The Complainant is End of the Road, Inc. of Nashville, Tennessee, United States of America (“U.S.”) represented by Pietragallo Gordon Alfano Bosick & Raspanti, LLP, U.S.
The Respondent is Noorinet of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
On July 23, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On July 30, 2013, the Complainant filed its request for English to be the language of the proceeding. The Respondent failed to respond.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2013.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 6, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
The Panel, following its review of the Complaint and all exhibits annexed thereto, as well as all other materials and documents that are part of the official record, issued Procedural Order No. 1 on October 4, 2013 and was delivered by the Center to both the Complainant and the Respondent of even date therewith. This Procedural Order requested information from the Complainant concerning certain allegations set forth in its Complaint, and permitted the Respondent to submit a response to the Complainant’s submission.
In response, the Complainant filed its submission on October 11, 2013. No response was filed by the Respondent. 4. Factual Background
The Complainant is a U.S. company with its office in Nashville, Tennessee. It owns a U.S. registered trademark QUICK FIST claiming “hand tool, namely, a rubber clamp” in International Class 008 registered on April 26, 2005.
Regrettably, the Complainant failed to indicate in its Complaint other pertinent information regarding its business, and particularly the scope of its use and registration of the QUICK FIST trademark. The Complainant did not, for example, provide the following information in its Complaint:
(1) the nature, geographic scope, and duration of the Complainant’s business;
(2) the nature and geographic scope of use/ sales of the product bearing the QUICK FIST trademark; and
(3) the period of use of the product bearing the QUICK FIST trademark.
For the record, while the foregoing examples of missing information, as well as certain inadequacies in the pleadings, as discussed herein below, may not be fatal to the Complainant, they can adversely impact the final decision since such information can have probative value in connection with the legal arguments.
The Respondent is an entity located in Daegu, Republic of Korea. The Respondent registered the disputed domain name on August 7, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns rights in the QUICK FIST mark and that the disputed domain name is identical to its mark.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that (i) it has not consented to the use of the QUICK FIST mark; and (ii) it has not authorized the use of the QUICK FIST mark in a domain name. The Complainant further contends that the Respondent has not made any use of the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name, and is not making legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith on the grounds that acquired and/or registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
For these reasons, the Complainant requests that the disputed domain name be transferred. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. A. Language of the Proceedings
The Panel notes communications from the Complainant regarding the language of the proceedings.
According to the Rules, the language of the proceeding should be the language of the registration agreement, unless there is an agreement between the parties for a different language to be the language of the proceedings or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the complainant and the respondent to the effect that the proceedings should be in the language other than that of the registration agreement, translate the complaint into the language of the registration agreement, or submit a request for the proceedings to be in a language other than that of the registration agreement with evidence as to the reasons for this to the extent not already provided in the complaint. The panel has discretion to decide on the language of the proceedings.
In this case, the Panel finds that English should be the language of the proceedings for the following reasons:
(i) the disputed domain name consists exclusively of two English words;
(ii) the Respondent has sufficient knowledge of English to understand the nature of these proceedings. This is evident from (1) the Respondent’s web page of the disputed domain name which advertises in both English and Korean that the domain name is for sale, states that the page is under construction, and solicits investors to develop Respondent’s website “”; and (2) the Respondent offering the disputed domain name for auction on an auction site in English; and
(iii) the Complainant would incur considerable further expense and inconvenience in retaining the services of a translator.
Based on the foregoing findings, the Panel finds that it is appropriate to issue the Decision in English. B. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has established that the Complainant owns rights in the QUICK FIST mark.
First, the Complainant owns a U.S. registration for the QUICK FIST mark.
Second, based on a copy of the U.S. Patent and Trademark Office’s website showing the particulars of the trademark registration for the QUICK FIST mark, the Complainant began use of the said mark in commerce at least as early as August 14, 2003, well in advance of August 7, 2012 registration date of the disputed domain name.
Finally, the two words consisting of the disputed domain name “quick fist” is nearly identical to the QUICK FIST mark owned by the Complainant, the only minor distinction being that the Complainant’s trademark is written in two separate words rather than a single word.
Accordingly, the Panel finds the disputed domain name confusingly similar to the Complainant’s QUICK FIST mark, and therefore concludes that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel considers whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interest in the disputed domain name.
