Complainant is NXC Corporation, Republic of Korea, internally represented.
Respondent is Subhadeep Kunda, App Development, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 20, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. Respondent did not submit any formal response. The Center received various informal communications on September 19, September 28, September 29, 2021, to which the Center acknowledged receipt. Accordingly, the Center started the Commencement of Panel Appointment Process on October 14, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 19, 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.
On November 1, 2021, the Panel issued Procedural Order No. 1, which stated:
“The Panel orders the Parties to provide the following information on or before November 10, 2021:
1. Complainant shall provide information to support the claim that Respondent, or a client of Respondent, was likely aware of Complainant’s trademark NEXON at the time the Domain Name was registered on May 14, 2021.
2. Respondent shall indicate whether he originally registered the Domain Name on his own behalf, or originally registered it on behalf of a client, and shall provide evidence of same.
3. Respondent shall indicate why he registered the Domain Name and, if he did so on behalf of a client, shall indicate whether he was aware of the client’s motives for desiring the Domain Name, and shall provide evidence of same.
4. Respondent shall state, in a sworn affidavit, whether he was aware of the NEXON trademark at the time the Domain Name was registered.
5. Respondent shall state whether he objects to a voluntary transfer of the Domain Name to Complainant in this proceeding. If Respondent states that he has no such objection, then items 1-4 above are not necessary.
The Panel reserves the right to issue such further procedural orders as the Panel deems appropriate.
The due date for decision in this proceeding shall be amended to November 19, 2021.”
Respondent did not respond to Procedural Order No. 1.
Complainant submitted a response to Procedural Order No. 1 on November 10, 2021. In that submission, Complainant notes that the trademark NEXON is inherently distinctive, in as much as it does not correspond to a dictionary term. Complainant also provided some evidence, in the form of links to media articles discussing Complainant and, in one instance, referring to “Korean Gaming Giant Nexon”.
4. Factual BackgroundComplainant describes itself as one of the top companies in the software, gaming, and entertainment industry and is recognized as an Asian giant in the industry especially in Asia.
Complainant holds several registered trademarks for NEXON in various jurisdictions, including United States Patent and Trademark Office (“USPTO”) Reg. No. 4,168,236 (registered on July 3, 2012) for the word mark NEXON in connection with, among other things, “downloadable computer game software and computer game programs; computer programs for video games. And computer programs featuring positionable game piece figures for use in the field of computer games, video and computer game programs”, with a 1998 date of first use in commerce.
The Domain Name was registered on May 13, 2021. The Domain Name does not resolve to an active website. In a September 28, 2021 email to the Center, Respondent stated:
“I want to delete one of my cliant’s [sic] domains www.nexonitech.com.
I tried deleting it too many times. Its [sic] not working. I go to the Billing page. Then select the domain and click the check box. The selected cancel renewal option and then selected Delete my product. A confirmation mail came. I confirmed. Then also its [sic] not deleting. Plese [sic] delete this domain from Backed as soon as possible. I don’t want a refund. Just delete this domain.
I need to delete my domain and for that you need to check and make me able to delete domain.
Actually this is one of my cliant's [sic] domain. Which was purchased from my account. So can thats why i want to delete this domain.
I need to delete my domain and for that you need to check and make me able to delete domain.”
In another email sent before that day, Respondent wrote to the Center (verbatim):
“I don’t understand what is going on. Im belongs from Poor family. Im contacting with my domain company for this matter. If you want to cancel this domain or want to Transfer this domain you can take this domain I don’t have any problem.”
As noted above, Respondent did not provide evidence in response to Procedural Order No. 1 to clarify the comments made in the above-quoted emails. As such, there is no evidence of record that Respondent registered the Domain Name on behalf of some third-party client.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent did not reply to Complainant’s contentions but, as noted above, apparently has asked the Center to “delete” the Domain Name registration and stated that he would have “no problem” if the Panel ordered that the Domain Name be transferred.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel concludes that Complainant has rights in the trademark NEXON through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The addition of the letters “itech” does not overcome the fact that the mark NEXON is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has sent repeated emails to the Center which are not clear, but which can be construed as a request by Respondent to delete or transfer this Domain Name. In this regard, the Respondent was asked in the Procedural Order No. 1 whether he objects to a voluntary transfer of the Domain Name to Complainant in this proceeding but Respondent did not raise any objection. Respondent did not offer any explanation of why he registered the Domain Name in the first place. Nor, despite the Procedural Order No. 1, did Respondent offer any evidence of any “client” on whose behalf Respondent had registered the Domain Name. Procedural Order No. 1 also asked Respondent whether he was aware of the NEXON mark at the time he registered the Domain Name, and Respondent did not come forward with a denial.
Under these circumstances, the Panel concludes that Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has 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 its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel incorporates its discussion above in the “rights or legitimate interests” section. The Panel relies on Respondent’s apparent lack of interest in the Domain Name, also noting the composition of the Domain Name (registered by adding the letters “itech” to NEXON), and that the Domain Name does not resolve to an active website (which does not prevent a finding of bad faith). Again, Respondent was given a full opportunity to reply to Procedural Order No. 1 to clarify the meaning of his several emails to the Center, to prove the existence of some possible “client”, to disclaim knowledge of the NEXON trademark at the time of Domain Name registration, and to object to a voluntary transfer of the Domain Name to Complainant.
Under these circumstances, the Panel concludes that the most likely interpretation of Respondent’s statements (and omissions) is that he consents to the remedy of a transfer of the Domain Name due to an apparent lack of interest in the Domain Name, and the Panel concludes that Policy paragraph 4(a)(iii) has been established.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Sole Panelist
Date: November 14, 2021