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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

STX LLC v. Yu nae ho, Jinsu Kim

Case No. D2006-0567

 

1. The Parties

The Complainant is STX LLC, of Maryland, United States of America, represented by Venable, LLP, United States of America.

The Respondents are Yu nae ho and Jinsu Kim, Republic of Korea; represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <stx.com> is registered with Cydentity, Inc. dba Cypack.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2006. On May 8, 2006, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On May 9, 2006, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 22, 2006. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on May 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 12, 2006. On June 9, 2005, the Respondent requested for an extension to file the Response in order to comprehend the Complaint submitted in English. The Center, taking into consideration the Respondent’s first language, granted an extension up to and including June 22, 2006. The Response of Yu nae ho was filed with the Center on June 21, 2006. Jinsu Kim did not file a response.

The Complainant filed a Supplemental Filing on June 26, 2006, to correct a typographical error on page 9 of the Complaint where it was stated that the Respondent’s website was about home improvement rather than about lacrosse and field hockey products and services.

The Center appointed Lawrence K. Nodine, Sally Abel and David E. Sorkin as panelists in this matter on July 26, 2006. 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.

 

4. Procedural Rulings

The Complainant has requested pursuant to Rule 11 that these proceedings be conducted in English. The Respondent did not oppose this request and submitted all responsive documents in English or with English translations. Accordingly, the Complainant’s requestis granted.

The Complainant has also requested leave to file a reply memorandum, which request the Respondent did not oppose. Accordingly, this request is granted..

 

5. Factual Background

The Complainant is a leading manufacturer and distributor of sporting equipment and apparel and is particularly well known for its lacrosse and hockey equipment.

The Complainant uses its STX trademark on its products and in advertising throughout the world and on its websites. STX branded goods have been sold in numerous countries, including the United States of America, Germany, Canada, the United Kingdom, the Czech Republic, Japan, and the Republic of Korea.

The timeline of this case is as follows:

Respondent Kim acquired or registered the <stx.com> domain name on an unknown date;

Kim posts Exhibit J webpage that includes links to the Complainant’s competitors and meta-tags such as “STX lacrosse” and “STX field hockey:” This page stays active until after this UDRP action is filed. Hence, this webpage is hereinafter referred to as the “Filing Date Webpage”.

On April 15, 2006, Kim signs agreement to transfer to Respondent Yu and Yu pays 9,000,000 won as down payment for the purchase of the disputed domain name;

On April 18, the Complainant sends demand letter to Kim;

On April 19, Yu pays rest of the sales price and takes assignment of the disputed domain name;

On April 19, Whois record changes to show Yu as the new owner;

On April 20, the Complainant sends an e-mail to Yu’s Whois contact address with an attached copy of the demand letter previously sent to Respondent Kim. The e-mail accuses Yu of cyberflight. Yu never responds;

On May 1, the Complainant prints its Exhibit J “Filing Date Webpage” showing the <stx.com> webpage is still active;

On May 4, the Complainant files this UDRP action;

Sometime later (the exact date is unknown) Respondent Yu takes down the Filing Date Web Page and puts up “under construction” message.

 

6. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, the Complainant alleges that:

The domain name <stx.com> is likely to be confused with Complainant’s distinctive trademark STX. The Domain Name is identical to Complainant’s STX mark.

The STX trademark is registered in the United States and elsewhere, including the United Kingdom and Australia.

Complainant uses its STX trademark on its products and in advertising throughout the world and on its websites. STX branded goods have been sold in numerous countries, including The United States, Germany, Canada, the United Kingdom, the Czech Republic, Japan, and Korea.

The STX trademark has been in use since at least 1970. Complainant’s rights in the STX trademark predate Respondent’s registration of the subject domain name.

With respect to paragraph 4(a)(ii) of the Policy, the Complainant alleges that:

Respondent has no rights or legitimate interests in respect of the domain name.

Respondent is using the domain name for a website that is intended to profit from the misuse of Complainant’s marks.

To the best of Complainant’s knowledge, Respondent has no rights to any trademark consisting of the term STX in any country.

