The Complainant is IDT Corporation of Newark, New Jersey, United States of America ("United States"), represented by Reed Smith LLP, United States.
The Respondent is Park Youngmi of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name, , is registered with HANGANG Systems Inc. dba D (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On August 16, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint.
On August 17, 2016, the Respondent requested for Korean to be the language of the proceeding. On August 18, 2016, the Complainant requested for English to be the language of the proceeding and filed an amended Complaint.
The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2016. The Response was filed with the Center on September 5, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 21, 2016. 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 the Rules, paragraph 7. 4. Factual Background
For more than 20 years, the Complainant, IDT Corporation, has been in the business of providing a broad range of telecommunications services to retail and wholesale customers worldwide, including retail communications and payment services. The Complainant has developed a global reputation as a leading communication and financial services brand as well as one of the fastest growing carriers of international voice termination. It has more than 1,250 employees across 21 countries, 40,000 retail locations, and approximately USD 485 million in worldwide assets.
As part of its business, the Complainant adopted and has been using the trademarks BOSS, BOSS REVOLUTION, and BOSS REVOLUTION (& Design) (collectively the "BOSS mark") since at least as early as 2003; the BOSS mark has been used extensively in Asia, among other places, to advertise and sell the Complainant's domestic and international calling, mobile top up, money transfer, and bill pay services.
The Complainant currently owns more than 30 trademark registrations for the BOSS mark in more than 10 countries. In addition, the Complainant owns and operates several domain names comprised of the "BOSS" acronym, which are used in connection with its domestic and international calling, mobile top up, money transfer, and bill pay services, and which are accessible to consumers in more than 160 countries worldwide.
The disputed domain name was registered on March 13, 2003, and presently resolves to a website broadly related to the topic of Asian philosophy. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1. The disputed domain name is confusingly similar to the Complainant's registered BOSS mark. Specifically, the Complainant contends that the disputed domain name incorporates the distinguishing and dominant characteristic of the Complainant's BOSS mark in its entirety, and as such, the BOSS mark and the disputed domain name are sufficiently similar so as to render them confusingly similar. The only difference between the disputed domain name and the Complainant's registered BOSS mark is the omission of the word "REVOLUTION" and the addition of the generic descriptor "pay" in the disputed domain name.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not referred to or commonly known by the name "" and has no legal relationship with the Complainant. Further, the Complainant has never authorized the Respondent to use the BOSS mark. Also, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(i) of the Policy by demanding no less than USD 7,000 for the disputed domain, a price that significantly exceeds the Respondent's out-of-pocket costs for registration of the disputed domain name. The Complainant also contends that the Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy by opportunistically registering and using a domain name that incorporates the BOSS mark in order to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion. B. Respondent
The Respondent claims that the Complainant's negotiations for the purchase of the disputed domain name prior to April 30 were with the previous owner, not the Respondent. (The Respondent does not include a year, but since the Complainant's only negotiations of record for the disputed domain name were between February 2016 and May 2016, it is presumed that the year is 2016).
Regarding the issue of similarity between the disputed domain name and the BOSS marks, the Respondent argues that there are many marks owned by different parties which are composed of the words "boss" and "pay", but none with the two said words together, and therefore, the mere fact that both the disputed domain name and the BOSS marks share the word "boss" does not mean that the disputed domain name and the BOSS marks are similar and doesn't mean that they cannot co-exist. The Respondent also argues that the mark BOSS REVOLUTION and disputed domain name have different meanings.
Further, the Respondent argues that the Complainant is not a well-known company and that she does have a legitimate right to the disputed domain name, as supported by her pending Korean trademark for BOSSPAY filed with the Korean Intellectual Property Office on April 25, 2016. Finally, the Respondent argues that she acquired the disputed domain name for payment-related software development. Later, she also argues that the disputed domain name is used to connect to websites that relate to Asian philosophy. 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: (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 the Rules.
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceedings under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1. The Complaint has been submitted in English, and it would cause undue delay and expense if the Complainant were required to translate the Complaint into Korean;
2. The disputed domain name is solely comprised of English words; and
3. The Respondent submitted a formal response in Korean to the Complaint and the response included search results of the U.S. Patent and Trademark Office and other web searches in English.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed in English; and (2) issue a decision in English. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Complainant alleges that it has rights to the BOSS mark, and in support, the Complainant submitted evidence of multiple trademark and domain name registrations consisting of the BOSS mark, including USPTO Trademark Registration No. 3,136,468 for BOSS, registered on August 29, 2006. Said evidence indicates that the Complainant first began using the BOSS mark as early as August 8, 2003.
Accordingly, the Panel finds that the Complainant has established that it has rights in the BOSS mark.
Further, the Panel finds that the disputed domain name is confusingly similar to the Complainant's BOSS mark on the grounds that the disputed domain name is composed of the dominant and distinctive term "boss", together with an arguably descriptive term "pay" and the inconsequential generic Top-Level Domain ("gTLD") ".com."
