Complainant is Lab2Fab, LLC, United States of America (“United States” or “U.S.”), represented by Haley Guiliano LLP, United States.
Respondent is Jinsoo Yoon, United States.
The disputed domain name <lab2fab.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 2020, 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 November 12, 2020, 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 November 14, 2020.
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” o “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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2020.
The Center appointed John C. McElwaine as the sole panelist in this matter on December 21, 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.
Complainant is a Delaware limited liability company engaged in the business of consulting with companies and designing automated production lines for various goods and services.
Complainant owns U.S. Trademark Registration No. 4433335 for the word mark LAB2FAB for “design of production facilities; Designing of machines, apparatus, instruments or systems composed of such machines, apparatus and instruments”, in Class 42. This registration was issued on November 12, 2013.
On November 18, 2013, the Domain Name was registered with the Registrar. The Domain Name resolves to a parked website featuring links to other websites.
Complainant contends that since 2010 it has helped companies bring new ideas from the laboratory to full scale fabrication, hence the trademark LAB2FAB. On November 12, 2013, Complainant was granted U.S. Trademark Registration No. 4433335 for LAB2FAB as a standard character mark (the “LAB2FAB Mark”). Following the granting of this trademark registration, the entity listed on the trademark registration was converted to Lab2Fab, LLC, Complainant in this matter. A copy of the assignment recordation noting the entity conversion recorded with the United States Patent and Trademark Office (“USPTO”) was provided as Annex 8. Complainant alleges that the Domain Name is identical to its registered LAB2FAB Mark, and thus, the first element of the Policy is satisfied.
With respect to the second element of the Policy, Complainant asserts that it has not given Respondent permission or license to use Complainant’s LAB2FAB Mark, nor has Respondent requested such permission from Complainant. Complainant alleges that it has also been unable to locate any evidence of Respondent possibly having any legitimate interest in Domain Name. Complainant contends that the webpage that resolves from the Domain Name is an illicit attempt to capitalize upon Complainant’s goodwill and its LAB2FAB Mark, as it contains nothing more than click-through links and an offer to acquire the Domain Name. Complainant asserts that use of a domain name to host a parked page does not represent a legitimate interest. In addition, Complainant points out that Respondent is a serial cybersquatter.
With respect to the third element of the Policy, Complainant alleges that Respondent registered the Domain Name on November 18, 2013, which is less than one week after Complainant’s registration of LAB2FAB was issued by the USPTO. Complainant asserts that the inescapable conclusion is that Respondent learned of Complainant’s trademark registration and then registered the Domain Name in an effort to profit from Complainant’s trademark. To this end, Complainant contends that Respondent is falsely luring and attracting Internet users to Respondent’s <lab2fab.com> website for Respondent’s commercial gain. Complainant describes that the Domain Name resolves to a webpage providing click-through links containing various derivations of LAB2FAB, e.g., “metal fabrication,” “fab lab,” etc. Another example of bad faith alleged by Complainant is that the webpage currently indicates the minimum offer for the purchase of the Domain Name is USD 4,950, an amount that is orders of magnitude greater than the typical acquisition cost of an available domain name. Lastly, as further evidence of bad faith, Complainant asserts that Respondent has previously engaged in a pattern of abusive domain name registrations.
Respondent did not reply to Complainant’s contentions.
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of a United States trademark registration for the LAB2FAB Mark.
The Domain Name is identical to the LAB2FAB Mark, but for the Top-Level Domain (“TLD”) “.com”. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s LAB2FAB Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “Jinsoo Yoon” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“[…] the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name.’”)
Complainant contends that it has never, licensed or in any way authorized Respondent to register or use the LAB2FAB Mark. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a substantive response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Furthermore, the Panel finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in section 2.9 of WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726.
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent is seeking commercial gain from his use of the Domain Name by establishing a parked page with pay-per-click advertisements that compete with Complainant’s consulting and fabrication services. Therefore, the Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (respondent’s use of the disputed domain name to establish a parking page was “plainly not noncommercial”).
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s lack of a substantive response as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
In this matter, Complainant contends that the registration by Respondent of a domain name, which contains Complainant’s LAB2FAB Mark less than 1-week after the issuance of Complainant’s trademark registration for LAB2FAB establishes that Respondent was aware of the existence of Complainant’s trademark. Bad faith may be found where a domain name is so obviously connected with a well-known trademark that said use of the domain name by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains, LLC, WIPO Case No. D2006-0303. Here, Respondent has placed the Domain Name with a website service that creates links to competing fabrication services indicating an intent to trade off the goodwill of Complainant. Furthermore, and as also detailed above, Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. The Panel also notes Complainant’s contention that the website at the Domain Name offered the Domain Name for sale. Accordingly, on the record there is no explanation or legitimate interests to justify Respondent’s choice to register the Domain Name. With no substantive response from Respondent, this claim is undisputed and the Panel infers bad faith registration.
Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. See Identigene, Inc. v. Genetest Laboratories., WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under Paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name); Virgin Enterprises Limited v. Balticsea LLC / Contact Privacy Inc. Customer 0134432592, WIPO Case No. D2016-2148 (finding that a general offering to sell the domain name is evidence of registration of the domain name in bad faith). Any argument that Respondent may assert that he is not accountable for the content on his website is without merit. Numerous panels have rejected such an argument, holding respondents are still responsible for the content of a parked webpage. Stuart Weitzman IP, LLC v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-1858; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474 (“Respondent appears to claim that he is not responsible for the content of the parking page, but this is no defense.”); and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Moreover, as further corroborating evidence of bad faith, other UDRP panels have found that Respondent has engaged in a pattern of abusive domain name registrations. See Facebook, Inc., Instagram, LLC and WhatsApp, Inc. v. JInsoo Yoon and Jeongwoo Cheon, WIPO Case No. D2020-1925 (transferring 12 domain names, in part, because respondents “appear to have engaged in a pattern of bad faith conduct considering the Respondent JInsoo Yoon having been a named respondent in at least seven other UDRP decisions”); Christopher Lane v. JInsoo Yoon (Kukmin), WIPO Case No. D2019-1388 (“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”), citing, Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247 (domain name transferred); Ironfx Global Limited v. Jinsoo Yoon, WIPO Case No. D2014-2174 (domain name transferred); Educational Testing Service v. Jinsoo Yoon, WIPO Case No. D2019-0883 (domain name transferred). Accordingly, based on the evidence of record, the Panel finds that Respondent has engaged in a pattern of abusive domain name registration and that this is further evidence of Respondent’s bad faith registration and use of the Domain Name.
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name is more likely than not that Respondent acquired the Domain Name primarily 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 his website or location or of a product or service on his website or location. Therefore, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(ii) of the Policy.
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, <lab2fab.com>, should be transferred to Complainant.
John C McElwaine
Sole Panelist
Date: January 4, 2020