Namecheap, Inc. v. KY SONG
Claim Number: FA1401001537272
Complainant is Namecheap, Inc. (“Complainant”), represented by Liz Wang of Rome & Associates, A.P.C., California, USA. Respondent is KY SONG (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <namechap.com>, registered with Namebay.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2014; the National Arbitration Forum received payment on January 3, 2014.
On January 8, 2014, Namebay confirmed by e-mail to the National Arbitration Forum that the <namechap.com> domain name is registered with Namebay and that Respondent is the current registrant of the name. Namebay has verified that Respondent is bound by the Namebay 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 January 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@namechap.com. Also on January 8, 2014, 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.
A timely Response was received and determined to be complete on February 18, 2014.
A timely Additional Submission by the Complainant was received and determined to be complete on February 21, 2014.
The Respondent requested additional time to respond to the Complaint and submitted information in support of this request. Complainant opposed Respondent’s request. The National Arbitration Forum finds that extenuating circumstances exist warranting an extension and granted Respondent an extension until February 18, 2014 to submit the response.
Additional submission by the Respondent was submitted and was received after the deadline for submissions. The Forum does not consider this submission to be in compliance with Supplemental Rule 7. The Panel agrees with the Forum and decide not to accept this submission and consider it along with the other materials it has already received.
On February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
A. Complainant’s Complaint asserts that:
1. Policy ¶ 4(a)(i)
a. Complainant was launched in 2000, and is now one of the most prominent domain name registrars on the web. Operating at <namecheap.com>, Complainant currently services more than 3,000,000 domain registrations and 800,000 users.
b. Complainant uses the NAMECHEAP and NAMECHEAP.COM marks in connection with its offering of domain name registrations and related services such as private registration, web hosting, URL forwarding, security features, email forwarding, and other functions related to the registration, management, build-out, and administration of domain names.
c. Based on its registration of each mark with the United States Patent and Trademark Office (“USPTO”), Complainant has rights in the NAMECHEAP (Reg. No. 4,213,990 registered September 25, 2012) and NAMECHEAP.COM (Reg. No. 3,622,358 registered May 19, 2009) marks under the UDRP.
d. Respondent’s <namechap.com> domain name is confusingly similar to Complainant’s marks.
i. The disputed domain name merely omits the second instance of the letter “e” in each of Complainant’s marks and represents a misspelled version of the NAMECHEAP.COM trademark.
ii. US Federal Court has already considered and adjudicated the infringement issue as to this Domain, by delivering a judgment procured by the Complainant in the form of Annexes L and M to the Complaint.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <namechap.com> domain name, and Complainant has not given Respondent permission to its marks in any way.
i. The WHOIS information on file does not indicate that Respondent is commonly known by the disputed domain name.
b. Respondent’s use of the disputed domain name does not constitute 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).
i. Respondent uses the <namechap.com> domain name to redirect Internet users searching for Complainant’s <namecheap.com> website to Respondent’s own website, where Respondent advertises competing goods and services.
ii. Respondent’s resolving website provides links and advertisements for competing websites hosting and domain name registrations services, including links entitled “GoDaddy – Official Site,” “Register $0.50 Domains,” and “Three letter domain names.” See Complaint Annex H.
c. Respondent’s registration of a domain name containing a misspelling of Complainant’s mark constitutes typosquatting, and is further evidence of Respondent’s lack of rights and legitimate interests in the domain.
3. Policy ¶ 4(a)(iii)
a. By connecting Internet users to competing domain registration and webhosting service providers through a domain name confusingly similar to Complainant’s marks, Respondent is disrupting Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).
b. Respondent is attempting to commercially benefit from the confusion created by the similarity between the <namechap.com> domain name and Complainant’s NAMECHEAP.COM mark, evidencing bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
i. Presumably, Respondent collects click-through fees when Internet users pass through Respondent’s website and sponsored links on their quest to reach the authentic site of Complainant.
c. Respondent has engaged in typosquatting by registering a domain name to specifically target Internet users who are attempting to reach Complainant but inadvertently misspell Complainant’s <namecheap.com> domain name.
d. Respondent registered the <namechap.com> domain name on September 5, 2013, with knowledge of Complainant and its rights in the NAMECHEAP and NAMECHEAP.COM marks.