The word "pay" in the disputed domain name may be considered descriptive in connection with the Complainant's core business. It is also descriptive in connection with the Respondent's admitted plan to use the disputed domain name for payment-related software development. Further, the addition of the gTLD ".com" after a domain name is technically required. Thus, it is well established that such element may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant's BOSS mark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to at least make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
Based on allegations from both the Complainant and the Respondent, together with other facts of record in the case, it is clear that the Respondent recently acquired ownership of the disputed domain name. Although the Complainant does not indicate the date of such acquisition of ownership, the Respondent's account suggests that it was sometime after April 30, 2016, in which case the Respondent's acquisition was some twelve years after the Complainant first commenced use of the BOSS mark. The Panel also notes the Complainant's claims that it has not authorized, licensed or otherwise permitted the Respondent to use its BOSS mark; additionally, the name of the Respondent has no apparent connection to the disputed domain name which would suggest that it is commonly known by the disputed domain name or has acquired any rights in the disputed domain name.
The Respondent claims that she has rights and legitimate interests in the disputed domain name and, in support, she submitted evidence of the filing of a trademark application for BOSSPAY. The said application was filed on April 25, 2016. The Panel independently verified the particulars of said application via the Korean Intellectual Property Office's website and notes that the said mark claims website development services.
Although the existence of the Respondent's pending trademark application is notable, the Panel finds that pursuant to paragraph 4(a)(ii) of the Policy, the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not demonstrated otherwise. This conclusion is based on the totality of the circumstances, including, among other things, the suspect timing between the Respondent's claim that the negotiations for the purchase of the disputed domain name occurred with the previous owner prior to April 30, 2016, and the Respondent's application filing date occurring at the time of the said negotiations. See paragraph 2.7 of the WIPO Overview 2.0. Additionally, although the Respondent states that she intends to use the disputed domain name for payment-related software development, the Panel notes that she does not provide any proof of the planning or preparations for same despite submitting ample proof on her other claims. The Panel notes in this regard that the present use of the disputed domain name to link to a website relating to Asian philosophy contradicts elements of the Respondent's claims and, under the circumstances, is unconvincing. C. Registered and Used in Bad Faith
The Panel will address the issue of bad faith registration and bad faith use separately below.
First, the Panel finds that the Respondent has registered the disputed domain name in bad faith. The registration of a domain name that is similar to a distinctive third-party trademark by the respondent, when the respondent has no relationship to that mark, may suggest bad faith. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319. Given the undisputed facts, the Panel finds it highly doubtful that the Respondent, who has no relationship to the BOSS mark, would have acquired the disputed domain name without having knowledge of the Complainant and/or the BOSS mark. This conclusion was reached by taking into consideration, among other things, the following:
1. the fact that the disputed domain name consists of two terms - "boss" and "pay" - which are directly relevant to the Complainant and its line of business;
2. although the Respondent states that she intends to use the disputed domain name for payment‑related software development, she does not provide any proof of the planning or preparations for same. This is acutely suspect since the Respondent showed substantial effort in providing materials in support of her other positions; and
3. the Respondent's claim of intending to use the disputed domain name for payment-related software development, the purpose of which is inconsistent with the use of the site to link/connect others to websites that concern Asian philosophy.
The only reasonable conclusion to draw is that the Respondent deliberately sought to sell the disputed domain name for a profit. This falls squarely within paragraph 4(b)(i) of the Policy. See, e.g., Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
As explained above, the Respondent acquired the disputed domain name approximately twelve years after the Complainant first began to use the BOSS mark. As indicated in Section 6.B., although the Respondent states that she intends to use the disputed domain name for payment-related software development, she does not provide any proof of the planning or preparations for same despite submitting ample proof on her other claims. Also, the Panel finds that the Respondent's claim that she is using the disputed domain name to link/connect others to websites that concern Asian philosophy is wholly inconsistent with her previous claim to use it for payment-related software. Moreover, the subject matter of Asian philosophy has no apparent connection with the ordinary meanings of the very words that constitute the disputed domain name - namely "boss" and "pay". Thus, the Respondent's arguments for denying the Complainant's claim of registration and use in bad faith strain credulity.
Under such circumstances, and having considered paragraph 3.1 of the WIPO Overview 2.0, the Panel finds registration in bad faith, as the Respondent is clearly aware of the Complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the disputed domain name and the Complainant's mark.
Second, the Panel finds that the Respondent is using the disputed domain name in bad faith.
The Panel finds that the two credible explanations for the use of the disputed domain name are first, to take commercial advantage of the similarity between it and the Complainant's trademark (e.g., profit from selling the disputed domain name). Second, as mentioned above, there is nothing in the record to show that the Respondent has any connection whatsoever to the BOSS mark nor to the BOSSPAY mark other than the pending Korean trademark application. However, given the suspect nature of said application based on its filing date during the Complainant's negotiations for the purchase of the disputed domain name, the Panel finds that the credible evidence of record shows that the Respondent must have been aware of the BOSS mark and intentionally attempted to use it for commercial gain.
The conduct described above falls squarely within paragraph 4(b)(i) of the Policy, and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 5, 2016
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