Complainant is Sinclairestyle S.r.l., Italy, represented by Sagone-Filipazzi-De Silvestri, Italy.
Respondent is Jung Yunkook, Republic of Korea.
The disputed domain name <sinclairestyle.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCA.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008. On November 6, 2008, the Center transmitted by email to DomainCA.com a request for registrar verification in connection with <sinclairestyle.com> (hereinafter the “Domain Name”). On November 7, 2008, DomainCA.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On November 14, 2008, the Center notified the Parties of the procedural rules relevant to the language of the proceeding, in both English and Korean. On November 18, 2008, Complainant submitted a request that English be the language of the proceeding, to which Respondent has not replied. On November 24, 2008, the Center notified the Parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a Panel familiar with both languages mentioned above, if available.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, in both English and Korean, and the proceeding commenced on November 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2008. Respondent did not submit any response. On December 15, 2008, the Center notified Respondent, in English and Korean that an administrative panel would be appointed, the panel would be informed of Respondent's default, and that acceptance of a late Response was at the panel's sole discretion.
The Center appointed Grant L. Kim as the sole panelist in this matter on January 19, 2009. 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.
Complainant, Sinclairestyle S.r.l., is a company incorporated under the laws of Italy, solely owned by Mr. Andrea Leonardi. Mr. Leonardi, working under the professional name “Bratt Sinclaire,” produces recordings of musical compositions. Complainant operates a website that may be reached through a number of domain name registrations of the SINCLAIRESTYLE mark, including <sinclairestyle.net>, <sinclairestyle.org>, <sinclairestyle.biz>, <sinclairestyle.eu>, and <sinclairestyle.it>. These domain names were registered in January and February 2007. At the websites, titled “SinclaireStyle,” Complainant promotes the goods and services that are provided under the “SinclaireStyle” music label.
Respondent registered the Domain Name with the Registrar on March 9, 2007. The Registrar confirmed the identity of the registrant in an e-mail to the Center. As part of Respondent's registration agreement with the Registrar, Respondent agreed to submit any disputes to a proceeding under the Policy.
When the Panel input the website address at the Domain Name into a web browser in January 2009, the website displayed an English language page that states: “The domain <sinclairestyle.com> may be for sale by its owner!” At the bottom of the page it states that the page was provided to the domain name owner “free by Sedo's Domain Parking.” The website invites prospective buyers to click on a link for “more details.” The link directs prospective buyers to a web page at <sedo.com> indicating that the Domain Name is for sale, and invites offers for the Domain Name in U.S. Dollars, Euros, or British Pounds.
Complainant states that he has produced and composed music commercially since at least as early as 1995 under the professional name “Bratt Sinclaire” through Delta Corporation, a company jointly owned by Complainant and two other individuals. In January 2007, Complainant withdrew from Delta Corporation to establish his solely owned music label, incorporated as Sinclairestyle S.r.l. Complainant acquired the intellectual property rights to works he produced or composed while working through his Delta Corporation partnership through settlement of a legal dispute with his former partners.
Complainant states that at the time he established the new company, Sinclairestyle S.r.l., he registered the SINCLAIRESTYLE mark in combination with the top-level domains (“TLDs”) “.net”, “.org”, “.biz”, “.it”, and “.eu”. Complainant claims that the mark was already “widely used” at that time.
On January 9, 2007, the Domain Name was registered by a third-party. Complainant believes this registration was related to his dispute with his former business partners. Complainant enforced his rights to the Domain Name under Italian law through an Italian legal proceeding, securing release of the Domain Name registration from the registrar, Register.it. Complainant states that “in the very first seconds” after the Domain Name was released on March 7, 2007, it was registered by a United States company, Enom.com. Two days later it was recorded as registered by a new registrant, a Korean company named “Linecom.” Complainant contends that this registrant is Respondent, who is currently listed as the registrant under his personal name, Jung Yunkook.
Complainant e-mailed Respondent to inquire about the Domain Name shortly after Respondent registered the Domain Name. On March 12, 2007, Complainant received a reply from an individual who signed the e-mail with a Korean surname and a Korean phone number. The e-mail stated that the domain name owner, the writer's “client,” would transfer the rights to the Domain Name for EUR 3,900.
