The Complainant is Leighton Adem, Australia, self-represented.
The Respondent is Jaewan Lee, Republic of Korea, represented by DongsuhYangjae Law Offices, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2020, 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. On July 30, 2020, the Center notified that the Complaint was administratively deficient and also notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On July 31, 2020, the Complainant filed an amended Complaint and requested for English to be the language of the proceeding. On August 6, 2020, the Respondent requested for Korean to be the language of the proceeding. 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 in English and Korean of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Center received an informal email from the Respondent on August 14, 2020. The Center notified the Parties on September 3, 2020, that it would proceed to panel appointment. The Center appointed Ik-Hyun Seo as the sole panelist in this matter on September 17, 2020. 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. Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel by October 1, 2020. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to October 15, 2020, and the Parties were so notified. On October 19, 2020, the Center issued a procedural order (the “Procedural Order”) to the Parties on the Panel’s behalf. In the Procedural Order, the Panel requested from the Complainant a further explanation on why the Complainant believes that the disputed domain name was registered in bad faith, and from the Respondent an explanation on his claim to rights or legitimate interests in the disputed domain name, as well as the reason for his registration of the disputed domain name. The Complainant filed a response on October 20, 2020. On October 28, 2020, the Respondent filed a response and the Complainant filed an additional response on the same date. 4. Factual Background The Complainant Leighton Adem is the owner of FlyLife Magazine Pty Ltd, an Australian journal on fly fishing which was established in 1995. FlyLife Magazine Pty Ltd has trademark registrations for the FLYLIFE mark in Australia and in New Zealand going back to as early as 1996 (Australian Trademark Registration No. 645329, registered on April 19, 1996, and New Zealand Trademark Registration No. 618429, registered on July 12, 2001, etc.). The Respondent appears to be a Korean individual who resides in the Republic of Korea. The disputed domain name was registered on May 21, 2001, and resolves to a domain parking site. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical to the FLYLIFE trademark in which the Complainant has rights. Further, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In the response to the Procedural Order, the Complainant notes that the disputed domain name has been linked to a domain parking site since its registration in 2001 and that this does not constitute use in connection with a bona fide offering of goods or services. Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant notes that the disputed domain name is linked to a domain parking site and is advertised for sale, and that the only reason for the Respondent’s registration of the disputed domain name was to sell it for unreasonable profit. In addition, in the response to the Procedural Order, the Complainant adds that the Respondent advertises the disputed domain name for sale and that the Respondent has a history of domain name registration in bad faith as evidenced by several negative UDRP decisions rendered against him. B. Respondent To the Procedural Order, the Respondent submitted a response, in which he contends that the FLYLIFE trademark is registered to Flylife Magazine Pty Ltd and that the Complainant does not have rights to the trademark. Further, the Respondent contends that he has rights and legitimate interests in the disputed domain name, since it is composed of common dictionary terms and is weak in distinctiveness as a whole. Finally, the Respondent contends that he did not register or use the disputed domain name in bad faith. The Respondent notes that the Complainant’s trademark is not famous or distinctive, and that he could not have known of the Complainant or the Complainant’s trademark. 6. Discussion and Findings A. Language of the Proceeding Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both Parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would preliminarily accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. To the Procedural Order, the Respondent filed a response in Korean. Since both parties were permitted to and in fact did present their cases in the language of their preference, it appears that fairness has been maintained in view of the overall circumstances. Besides, the Respondent advertised the disputed domain name for sale on the website linked to the disputed domain name and on a separate domain name marketplace, and based on the ads the Respondent appears to have sufficient English capability for the purpose of this proceeding. Accordingly, the Panel finds it proper and fair to render this decision in English. B. Identical or Confusingly Similar As the element of bad faith was not satisfied, the Panel finds it unnecessary to address this element. C. Rights or Legitimate Interests As the element of bad faith was not satisfied, the Panel finds it unnecessary to address this element. D. Registered and Used in Bad Faith As the Complainant pointed out, the Complainant has trademark registrations for the FLYLIFE trademark in Australia and New Zealand, and the Respondent has had negative UDRP decisions rendered against him, which acknowledged the Respondent’s bad faith registration and use of several domain names. However, the Panel finds that the term “flylife” is not so unique as to suggest or raise a strong inference that the Respondent targeted the Complainant’s trademark and thus acted in bad faith when obtaining registration for or using the disputed domain name. In fact, there are several other parties using “flylife” as a trade name, including a clothing company in the United States of America, a biomedical company in Italy, and a fly fishing supplies company in Canada. Furthermore, while the Complainant cites prior UDRP cases involving the Respondent, these cases do not by themselves provide evidence of bad faith registration or targeting of the Complainant’s trademark by the Respondent in the circumstances of this case, and the Complainant has not otherwise provided evidence of such bad faith registration or targeting. The Panel also notes that linking a domain name to a domain parking site and advertising it for sale, while perhaps insufficient to demonstrate bona fide use, are not conclusive evidence of bad faith use. In that regard, this use of the disputed domain name does not support a finding of bad faith in these circumstances, noting, inter alia, the composition of the disputed domain name comprising two dictionary terms and the lack of evidence of targeting the Complainant’s trademark rather than the dictionary elements of such mark. Accordingly, the Panel finds the record and evidence insufficient to reasonably establish this element. 7. Decision For the foregoing reasons, the Complaint is denied. Ik-Hyun Seo
Sole Panelist
Date: December 4, 2020
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