Respondent is using the domain name with the intent, for commercial gain, to misleadingly divert Complainant’s consumers to its websites or to disrupt Complainant’s business.

Respondent is using Complainant’s trademark as a metatag to direct search-engine traffic to it website.

With respect to paragraph 4(a)(iii) of the Policy, the Complainant contends that:

On information and belief, Respondent registered this domain name with knowledge that Complainant held rights in and to its STX marks.

Respondent had constructive notice under U.S. law of Complainant’s trademark rights by virtue of (a) Complainant’s trademark registrations in the United States and elsewhere, and in many other countries; and (b) Complainant’s use of its trademark in print advertising and on its websites located at www.stxlacrosse.com, and elsewhere, and STX’s use of the marks in the United States, Europe, Australia, and elsewhere, as well as globally online.

The domain name <stx.com> is used solely to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s registered trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. By so doing, Respondent has misappropriated the reputation and commercial value of the STX trademark with a bad faith intent to profit.

Respondent’s website “www.stx.com” resolves to a web portal offering links to websites featuring information about lacrosse and other sports.

Respondents have engaged in cyberflight. Complainant’s counsel sent a demand letter to the registrant then listed in WHOIS, Kim Jinsu, by e-mail on April 18, 2006. Complainant got no response to the letter, but on April 19, 2006, the WHOIS was changed to reflect Yu nae ho, of the same town as the original respondent, Kim Jinsu, as the new registrant. Counsel for complainant forwarded the letter to Yu nae ho, but got no reply.

Respondent Kim Jinsu has engaged in a pattern and practice of cyberpiracy and has been the losing respondent in a number of UDRP cases.

The subject domain name was acquired, in bad faith, primarily for the purpose of diverting Complainant’s customers to Respondent’s site or disrupting Complainant’s business.

B. Respondent

The Respondent’s Preliminary Contentions:

This Complaint has been filed against both Respondent, Yu Nae Ho, the registrant of the domain name <stx.com> and the prior registrant, Jinsu Kim, who sold the Disputed Domain to Respondent. Mr. Kim is not a proper respondent in this matter and, accordingly, any allegations concerning Mr. Kim’s practices are irrelevant to this proceeding. Mr. Yu is responding only on his own behalf.

The Respondent does not dispute paragraph 4(a)(i) of the Policy.

With respect to paragraph 4(a)(ii) of the Policy, the Respondent contends that:

STX is a common acronym for, at least, 12 different things and there are over 3 million third party uses of the term on the Internet (excluding references to “lacrosse;” “hockey;” “sport;” and “golf”), as evidenced by a Google search.

There are at least, eight other U.S. registered trademarks that incorporate STX.

Complainant does not have exclusive rights to the common 3-letter combination.

The fact that STX is subject to substantial third party use on the Internet, in and of itself, establishes Respondent’s legitimate interest in the Disputed Domain.

Actual use is not required to establish a legitimate interest under the UDRP. It is Respondent’s intent that matters, and he intends to develop a site following resolution of this dispute.

With respect to paragraph 4(a)(iii) of the Policy, the Respondent contends that:

There is no evidence Respondent registered<stx.com> with Complainant in mind.

Complainant has not proffered evidence that Respondent knew about its mark when Respondent registered the Disputed Domain. He did not.

Respondent is not resident in the U.S. and there is no evidence that Respondent could have, or should have, known of Complainant when he registered the Disputed Domain.

Because STX is a common 3-letter term, is subject to substantial 3^rd party use and is the subject of several third party U.S. trademark registrations, Complainant must produce specific evidence of bad faith in order to prove that it was the special target of Respondent’s registration of the domain name. Complainant has failed to produce this evidence.

Absent direct proof that a common term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration or use.

There is no evidence that Respondent has intended to create any confusion. The mere chance of confusion does not give rise to violation of the Policy.

With respect to the allegations of cyber-piracy, the Respondent contends:

Mr. Kim is not the registrant of the Disputed Domain, and there is no allegation that Respondent has engaged in any bad faith at any time. Respondent simply bought the Disputed Domain from Jinsu Kim in a bona fide transaction.

 

7. Discussion and Findings

A. Identical or Confusingly Similar

The Respondent concedes that the Complainant has satisfied Policy 4(a)(i).

