The Complainant is Fusion3 Design, LLC of Greensboro, North Carolina, United States of America (“United States” or “U.S.”), represented by Hutchison PLLC, United States.
The Respondent is Fusion3 Inc. f/k/a TradeMark Management of Incheon, Republic of Korea, self‑represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Inames Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On September 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant.
On September 13, 2018, 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 September 13 and 14, 2018, the Respondent requested for Korean to be the language of the proceeding. On September 14, 2018, the Complainant requested for English to be the language of the proceeding.
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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Response was filed in Korean with the Center on October 10, 2018.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on November 7, 2018. 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
i) The Complainant is the owner of the FUSION3 trademark for use in connection with 3D printing related goods and services. It owns the U.S. Trademark Registration Nos. 5,433,718 registered on March 27, 2018, and 5,144,134 registered on February 21, 2017 for the FUSION3 mark.
ii) The disputed domain name was created on May 15, 1999.
iii) The Respondent acquired the disputed domain name on June 14, 2016.
iv) The disputed domain name was resolved to a parking page.
v) There was a prior negotiation for the purchase of the disputed domain name initiated by the Complainant. 5. Parties’ Contentions A. Complainant
i) The Complainant is the owner of the FUSION3 trademark for use in connection with 3D printing related goods and services. It owns U.S. Registration Nos. 5,433,718 and 5,144,134 for the FUSION3 mark (See Complainant’s Annex 8 copies of the Certificates of Registration for the FUSION3 marks). The Complainant has used the FUSION3 mark in connection with its 3D printing related goods and services since at least as early as August 2013. The Complainant, based on its longstanding and exclusive use of the FUSION3 mark in connection with its goods and services, has developed significant consumer recognition for its products and is widely recognized as a best in class offering in the 3D printing space (See Complainant’s Annex 9: third-party reviews and recognition). The disputed domain name is identical to the Complainant’s registered FUSION3 trademark.
ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s use of the disputed domain name has no connection with a bona fide offering of goods or services. Upon registering the disputed domain name, after the Complainant had established rights to the FUSION3 trademark, the Respondent has only used the disputed domain name to resolve to a parking page for pay-per-click (“PPC”) advertisements and to solicit offers to purchase the disputed domain name (See Complainant’s Annex 10). There was no evidence that the Respondent has been commonly known by the Fusion3 name. The Respondent modified the WhoIs records associated with the disputed domain name to hold itself out as Fusion3 Inc. (See WhoIs records at Complainant’s Annex 1 to Annex 2). However, these uses are merely an effort to suggest an interest in the disputed domain name, and thus they are not reflective of a legitimate business name. Moreover, the Respondent uses multiple different identities in association with its domain names in an effort to shield its true identity. The Respondent’s only business interest is trafficking in domain names associated with terms corresponding to registered trademarks in an effort to sell the domain names to the associated rights holder.
iii) The Respondent did not register the disputed domain name until three years after the Complainant had been widely using the FUSION3 trademark in connection with its 3D printing goods and services and two years after the Complainant first applied to register its mark. The Respondent attempted to shield its identity in view of the bad faith registration of the disputed domain name through the use of a fictious name “TradeMark Management”. After the Complainant contacted the Respondent concerning the disputed domain name, the Respondent modified its WhoIs information so that the Respondent’s name appears as Fusion3 Inc. The Respondent’s sole intent in acquiring the disputed domain name has been to sell the disputed domain name and generate advertising revenue from consumer confusion in the interim. The Respondent’s bad faith is further demonstrated by its efforts to exploit exorbitant amounts for the sale of the disputed domain name and from misrepresenting the timing and nature of its registration of the disputed domain name. The Respondent registered the disputed domain name on June 14, 2016. Historical WhoIs records indicate that as far back as September 17, 2001, the disputed domain name was not owned by the Respondent but by a Canadian entity operating under the name Distribution Fusion III Inc. (See Historic WhoIs records from Domain Tools, LLC: Complainant’s Annex 12). The Respondent’s efforts to suggest longer ownership in an effort to demand a higher purchase price is further evidence of the Respondent’s bad faith use of the disputed domain name. B. Respondent
The Respondent registered the disputed domain name on May 15, 1999 well before November 26, 2014 when the Complainant filed its applications to register the FUSION3 trademark (See a copy of WhoIs record at the Respondent’s Annex 1 and a copy of Certificate of Domain Name Registration at the Respondent’s Annex 4). The Respondent did not register the disputed domain name in bad faith. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide “a complaint on the basis of the statements and documents submitted and 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 the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean and also indicated it would (and has) appointed a panel familiar with both English and Korean.
The Complaint was filed in the English language. The Respondent requested for Korean to be the language of the proceeding. The Complainant has submitted a request that English be the language of proceeding in which it has advanced a number of arguments including that, according to the Complainant, the Respondent has sufficient ability understanding the English language because: the Complainant, by and through its counsel has had a number of email communications with the Respondent in English (See copies of the correspondence attached as Complainant’s Annex 5); there has never been an objection from the Respondent to corresponding in English or any difficulty arising from the use of English in these communications; the content of the parking page associated with the disputed domain name is presented in English (See screenshot provided in Complainant’s Annex 10); and the Respondent owns a number of additional domain names directed to English terms, further demonstrating a familiarity with the language ( See printout from domainIQ Corp attached at Complainant’s Annex 6).
The Panel recognizes that the Respondent can read and understand the English language in light of the circumstances that the Complainant has submitted. In a previous UDRP decision, the Respondent was found to have “a reasonable proficiency in the English language”. See Groupe Canal+ Company v. Jinsoo Yoon,WIPO Case No. D2006-1240. 1
The Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679.
