The Complainant is Christopher Lane, Australia, represented internally.
The Respondent is JInsoo Yoon (Kukmin), Republic of Korea.
The disputed domain name <thinkconveyancing.com> (the “Disputed Domain Name) is registered with DropCatch.com 600 LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 17, 2019, 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. In response to a clarification requested by the Center, the Complainant submitted an amendment to the Complaint on July 11, 2019.
The Center verified that the Complaint together with the amendment to 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 July 11, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2019. On July 17, 2019, the Complainant forwarded to the Center an email communication from the Respondent, in response to which the Center sent an email communication to both Parties inviting them to explore settlement negotiations. Neither the Complainant nor the Respondent replied further or requested suspension of the proceeding. The Respondent did not submit any response.
The Center appointed Nick J. Gardner, Nicholas Weston, and Karen Fong as panelists in this matter on September 2, 2019. The Panel finds that it was properly constituted. Each member of 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.
The Complainant says he is a director of an Australian Company called Think Conveyancing (see below for a discussion as to the identity of the Complainant). It would seem that company provides conveyancing services to customers in Australia (see discussion below). He also says he owns a company called Blue Intellectual Property Limited which “is using the ‘Think Conveyancing’ word for branding and delivery”.
Blue Intellectual Property Limited is the registrant of Australian trademark number 1522866 for the words THINK CONVEYANCING (the “THINKCONVEYANCING trademark”). It has a filing date of October 29, 2012.
The Disputed Domain Name was owned by the Complainant (or an associated company – see below). On January 20, 2018 that registration expired and on April 8, 2018 the Respondent registered it. It now resolves to a page providing links to various third party websites, many of them relating to conveyancing or legal services. It is also offered for sale. An enquiry made by the Complainant resulted in an email from the Respondent (using the name “kukmin”) suggesting a price of USD 19,500 for the Disputed Domain Name. A “reverse whois search” submitted by the Complainant indicates that the Respondent owns in excess of 15,000 domain names.
The Complainant says that the Disputed Domain Name was used to redirect to its primary website which is linked to “thinkconveyancing.com.au”. It says it lost the password of the account housing the Dispute Domain Name and did not receive the email notification that the Disputed Domain Name was expiring. It says the Disputed Domain Name is identical to its trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “thinkconveyancing”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it was “drop caught” by the Respondent who has no interest in it and now he is attempting to sell it back to the Complainant at an extortionate price – correspondence with the Respondent resulted in him asking USD 19,500 to transfer the Disputed Domain Name.
No Response has been filed.
Preliminary Matters
No response
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Complainant Identity
The Complaint is relatively brief and unclear in a number of material respects. It provides virtually no information about the underlying business carried out by the Complainant. The relationship between the Complainant of record, Christopher Lane, and various other relevant entities is not clearly explained. The Complainant says he is a director of “Think Conveyancing”. The Panel has been provided with no direct information about that entity or its business other than the statement that it has been providing conveyancing services for eight years. Exercising its general powers the Panel has visited the “thinkcoveyancing.com.au” website. That appears to promote a business with offices in many locations in Australia which describes itself as “Australia’s Most Trusted Conveyancing Lawyers”. One entry on the website reads as follows “Who We Are
Thinkconveyancing.com.au® and Think Conveyancing® are registered trademarks licenced to National Legal Services. Together, these licensees deliver Australia’s only truly national.[sic]
The legal directors of these Incorporated Legal Practices have more than 50 years of combined experience in property law and are dedicated to staying abreast of industry developments nationwide”. Another entry reads “Liability limited by a scheme approved under Professional Standards Legislation”.
The Panel finds this rather unclear and is unable to discern whether the business in question is a corporate entity or a professional partnership or a trading name or simply a portal to separate individual law firms.
Filed evidence shows the registration of the “thinkconveyancing.com.au” domain name was held by a company called Mail Cards Pty Limited although the relevant registration fee appears to have been paid by one Lisa Lane who is said to be the Complainant’s wife. Filed evidence also shows that domain name being transferred to a company called Blue Intellectual Property Limited. The Complainant is a director of that company. The Complaint says that “The company BLUE INTELLECTUAL PROPERTY PTY LTD which is held by Christopher Lane is using the ‘Think Conveyancing’ word for branding and delivery”.