B. Respondent:
1. The disputed domain name consists of the generic terms “name” and “chap,” in which Complainant has established neither registered nor common law trademark rights.
a. The term “chap” has a distinct meaning apart from the term “cheap” found in Complainant’s mark. See Respondent’s Annex I, providing various dictionary definitions for the word “chap.”
b. A Google search for the term “chap” yields over 29,400,000 third-party results. See Respondent’s Annex J.
c. There are over 2,000 registered domain names that end with the term “chap.” See Respondent’s Annex L.
2. Respondent has made preparations to operate a “Kids Fashion Shopping-mall business” at the <namechap.com> domain name. See Respondent’s Annex M, which appears to show a website offering children’s clothing under the name “name chap.” This business is unrelated to Complainant.
a. Respondent acquired the domain on September 5, 2013, and has not yet had the time to set up or use the domain for its intended purpose.
3. Respondent did not register the disputed domain name with the intent to disrupt Complainant's business or to confuse consumers seeking to find Complainant's website.
4. Respondent registered the contested domain name for its generic meaning and was not aware of Complainant's business or trademark at that time.
a. Complainant is not well-known in South Korea, where Respondent resides.
5. Complainant’s actions in this case constitute Reverse Domain Name Hijacking under the Policy, as there is no evidence that the disputed domain name was registered or is being used in bad faith.
a. Complainant filed a lawsuit in U.S. Federal Court requesting the transfer of three domain names, including the <namechap.com> domain name, from the previous registrar on May 7, 2012. If Complainant really had rights to the <namechap.com> domain name, it would have been awarded the domain in that dispute.
C. Complainant’s Additional Submission:
1. Respondent’s arguments that the disputed domain name is comprised of the generic terms “name and “chap,” and that the term “chap” is different from “cheap” as found in Complainant’s mark, are irrelevant under Policy ¶ 4(a)(i).
2. Respondent’s Exhibit M, purporting to show a “Kids Fashion Shopping-mall business” under the <namechap.com> domain name is merely a mock-up of a website and business that does not yet exist. Respondent has presented no business records or other evidence of commerce suggesting that Respondent has provided a bona fide offering of goods or services under the disputed domain name.
3. With respect to the Federal Action, Complainant stresses that the court found in Complainant’s favor, and that Complainant expressly identified the <namechap.com> domain name in that action such that past registrants of the domain name should have been put on notice of Complainant’s rights in the domain. See Complaint Annexes E, J, & L.
a. Complainant was forced to resort to this UDRP action after Hebei, the registrar of record for the disputed domain name, ignored Complainant’s requests for transfer following the Federal Action.
4. In order for Respondent to prevail on its claim of reverse domain name hijacking, it must show that Complainant knew or should have known that none of the elements of its claim under the Policy could be proven. Complainant has a reasonable basis for pursuing the disputed domain because each element is supported by evidence in the Complaint.
The disputed domain name is not confusingly similar to the Complainant’s 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.
Under the Policy ¶ 4(a)(i) element, the panelist has to analyze two issues:
1) the rights of the complainant in the trademarks to which the disputed domain name is allegedly identical or confusingly similar;
2) the identity or confusing similarity between the disputed domain name and the trademarks in which the complainant asserts rights.
For the first issue, the Panel considers the contentions of the Complainant. Launched in 2000 and operating online at <namecheap.com>, Complainant claims to be one of the most prominent domain name registrars on the Internet. According to Complainant, it currently services more than 3,000,000 domain registrations and 800,00 users. Complainant claims to use the NAMECHEAP and NAMECHEAP.COM marks in connection with its offering of domain name registrations and related services such as private registration, web hosting, URL forwarding, security features, email forwarding, and other functions related to the registration, management, build-out, and administration of domain names. Complainant provides evidence of its registration of the NAMECHEAP (Reg. No. 4,213,990 registered September 25, 2012) and NAMECHEAP.COM (Reg. No. 3,622,358 registered May 19, 2009) marks with the USPTO, arguing that such registrations confer rights under the Policy. Past panels have agreed that registration of a mark with the USPTO establishes rights under Policy ¶ 4(a)(i), regardless of the location of the respondent. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel therefore concludes that Complainant has established rights in the NAMECHEAP and NAMECHEAP.COM marks under Policy ¶ 4(a)(i), Respondent’s apparent residency outside of the United States notwithstanding.
