Thermo Holdings, LLC v. Park KyeongSook
Claim Number: FA1608001690428
Complainant is Thermo Holdings, LLC (“Complainant”), represented by Thomas W. Galvani of Thomas W. Galvani, P.C., Arizona, USA. Respondent is Park KyeongSook (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermonomics.com>, registered with George Washington 888, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2016; the Forum received payment on August 22, 2016.
On August 24, 2016, George Washington 888, LLC confirmed by e-mail to the Forum that the <thermonomics.com> domain name is registered with George Washington 888, LLC and that Respondent is the current registrant of the name. George Washington 888, LLC has verified that Respondent is bound by the George Washington 888, LLC 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 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@thermonomics.com. Also on August 25, 2016, the 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 September 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in THERMONOMICS and submits that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark THERMONOMICS in relation to the manufacture and sale of chemical additives, particularly refrigerants;
2. Complainant is the registered proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,821,590, for the word mark, THERMONOMICS, filed on January 30, 2015 and registered on September 29, 2015;
3. The disputed domain name was registered on September 29, 2014;
4. The disputed domain name is parked with <sedo.com> where it is for sale at €3900 and where a host of links are shown, principally related to the sale of farm tractors and their parts; and
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration with the USPTO, a national trademark authority.
The disputed domain name differs from the trademark simply by addition of the gTLD, “.com”. The Panel finds the domain name to be legally identical to the trademark (see, for example, Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)).
Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Although redundant to needs in this case for the purpose of paragraph 4(a)(i) of the Policy, Panel finds it convenient to go on to assess Complainant’s claim to (common law) trademark rights based on use and reputation. Panel does so because the domain name registration predates the effective date of the USPTO registration (January 30, 2015). Whilst the relative timing of those dates is immaterial to paragraph 4(a)(i), it can have an influence on the other factors to be considered.
Complainant states that it:
“… has used the Trademark for over 10 years in connection with refrigerant additives and continues to use the Trademark on those products. Complainant has prominently and extensively used, promoted, and advertised the Trademark both within and outside of the United States. By virtue of this use, consumers in the market have come to quickly recognize the Trademark as designating Complainant as the source of the products so marketed.”
Complainant goes on to assert that THERMONOMICS is a fanciful and highly distinctive mark and that it has achieved secondary meaning. Panel is not persuaded by either of those claims. The trademark is composed of two recognizable elements of Greek origin—“thermo” (meaning, relating to heat) and “nomics” (meaning, laws or principles)—and is only a modestly creative trademark when used in relation to the Complainant’s goods of interest. Further, there is no evidence of advertisement or promotion of the trademark, nor anything to show that members of the public recognize the trademark and associate it with Complainant. These are bald assertions to which the Panel can attach very little weight. The single piece of corroborative information is from the USPTO registration which carries a first use in commerce date for the trademark of September 16, 2005, but that is not a substitute for proof of continuous use and acquired secondary meaning.
Accordingly, for the purposes of the discussion which follows, there is nothing in the Complaint to go so far as to support a claim of secondary meaning or of unregistered trademark rights.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information lists the domain name registrant as “Park KyeongSook” and so does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. The domain name is for sale and the use to which it has been put is merely to advertise goods wholly unrelated to those sold under the trademark. That use does not confer rights or legitimate interests in a domain name (see, for example, SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as 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 also AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
A prima facie case has been made. In the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel notes that offers to sell a domain name for an excessive price, or use of a domain name to drive pay-per-click referral fees, are frequently indicators of bad faith use. In this case, the fact that the date of registration of the domain name predates the establishment of trademark rights confronts Complainant since it must somehow prove that the domain name was also registered in bad faith (see, for example, Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) “[W]e are of the unanimous view that the trademark must predate the domain name.”; see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Albeit that the domain name was registered many years after first use of the trademark, Panel has found no evidence of common law rights predating the registration date of the domain name. Panel must therefore decide whether, on the evidence before it, it was more likely than not (the applicable standard of proof) that Respondent knew of and targeted the trademark at the time it registered the domain name. Panel finds in this case that there is too little information for it to draw that conclusion. On the evidence, Panel does not find registration in bad faith.
Panel goes on to find that, based on the evidence, none of the scenarios described by paragraphs 4(b)(i)–(iii) apply. Panel observes that whilst paragraph 4(b)(iv) stands alone since it hinges on bad faith use and says nothing of bad faith registration, it would be improper to make a finding against Respondent under that subparagraph when registration in bad faith was not in fact found.
Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thermonomics.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: September 25, 2016
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