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ADMINISTRATIVE PANEL DECISION
Marbil Co. Incorporated "DBA" Insol v. Sangjun Choi
Case No. D2000-1275
1. The Parties
The complainant is Marbil Co. Incorporated "DBA" Insol, a corporation organized under the laws of Georgia, USA, of 2065 Peachtree Industrial Ct. Suite 205, Atlanta, Georgia 30341, USA, represented by Aaron Rosenhaft.
The respondent is Sangjun Choi, of 374-13, Uijongbudong , Uijongbu, Kyounggi, Republic of Korea.
2. Domain Name and Registrar
The domain name at issue is "insol.com", and the Registrar is Register.com, Inc., of 575 Eighth Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
The complaint was submitted on September 27, 2000. A timely response was submitted to and received by WIPO on October 23, 2000. George R. F. Souter was appointed as a sole panelist on November 10, 2000.
4. Factual Background
The complainant claims that Insol is the name of its company, that it has used since 1993, and has acquired common law rights through use of the name to identify the company. The complainant furnished examples of the company logos used, and invoices and bills carrying the word Insol. No indication of turnover was submitted by the complainant, and the copy invoices and bills submitted did not establish substantial trading using the word Insol.
Register.com, Inc. confirmed that the domain name "insol.com" is currently registered in the name of the respondent.
On September 6, 2000, Aaron Rosenhaft of Insol e-mailed the respondent with an offer to purchase the domain name at issue for US$1,000. This offer was refused by e-mail on September 7. On September 7, Aaron Rosenhaft replied, asking the respondent what he considered to be a fair price for the domain name. Later that day, the respondent replied, naming a price of US$30,000. On September 11, Aaron Rosenhaft e-mailed to the respondent, pointing out that Insol was "a very small computer company in Atlanta", with only Atlanta-based customers. Consequently, Insol could only "perhaps afford $1,500.00 US, but not much more". The following day, the respondent replied by e-mail, refusing the offer, but making a counter offer: "In fact, if you offer just 10,000 i willing to sell". On September 14, Aaron Rosenhaft e-mailed the respondent, stating: "My company is small. It is owned by my father. He is not willing to pay more than $2,000 for the domain name". No further correspondence was submitted to the Panel.
5. Parties’ Contentions
The complainant contends that the respondent acquired the domain name at issue with the intention "to profit from the sale of the name back to us for profit", that the respondent had no legitimate interest in respect to the domain name, and that the respondent registered the domain name in bad faith.
The respondent contends that he had no intent to cybersquat, that Insol in the Korean language has the meaning of "lead" or "guide", and drew the Panel’s attention to a number of other domain names used by him, one of which was www.tourconductor.co.kr. He further alleges that the country level domain name, "insol.co.kr" was already taken by others: "So there was no other alternative, but for me to take what was available". The respondent, commenting on the complainant’s contention as to cybersquatting, states "So who cares about a poor little company in Atlanta? Right?"
6. Discussion and Findings
For the complainant to succeed, the Panel must, under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
The language employed, namely the word "and" at the end of paragraphs (i) and (ii), makes it clear that the tests in all three paragraphs (i), (ii) and (iii) must be met for the complainant to succeed. Previous Administrative Panel Decisions have, uniformly, followed this interpretation. Further, the word "and" in paragraph (iii) requires that both the domain name registration has been registered in bad faith, and that it has been used in bad faith, and the Administrative Panel, in Case No. D99-0001 so decided, and this finding has been uniformly followed in subsequent cases.
In connection with Paragraph 4a(i), the Panel finds that the complainant’s usage of Insol in trading is likely to have given rise to some common law trademark rights. The complainant, however, has not provided evidence that these trademark rights are substantial, and the complainant, in admitting in its e-mail to the respondent of September 11, 2000, that it was "a very small computer company in Atlanta", with only Atlanta-based customers, leads the Panel to find that these rights are likely to be limited, and local.
As the Panel has found that the complainant has some common law trademark rights in Insol, albeit limited, it will now consider Paragraph 4a(ii).
In connection with Paragraph 4a(ii), Paragraph 4c of the Uniform Domain Name Policy provides an aid to interpretation. Paragraph 4c(i) advises respondents that their rights or legitimate interests to a domain name for the purposes of Paragraph 4a(ii) would be demonstrated by "before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name … in connection with bona fide offering of goods and services". Paragraph 4c(ii) covers the situation in which the respondent has been commonly known by the domain name, even without the acquisition of trademark or service mark rights. Paragraph 4c(iii) alternatively advises respondents that their rights or legitimate interests to a domain name for the purposes of Paragraph 4a(ii) would be demonstrated by "making a legitimate … 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 has accessed the domain name at issue, and finds that the website, although in use, exhibits no characteristics of being used for the offering of any goods or services, but is, at best, "preparatory" in nature.
Paragraph 4c(i) of the Uniform Domain Name Policy, therefore, does not apply.
No evidence has been presented to the Panel as to the respondent being "commonly known" by the domain name. Accordingly, the Panel finds that Paragraph 4c(ii) of the Uniform Domain Name Policy does not apply.
In connection with Paragraph 4c(iii) of the Uniform Domain Name Policy, no evidence has been provided to the panel as to the respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish a trademark or service mark. Consequently, Paragraph 4c(iii) does not apply to the circumstances of this case.
Paragraph 4c of the Uniform Domain Name Policy, however, emphasizes that sub-paragraphs (i), (ii) and (iii) are circumstances which would lead to a claim to legitimate interests, "in particular, but without limitation".
The Panel has seen no evidence from the complainant which would establish that the respondent’s acquisition of the domain name at issue was without rights, or without legitimate interests, and the complainant has not satisfied the Panel that its trademark was so well known that it would call the lack of rights or legitimacy into question. The complainant’s admission that it was a small, local company, and the respondent’s rejoinder: "So who cares about a poor little company in Atlanta? Right?", appears to the Panel to have some weight in this connection. The Panel, therefore, finds that the complainant has failed to satisfy the test of Paragraph 4a(ii) of the Uniform Domain Names policy, and that its complaint, therefore, must fail.
As, however, the complainant has alleged bad faith, the Panel will also consider Paragraph 4a(iii) of the Uniform Domain Name Policy. This matter has been raised in a number of previous Panels’cases, notably in Case No. D2000-0102, where the Panel considered the question of a well known mark in connection with the mark NOKIA, and concluded: "The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent … could have been unaware of the trademark rights vested therein when registering the domain name". The Panel considers that, in this case, it cannot be reasonably argued that the respondent could not have been unaware of the existence of sparse common law trademark rights of a "a very small computer company in Atlanta", with only Atlanta-based customers, in the complainant’s own admission, when registering the domain name "insol.com". Accordingly, the Panel finds that the domain name was not registered in bad faith.
As a result of this finding, the Panel does not need to consider the "second leg" of the test of Paragraph 4a(iii) of the Uniform Domain Name Policy.
The complainant has not satisfied the Panel that the respondent had no rights or legitimate interest in the domain name, nor that the domain name was registered in bad faith. Consequently, the respondent shall not be required to transfer the domain name "insol.com" to the complainant.
George R. F. Souter
Dated: November 23, 2000