Whilst rather unsatisfactory it seems to the Panel that all of this establishes on a balance of probabilities that the Complainant, through Blue Intellectual Property Limited, owns the relevant trademark rights and has licensed these rights to the business or businesses carried out via the website described above. In these circumstances, the Panel will use the term “Complainant” to include both the Complainant of record and his company or companies.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has rights in the THINKCONVEYANCING trademark. The Panel finds the Disputed Domain Name is identical to this trademark.
It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use THINKCONVEYANCING trademark. The Complainant has prior rights in the THINKCONVEYANCING trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel does not know the exact circumstances which led the Respondent to register the Disputed Domain Name. The Panel takes the view that the words “think” and “conveyancing” are ordinary English words and even juxtaposed are to some extent descriptive of a business providing conveyancing services. However there is nothing before the Panel to show the Respondent chose to register the Disputed Domain name because of its descriptive nature. There is also no evidence of anyone anywhere apart from the Complainant using “thinkconveyancing” in relation to any business.
It appears that the Respondent is a professional domainer and it seems likely that he “drop caught” the Disputed Domain Name when its registration expired as a result of the complainant inadvertently failing to renew the registration.
In these circumstances for a useful discussion of the applicable principles see Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540. In that case the panel stated as follows:
“The Respondent is a domainer who undertakes bulk purchases and automated registrations, including in particular by ‘drop-catching’ previously-registered domain names. The Panel is of the view that the knowledge (and, for that matter, the intention) of such a domainer generally should be judged objectively. Thus, what may be observed here is that the Respondent registered the disputed domain without concern as to whether doing so abused the trademark rights of a third party, and without any apparent effort to avoid so doing. As it happens, the Respondent’s registration of the disputed domain name did abuse the trademark rights of a third party – namely, those of the immediately-prior registrant, the Complainant.
In this case, the Respondent ‘drop-caught’ a domain name that contained a descriptive term (‘super’) that the Respondent had pre-determined gave value to a domain name with that term. However, it seems clear that the disputed domain name has the greatest value to the Complainant, given that the Complainant has trademark rights in the string to which the disputed domain name is almost identical, and given that the Complainant was the immediately-prior previous registrant of the disputed domain name (before failing to renew the registration through error). Thus, it can be seen that the value of the disputed domain name derives primarily from the fact that it is the Complainant’s trademark, rather than from the fact that it contains arguably a descriptive term. In these circumstances, and absent any attempt by the Respondent to avoid registering a domain name that is another person’s trademark, the Respondent must accept that, judged objectively, it will be considered to have registered the disputed domain name for the primary purpose of selling it to the Complainant – which is deemed by the Policy to be evidence of registration and use in bad faith.
The Respondent must also accept that, judged objectively, it will be considered to have registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name – which is also deemed by the Policy to be evidence of registration and use in bad faith, so long as the Respondent has engaged in a pattern of such conduct. The Complainant identified a number of previous actions under the Policy brought successfully against the Respondent. In the Panel’s view, those actions establish that the Respondent has engaged in the requisite pattern of conduct, as explained below.”
In the present case the Panel considers that the relevant facts are such as to at least raise an inference that the above principles are equally applicable. The Panel notes that the Respondent has been involved in at least 12 previous UDRP cases in which the panels ordered the transfer of the domain names to the corresponding complainants. See, e.g., Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247; Ironfx Global Limited v. Jinsoo Yoon, WIPO Case No. D2014-2174; Educational Testing Service v. Jinsoo Yoon, WIPO Case No. D2019-0883. In the absence of any explanation from the Respondent the Panel concludes that the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <thinkconveyancing.com>, be transferred to the Complainant.
Nick J. Gardner
Presiding Panelist
Nicholas Weston
Panelist
Karen Fong
Panelist
Date: September 16, 2019