The Parties here have submitted all they wish, in their preferred languages. It appears that each Party understands or has received translations of the other’s filings, allowing it to submit responsive arguments.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; (2) accept the Respondent’s Response in Korean; and (3) issue a decision in English. B. Identical or Confusingly Similar
The Complainant contends that the Complainant is the owner of the FUSION3 trademark for use in connection with 3D printing related goods and services. It owns U.S. Registration Nos. 5,433,718 registered on March 27, 2018, and 5,144,134 registered on February 21, 2017 for the FUSION3 mark (See Complainant’s Annex 8: copies of the Certificates of Registration for the FUSION3 marks). Registration of a mark with the United States Patent and Trademark Office sufficiently confers the Complainant’s rights in a mark for the purposes of Policy paragraph 4(a)(i). Accordingly, the Panel finds that the Complainant has established rights in the FUSION3 mark for the purposes of Policy paragraph 4(a)(i).
Next, the Complainant contends that the disputed domain name is identical to the Complainant’s registered FUSION3 trademark. The Panel notes that the disputed domain name is identical to the Complainant’s mark as it adds the generic Top-Level Domain (“gTLD”) “.com” to the fully incorporated mark. The incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s mark. See Revlon Consumer Products Corporation v. IONE Inc.,WIPO Case No. D2010-1000. The gTLD suffix “.com” in the disputed domain name is non-distinctive. See Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios,WIPO Case No. DTV2001-0013.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy has been established. C. Registered and Used in Bad Faith
The Complainant contends that the Complainant has used the FUSION3 mark in connection with its 3D printing related goods and services since at least as early as August 2013 (See registration information attached at Complainant’s Annex 8). It further contends that based on its longstanding and exclusive use of the FUSION3 mark in connection with its goods and services, the Complainant has developed significant consumer recognition for its products and is widely recognized as a best in class offering in the 3D printing space (See third-party reviews and recognition submitted as Complainant’s Annex 9). The Complainant avers that the Respondent registered the disputed domain name on June 14, 2016, by submitting a copy of Historic WhoIs Records as Complainant’s Annex 3. The Complainant concludes that the registration of the disputed domain name was well after the Complainant had widely used and established broad consumer recognition in the FUSION3 trademark and well after November 26, 2014 when the Complainant filed its applications to register the FUSION3 trademark (See Complainant’s Annex 3 and Annex 8).
In response to the Complainant's assertion, the Respondent contends that the Respondent registered the disputed domain name on May 15, 1999 well before November 26, 2014 when the Complainant filed its applications to register the FUSION3 trademark (See a copy of WhoIs record at the Respondent’s Annex 1 and a copy of Certificate of Domain Name Registration at the Respondent’s Annex 4). The Respondent contends that the registration of the disputed domain name was not in bad faith.
The Panel finds that the disputed domain name was created on May 15, 1999 (See a copy of WhoIs record at Complainant’s Annex 1 and Respondent’s Annex 1). The Panel further notes that the Respondent acquired the disputed domain name on June 14, 2016 (See a copy of Historic WhoIs Records as Complainant’s Annex 3).
Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel notes that there is no dispute between the Parties on the fact that the disputed domain name was created on May 15, 1999 well before the first use and/or registration of the Complainant’s mark FUSION3. The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. See John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074 and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827.
Therefore, the Panel determines that the disputed domain name was initially registered not in bad faith. Now the Panel looks to the circumstances at the date the Respondent itself acquired the disputed domain name.
The Complainant contends that the Complainant has used the FUSION3 mark in connection with its 3D printing related goods and services since at least as early as August 2013. The Complainant further contends that based on its longstanding and exclusive use of the FUSION3 mark in connection with its goods and services, it has developed significant consumer recognition for its products and is widely recognized as a best in class offering in the 3D printing space. However, the Panel notes that in order to establish its allegation the Complainant is submitting only two items of evidence, i.e., trademark registration information (Complainant’s Annex 8) and third-party reviews and recognition (Complainant’s Annex 9). The Complainant’s trademark registration certificate (Complainant’s Annex 8) merely shows the date of first use of the mark being August 8, 2013. The Complainant’s Annex 9 is a three-page magazine article of “Reviewboard MAGAZINE” dated February 2, 2017, which does not appear to demonstrate significant consumer recognition for the Complainant’s products or wide recognition as a best in class offering in the 3D printing space before June 14, 2016, when the Complainant is asserting that the Respondent acquired the disputed domain name. Based on the record, the Panel does not agree with the Complainant that the Complainant’s mark was well known enough to presume the Respondent’s bad faith to capitalize on the notoriety of the Complainant’s mark as of June 14, 2016, when the Respondent acquired the disputed domain name.
The Panel notes that the Respondent’s conduct has been somewhat suspicious in this matter (e.g. apparent change of registrant details upon being contacted by the Complainant). The Panel also notes that the Respondent appears to maintain an important portfolio of domain names and has been party to previous UDRP proceedings. However, noting the Panel’s findings regarding the consumer recognition of the Complainant’s trademark in 2016 and the fact that the term “Fusion 3” appears to be commonly used by third parties for various businesses (as also corroborated by the fact that the disputed domain name was first created in 1999), the Panel concludes that the Respondent did not register the disputed domain name in bad faith under Policy paragraph 4(a)(iii).
As the Panel concludes that the Complainant has not satisfied bad faith registration of the disputed domain name per Policy paragraph 4(a)(iii), it declines to analyze the other elements of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ho-Hyun Nahm
Sole Panelist
Date: November 11, 2018
1 Based on submissions on the record, Jinsoo Yoon is a co-founder of the Respondent.
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