Complainant requests a decision requiring the Registrar to transfer the Domain Name to Complainant pursuant to paragraph 4(i) of the Policy. Complainant asserts that Respondent's use of the Domain Name satisfies the standard established in paragraph 4(a) of the Policy because: (1) Complainant has developed rights in the unregistered mark SINCLAIRESTYLE, and the Domain Name is confusingly similar to Complainant's SINCLAIRESTYLE mark; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered in bad faith and is being used in bad faith.
Complainant contends that its rights in the SINCLAIRESTYLE mark arise through his use of the professional name “Bratt Sinclaire” since 1995, “wide use of the domain name in issue under the Bratt Sinclaire Discography,” “wide use” prior to establishing Sinclairestyle S.r.l., and also through the Sinclairestyle S.r.l. company “since the beginning of 2007.” Complainant states that he named his company “Sinclairestyle” to recall his “long-lasting famous nickname.” Complainant states that the Domain Name is identical to the SINCLAIRESTYLE mark.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name. Complainant states that Respondent has never made commercial use of fair use of the name or mark SINCLAIRESTYLE.
Complainant further contends that Respondent has registered and used the Domain Name in bad faith. Complainant states that Respondent was aware of Complainant through Complainant's other domain name registrations of the SINCLAIRESTYLE mark. Complainant states that Respondent has used and registered the Domain Name for the sole purpose of “selling, renting or otherwise transferring” it to Complainant.
Respondent did not reply to Complainant's contentions.
The Panel finds that it was properly constituted pursuant to the Rules and that it has jurisdiction to decide this dispute. The Panel notes that the record, including a confirmation communication from the Registrar, shows that Respondent agreed to the Policy as part of its Domain Name registration, and was notified of the Complaint at the address included in Respondent's registration. The Panel further notes that notwithstanding Respondent's failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not Complainant is entitled to the relief requested under the Policy, the Rules, and the Supplemental Rules.
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. Since the Registrar has confirmed that the Registration Agreement is in Korean that is the language of this proceeding unless the Panel decides otherwise. Upon receiving notice of the same from the Center, Complainant submitted a request for English to be the language of the proceeding, citing a number of specific reasons.
The Panel notes that Respondent has not raised any objection to this proceeding being conducted in English by failing to respond to the Center's notice, sent in both English and Korean. The Panel concludes that it is reasonable to conduct this proceeding and to render the decision in English. See, e.g., Taylor Made Golf Company, Inc. d/b/a TaylorMade adidas Golf v. Kang Doeck-Ho, WIPO Case No. D2005-1262.
Pursuant to paragraph 4(a) of the Policy, a domain name may be cancelled or transferred to Complainant where the three elements below are satisfied. The burden of proof is on Complainant.
(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 with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Transfer or cancellation of the Domain Name is the sole remedy provided to Complainant under the Policy, as described in paragraph 4(i).
To satisfy this element, the Panel must find that (1) Complainant has demonstrated its rights in the SINCLAIRESTYLE mark; and (2) the Domain Name is identical or confusingly similar to Complainant's mark. For the purpose of this element, the issue is whether Complainant had trademark rights “as of the time of [filing] the Complaint.” Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (emphasis in the original).
Complainant has established that he has rights in the SINCLAIRESTYLE mark as of the time of filing the Complaint. Complainant does not own any national registrations for the SINCLAIRESTYLE mark. However, it is well established that the term “trademark or service mark” as used in Paragraph 4(a)(1) encompasses both registered marks and unregistered marks. See, e.g., Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322. Rights in an unregistered mark arise when “a sufficient level of goodwill” and reputation develops in a mark that comes to be associated with the party claiming rights. Id.