For the second issue, Complainant urges the Panel to find the disputed domain name <namechap.com> confusingly similar to Complainant’s NAMECHEAP and NAMECHEAP.COM marks pursuant to Policy ¶ 4(a)(i). In its assertions Complainant notes that the disputed domain name merely omits the second instance of the letter “e” in Complainant’s NAMECHEAP.COM mark.
In addition, the Complainant asserts that a US Federal Court has already considered and adjudicated the infringement issue as to this domain, and presents a decision of the United States District Court for the Central District Court of California in case no. CV 12-03868, by which it was considered that for a number of domain names, including the disputed domain names in this procedure; complainant contends this is a justification for an entry of default judgment.
The said judgment was delivered in connection to the disputed domain name <namechap.com> in relationship to the unknown holder of the domain name and the Registrar Hebei Guoji Maoyi (Shanghai) Ltd. The judgment was delivered on August 27, 2012.
The disputed domain was registered with the Registrar Namebay on September 5, 2013 by the actual Respondent.
Therefore, the judgment of the United States District Court for the Central District Court of California in case no. CV 12-03868 could not refer to the same factual situation which had been initiated with the registration of the disputed domain name and which is under analysis to present proceedings.
Moreover, on the aspects regarding the substantive merits and sufficiency of the Complaint, the judgment just reproduces the Plaintiff’s (the Complainant in these proceedings) bulk allegations as to all the domain names under judgment and does not make any kind of analysis as to the confusing similarity of the disputed domain name.
Therefore, the Panel considers that under the first element of the Policy Complainant has to make its own analysis as to the identity and or the confusing similarity of the disputed domain name to the Complainant’s trademark NAMECHEAP.COM.
Applying the said criteria in the analysis subject to these proceedings, the Panel finds that despite the fact that apparently the disputed domain name is different with only one letter “e” from Complainant’s trademark, such difference cannot be considered as misspelling or even “typosquatting,” as the Complainant asserts further under its second element of the Policy contentions.
In fact, the disputed domain name consists of two generic terms “name” and the “chap,” each with its clear meaning of its own.
The disputed domain name may differ with one letter from Complainant’s trademark in their second parts, namely the term “chap” differs with one letter from term “cheap,” but this one letter difference makes also difference from the point of view of the meaning, orthography and pronunciation between the two terms. While, according to <www.oxforddictionaries.com>, the term “cheap” has, general meaning of low in price, especially in relation to similar items or services, the term “chap” has total different ones as: a cracked or sore patch on the skin, or a man or a boy. Considering the absence of a letter “e” in the disputed domain name in comparison with Complainant’s trademark, the Panel finds that this particular absence cannot qualify as a misspelling but rather distinguishes the disputed domain name from the Complainant’s trademark.
Also considering the distinctive character, the disputed domain name gains by the omission of the second letter “e” from the Complainant’s trademark, also “typosquatting” could not be found applicable, as typosquatting is applicable only when a domain name contains a common or obvious misspelling of a trademark, where the misspelled trademark remains the dominant or principal component of the domain name, which is not the case in the disputed domain name <namechap.com>.
Last, but not least, the content of the website to which the disputed domain name is resolving cannot be considered to count in the threshold assessment of risk of confusing similarity under the first element of the UDRP, as such content may be regarded as highly relevant to assessment of intent to create confusion under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).
Therefore the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <namechap.com> domain name, of its rights to use the disputed domain name. The Panel cannot agree with it, as the conviction of the Complainant that the disputed domain name infringes its trademarks is not obviously ungrounded.
Even if the Panel found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Therefore, the Panel denies a finding of Reverse Domain Name Hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <namechap.com> domain name REMAIN WITH Respondent.
Beatrice Onica Jarka Panelist
Dated: March 12, 2014
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