RAISE ME mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
In the above consideration, an issue arises as to when the disputed domain name was registered by Respondent and whether that occurred after Complainant acquired its common law trademark rights to the RAISE ME mark. The Panel has held on the evidence contained in and annexed to the Complaint that Complainant acquired its rights from September 2012. Complainant has also submitted that:
“According to the WHOIS records, it is unclear the exact date that Respondent registered the Disputed Domain Name. See Exhibit H: WHOIS Report concerning Registrant information for the domain name <raiseme.com>. Nevertheless, it is clear that Respondent’s registration of the Disputed Domain Name occurred after Complainant began offering services under the Raise.Me Marks and after Complainant’s ownership of the Disputed Domain Name.” Complainant has also certified that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate.
On that basis the Panel finds that Respondent registered the disputed domain name after Complainant acquired its common law trademark rights to the RAISE ME mark.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <raiseme.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 1, 2016
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