The evidence submitted by Complainant indicates that he has provided production services to artists under the SINCLAIRESTYLE mark since 2007. According to Complainant's evidence, he has produced 16 titles for several different artists in 2008 under the SinclaireStyle label, and 20 titles for artists in 2007. The websites cited by Complainant demonstrate active commercial promotion of goods and services under the SINCLAIRESTYLE mark. A simple query of the term “sinclairestyle” through an Internet search engine produces results that further indicate active engagement with the public at large through the SINCLAIRESTYLE mark by Complainant. The Complainant's undisputed contention that he has developed rights in the SINCLAIRESTYLE mark is sufficiently proved. Based on the record available to the Panel, Complainant's rights in the mark have been established.
Trademark rights that mature after registration of a domain name may satisfy this element. The timing of when Complainant developed rights in the trademark bears on the issue of bad faith. This issue is discussed further below. Infra, 6(E). For the purpose of considering the first element of Paragraph 4(a) of the Policy, the Panel finds that Complainant has satisfied the requirement of demonstrating rights in the SINCLAIRESTYLE mark.
The Panel finds the second part of this element is also satisfied in this case, as the Domain Name and Complainant's mark are identical. It is well-established that the specific top-level identifier of a domain name, such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, e.g., Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585. Here, the Domain Name is identical to Complainant's SINCLAIRESTYLE mark, with the insignificant addition of the top level identifier, “.com.” Accordingly, the Panel finds the Domain Name identical to Complainant's mark.
It is the consensus view of UDRP panelists that, to establish the second element, Complainant must make a prima facie showing that Respondent has no rights to or legitimate interests in the Domain Name. Once Complainant has made a prima facie case, the burden shifts to Respondent to present evidence of its rights or legitimate interests. See, e.g., Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043; see also Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Complainant has stated that Respondent, a private resident of the Republic of Korea, had no prior rights or legitimate interests to justify the registration and use of the Domain Name. Moreover, Complainant asserts that Respondent has not marketed services or goods under the SINCLAIRESTYLE mark through the Domain Name. Instead, the web page available at the Domain Name provides links to goods and services unrelated to those provided by Complainant, and unrelated to the SINCLAIRESTYLE mark. According to Complainant, Respondent has offered to transfer rights to the Domain Name for EUR 3,900. Offering the Domain Name for sale does not satisfy any requirements that could demonstrate a legitimate interest in the Domain Name. In fact, it weighs against Respondent in this inquiry.
The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. The Panel also finds that Respondent has failed to present any evidence to rebut this prima facie case.
Accordingly, the Panel finds the second element established.
To establish the third element, Complainant must demonstrate pursuant to Paragraph 4(a)(iii) of the Policy that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy sets forth a list of circumstances that may show bad faith, including registrations made (i) primarily for the purpose of selling, renting, or transferring the domain name to a complainant (who owns the relevant trademark or service mark) or a complainant's competitor; (ii) to prevent the trademark or service mark owner from reflecting the mark in a corresponding domain name, where a respondent has engaged in a pattern of such conduct; (iii) primarily for disrupting a competitor's business; or (iv) to attract Internet users intentionally and for commercial gain, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location, or an offered product or service. This list is non-exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“[P]aragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”) (emphasis in the original).
Respondent's bad faith use of the Domain Name is clear. According to Complainant's undisputed contention, Respondent has not sought to use the Domain Name for any legitimate purpose. Respondent registered the Domain Name as soon as it was released from registration. Respondent offered to sell the Domain Name for EUR 3,900 on March 12, 2007, only three days after registering. This is strong evidence that Respondent seeks merely to resell the Domain Name to Complainant or other interested parties.
In addition to offering the Domain Name for sale, Respondent lists sponsored web links on the landing page. Posting of those sponsored links is further evidence of Respondent's bad faith. Specifically, it is evidence of intent to profit from the goodwill of another's trademark, by attempting to generate click-through revenues from consumers seeking Complainant's website who have been diverted to Respondent's website. See, e.g., Zedge Ltd., supra.