According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may elect to show rights or legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent has not attempted to demonstrate its rights or legitimate interests. Further, there is no evidence that (1) the Respondent was using or making demonstrable use of the disputed domain name for a bona fide offering of goods and services; (2) the Respondent has been commonly known by the disputed domain name; and (3) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any Response to the Complaint nor to the Complainant’s submission in response to the Panel’s Procedural Order No. 1, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
In this case, the Complainant squarely claims that the Respondent engaged in the conduct set forth in paragraph 4(b)(i) of the Policy, namely that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.
In support of this claim, the Complainant cited to the Respondent’s auction listing for the disputed domain name that requires a minimum bid/offer of USD 60 when similar domain names were available on GoD for less than USD 21. Further, the Complainant claimed that it submitted bids of USD 500 and USD 1,200 but that the Respondent did not respond to same, and thus, such non-response should be taken as a rejection of their high bid of USD1,200.
Pursuant to paragraph 4(b)(i), the operative phrase is that the Respondent registered or acquired the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring” the disputed domain name registration to the “complainant who is the owner of the trademark or service mark or to a competitor of that complainant.” The facts, which the Complainant raised in support of the bad faith argument, attempts to address the paragraph 4(b)(i) element of selling the disputed domain name for “valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name,” but it does not address the other required elements of said paragraph 4(b)(i), namely proving that the Respondent registered or acquired the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring” it to the “complainant who is the owner of the trademark or service mark or to a competitor of that complainant.”
The Complaint and its annexes are devoid of any evidence showing that (1) the Respondent knew or should even have been aware of the Complainant; and (2) the Respondent registered or acquired the disputed domain name primarily to sell it to the Complainant or to the Complainant’s competitor. Further, based on the Complaint and its annexes alone, the Respondent’s listed minimum bid/offer of USD 60 for the disputed domain name is not adequate to satisfactorily establish that the Respondent intended to sell it for consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. In fact, even if we assume arguendo that the Respondent had rejected the Complainant’s bids of USD 500 and USD 1,200 as being too low, such fact would not have been adequate to show bad faith under paragraph 4(b)(i) when considering the range of potentially reasonable out-of-pocket expenses.
However, the Complainant, in its response to Procedural Order No. 1, claims two key facts, which when considered together with the facts of record and the absence of any challenge by the Respondent, lead this Panel to find that there is adequate and credible evidence that the Respondent registered and used the domain name in bad faith. First, the Complainant argued that the Respondent has a history of engaging in bad faith domain name registrations, and in support, it cites to the decision in Audi v. Nurinet,WIPO Case No. D2012-2260. In that case, the Panel found that “there is a history of prior bad faith findings in cases involving the Respondent.” This argument gives credence to an otherwise previously unpersuasive argument that the domain name was registered and is being used in bad faith.
Second, the Complainant argued in its response to Procedural Order No. 1 that it is the registrant of various trademark registrations for the QUICK FIST mark in various jurisdictions, including Australia, Europe, New Zealand, and South Africa. It also argues that it has engaged in extensive use of the QUICK FIST mark through the use of same on its web site. The Panel finds that these arguments provide plausible evidence of how the Respondent, who resides in another country far away from the Complainant, knew or could have known of the QUICK FIST mark, and thereby provides further credence to the argument that the Respondent engaged in bad faith registration.
As noted above, this Panel believes that there are at least a couple of instances where the arguments in the Complaint were not adequately developed. One such instance concerned the factual background, as noted above. In addition, and more notably, the arguments were, in general, mere bald-face recitations of the “legal elements” of the case, with little or no analysis. This was particularly evident in the Complainant’s bad faith argument. The Complainant claims, for example, in its response to Procedural Order No. 1, that “the critical factor in this Action is not whether the domain name itself is well-known, but rather that the domain name is comprised of Complainant’s registered trademark.” Suffice it to say that this Panel does not agree with this simplistic view, and that if the Complainant did not provide its responses to this Panel’s Procedural Order No. 1, this case may have been decided differently.
This Panel is compelled to raise this subject if only to forewarn future parties to a domain name dispute that they should not misinterpret this decision as mitigating the need for complainants and respondents alike, to fully develop their respective legal arguments or unnecessarily risk an unfavorable outcome.
In conclusion, the Panel finds that the Complainant has established that the disputed domain name has been registered and is being used in bad faith by the Respondent. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: October 27, 2013
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