The Complainant is Terrafinity Pty Ltd, Australia, represented internally.
The Respondent is Jinsoo Yoon, 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 May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2021, 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 for the Domain Name. 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 of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2021. The Center appointed Tony Willoughby as the sole panelist in this matter on July 2, 2021. 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 The Complainant is an Australian company engaged in the field of computer consultancy services. It is the registered proprietor of Australian Trade Mark Registration No. 1712212, TERRAFINITY (figurative mark) registered March 15, 2016 (application filed August 5, 2015) in class 42 for computer advisory and other computer-related services. The Domain Name was registered on April 7, 2021, and is connected to a parking page headed “terrafinity.com – This domain name is FOR SALE. Click here to enquire about this domain”. The parking page features seven ‘Related Links’ labelled “Biofinity Toric”’ “Makeup”, “Spy Phone”, “Coopervision Biofinity Toric”, “Coopervision Biofinity”, “Biofinity” and “Fridge”. Clicking on the heading leads to a page hosted by BGroup and inviting minimum offers for the Domain Name of USD 4,950. The page features the Respondent’s registered email address. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical to the Complainant’s TERRAFINITY registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that; (i) the Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith. B. Identical or Confusingly Similar The trade mark registration upon which the Complainant relies (see Section 4 above) is a figurative mark. Whether or not a figurative mark can form the basis for a complaint under the Policy depends upon the extent to which (if at all) the design elements of the mark “overtake the textual elements in prominence.” (Section 1.10 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case the figurative element of the trade mark is the word/name “terrafinity” in stylized, yet clearly recognisable form. “Terrafinity” is the predominant element of the Complainant’s trade mark and by no means overtaken by the design elements of the mark. The Domain Name comprises the word/name ”terrafinity” followed by the “.com” generic Top-Level Domain identifier. Section 1.7 of WIPO Overview 3.0 explains the test for identity or confusing similarity under the first element of the UDRP and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The predominant feature of the Complainant’s registered trade mark is readily recognizable in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests The Complainant states that it has given the Respondent no permission to use its trade mark and that the Respondent has not sought any permission to use it. The Complainant observes that the Respondent’s name bears no relation to the Domain Name and that, similarly, the advertising links on the Respondent’s website bear no relation to the Domain Name. The website features a banner and associated link indicating that the Domain Name is for sale at a substantial profit. The Complainant further states that it has been unable to find any evidence that the Respondent has ever been known by the Domain Name or has ever had any legitimate interest in respect of the Domain Name. The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent. The Respondent has chosen not to respond. In the absence of any explanation from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith The Complainant asserts (without any supporting evidence) that the Respondent acquired the Domain Name by way of a “drop-catch” service following the Complainant’s approach to the previous registrant seeking transfer of the Domain Name prior to launching a complaint under the Policy. The Complainant points out that the Domain Name is neither a dictionary term nor an obvious conjunction of English words nor a name having any obvious connection with the content of the Respondent’s website (see section 4 above). The Complainant contends that the minimum price put on the Domain Name by the Respondent (USD 4,950) is way above the out-of-pocket expenses incurred by the Respondent in relation to the Domain Name. The Complainant contends that the Domain Name, an unusual name peculiarly associated with the Complainant, is only of any special value for that association with the Complainant. The Respondent has not challenged the Complainant’s contentions. Moreover, the Panel is unable to conceive of any reasonable explanation for the Respondent having selected for the Domain Name a name so peculiarly associated with the Complainant. The Panel agrees with the Complainant that a minimum price of USD 4,950 for the Domain Name reflects a special value going beyond the intrinsic value of the name. The Panel concludes on the balance of probabilities and in the absence of any explanation from the Respondent that that special value stems from the fact that, ignoring the figurative aspect of the Complainant’s trade mark, the Domain Name is, in substance, identical to that trade mark. The Panel finds on the balance of probabilities that the Respondent registered the Domain Name primarily for the purpose for which it is being used, namely to advertise the Domain Name for sale at a profit, the most likely potential purchaser being the Complainant or someone seeking to profit from the trade mark value of the Domain Name. The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy. For completeness, the Panel mentions that the Complainant asserts in support of its contention that the Domain Name was registered and is being used in bad faith that the Respondent has a track record of abusive domain name registrations there having been “[…] at least 18 UDRP cases against Respondent in which the panel ordered transfer of the domain name.” The Complaint contains no evidence to support that contention and the Panel considers such matters could have been supported by evidence attached to the Complaint. Hence, in coming to its decision the Panel has ignored that allegation. 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 Domain Name, Tony Willoughby
Sole Panelist
Date: July 15, 2021
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