Furthermore, under paragraph 4(b)(ii) of the Policy, Respondent's prior pattern of conduct provides further supporting evidence of bad faith. It has come to the Panel's attention that Respondent has been found to have engaged in abusive use and registration in two prior UDRP proceedings. In Adidas-Salomon AG v. Jim Yoon / Yunkook Jung, WIPO Case No. D2005-0386, Respondent had registered the domain name <addidas.com>, a common misspelling of the famous ADIDAS mark. Respondent's bad faith was established and the domain name was transferred. The panel in BLANCO GmbH+ Co. KG. v. ILHWA, Yunkook Jung, WIPO Case No. D2008-0969, found that Respondent had used and registered the domain name <silgranit.com> in bad faith as well. This pattern is relevant under the Policy, and further supports the undisputed contention that Respondent registered the Domain Name in bad faith. Through all of these facts taken together, Complainant has sufficiently proved Respondent's use of the Domain Name is in bad faith.
Complainant must also establish that the Domain Name was registered in bad faith. As discussed, supra, Complainant has sufficiently proven that he has rights in the SINCLAIRESTYLE mark. However, the question of when Complainant's rights in the SINCLAIRESTYLE mark developed bears on the issue of bad faith. If Complainant's rights in the mark developed after Respondent's registration of the Domain Name, then proving registration in bad faith may be more difficult.
Respondent came into possession of the Domain Name on March 9, 2007. Thus, Complainant's use, and the extent of the use, of the SINCLAIRE STYLE mark prior to March 9, 2007 is the issue. The record is not entirely clear as to the extent to which the Complainant was using the SINCLAIRESTYLE mark before Respondent's registration. Complainant states that he established his own company, Sinclairestyle S.r.l., in January and February 2007, which was only two months earlier. The record is clear that Complainant was registering domain names that included SINCLAIRESTYLE in January 2007. Complainant states the mark was already “widely used” at that time, and was “recall[ing] his long-lasting famous nickname.” He also states that the SINCLAIRESTYLE mark was widely exploited in connection with his professional name since 1995, and under the Sinclairestyle S.r.l. label since “the beginning of 2007.” However, Complainant has not submitted specific documentary evidence that he was actually using SINCLAIRESTYLE before March 9, 2007, in connection with goods and services.
On the other hand, the record is clear that Complainant has been using the SINCLAIRESTYLE mark for some time and thus supports a finding that Complainant currently has rights in this mark. In addition, Complainant's registration of other domain names including the SINCLAIRESTYLE mark in January and February 2007 and establishment of his own company at that time show that Complainant was seeking to establish rights in this mark. Further, Respondent has made no effort to rebut Complainant's assertion that the SINCLAIRESTYLE mark was already widely used in January 2007. Paragraph 14(b) of the Rules provides that, absent “exceptional circumstances,” a panel shall draw inferences from a party's default that it considers appropriate. There are no exceptional circumstances present here. Thus, the Panel may infer that Respondent does not deny the facts asserted by Complainant, and does not deny the conclusions that Complainant asserts based on these facts. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. In this case, the uncontested assertions that Complainant has made, which are consistent with the evidence that has been presented weigh favorably for Complainant in determining whether Respondent registered the Domain Name in bad faith.
Further, as Complainant has noted “sinclairestyle” is a somewhat arbitrary term. There is no evidence that Respondent had any independent, legitimate interest in registering the Domain Name; on the contrary, the record suggests that Respondent registered the Domain Name for the sole purpose of selling it to someone who wanted to use this name. At the time of registration, Respondent could easily have determined that Complainant had already registered a number of similar domain names. The record does not demonstrate any reason why Respondent would select such a name for registration other than to interfere with Complainant's rights in the mark. Thus, Paragraph 4(b)(i) of the Policy is indicated by this registration. Sufficient evidence shows that Respondent registered the Domain Name “for the purpose of selling, renting, or transferring” the Domain Name to Complainant, or his competitors, since those are the only parties that would likely be interested in possessing a domain registration encompassing this unusual mark. This inference is strongly supported by the fact that Respondent attempted to do exactly that after registering the Domain Name. Respondent offered to sell the Domain Name to Complainant for EUR 3,900 on March 12, 2007, only three days after registering it.
Taking all of these factors together, Respondent's bad faith registration has been sufficiently proven by Complainant. The Panel finds that the third element is established.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <sinclairestyle.com> be transferred to Complainant.
Grant L. Kim
Sole Panelist
Dated: February 2, 2009