The Panel finds that the Complainant has trademark rights in the mark STX due to its United States and foreign trademark registrations for the mark STX.

The Panel also finds that the domain name <stx.com> is likely to be confused with Complainant’s STX trademark.

The Panel notes that gTLDs shall be disregarded in the analysis as to whether a domain name and a trademark are identical or confusingly similar. Thus the “.com” in the domain name should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Thus, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Regarding Policy 4(a)(ii), the Panel finds that Respondent Yu did not have legitimate rights in the disputed domain name. The Complainant satisfied its burden to make a prima facie showing of the absence of legitimate rights by demonstrating that Respondent Yu continued to publish Respondent Jinsu Kim’s webpage for several weeks after he took ownership of the <stx.com> domain name. The webpage was not taken down until after the instant action was filed. The webpage as it existed on the date the UDRP action was filed was not a legitimate use because it contained links to the Complainant’s competitors. The Complainant’s proof of this continued publication of Respondent Jinsu Kim’s illegitimate webpage is sufficient to shift to Respondent Yu the burden of producing evidence of a legitimate use. Inter-Continental Hotels Corporation v. Khaled Ali Soussi, D2000-0252 (Complainant may shift burden to Respondent by making prima facie case of no legitimate rights).

Without more, Respondent Yu’s affidavit statement that he intends to use the <stx.com> domain name for a website for Social Training for eXtreme People is not sufficient to satisfy the requirements of Policy 4(c)(i) that the Respondent show “demonstrable preparations” to make a legitimate use. Inter-Continental Hotels Corporation v. Khaled Ali Soussi, D2000-0252 (affidavit without corroborating evidence is not enough to satisfy “demonstrable preparations”); Eurail Group GIE v. DOTrader, D2003-0422 (“demonstrable preparation” not supported because “Respondent…has presented no evidence of any business or marketing plan or of advertising or promotional materials …”)

C. Registered and Used in Bad Faith

A majority¹ of the Panel finds find that Respondent Yu registered and used the <stx.com> domain name in bad faith primarily because he did not discontinue his predecessor’s bad faith use until after the UDRP action was filed.

As a starting point, the Panel finds that the Complainant’s Exhibit J shows the <stx.com> web page on the day the Complaint was filed in this action. It shows a print date of May 1, 2006, and the Complaint alleged that this exhibit reflected the status of the <stx.com> webpage as of the Complaint filing date, which was May 4, 2006. Complainant alleged that, as of the date of the Complaint, Respondent Yu was continuing to publish the <stx.com> page with links to competitors. Respondent does not deny this allegation other than to say that, as of the date of his response, the <stx.com> page was under construction. Respondent, who knows best, does not offer any evidence about the date he took down the Filing Date Webpage. Whatever the exact date, Respondent Yu does not deny that he did not take down the Filing Date Webpage until after a number of weeks after this UDRP action was filed.

The Panel further finds that the Filing Date Webpage manifests bad faith use of the Complainant’s trademark. The page advertises lacrosse and hockey products and links to the Complainant’s competitors. The Complaint alleges, with supporting evidence attached, that the Filing Date Webpage includes meta-tags that target the Complainant. The Filing Date Webpage reveals an intentional attempt to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s mark. Policy §4(b)(iv).

It is essentially admitted that the Filing Date Webpage manifests bad faith use. Respondent Yu does not contest the Complainant’s allegations regarding the bad faith links to competitors or the meta-tags that are found on the Filing Date Webpage. Instead, he focuses on the revised “under construction” page as it appeared at the time of his response June 27, 2006. He talks about extensive third party uses of “stx” as if the uses of “stx” on the Filing Date Webpage, which are obviously targeted at the use of “stx” as a trademark for lacrosse and hockey products, should be ignored. Respondent Yu’s implicit assumption is that he has no responsibility for the webpage of his predecessor Kim that his assignor’s webpage because he, Yu, took it down by the time of his response.

We disagree and hold Respondent Yu responsible for the contents of the webpage as of the filing date of the UDRP Complaint. This rule is recognized where ownership does not change, i.e. a registrant may not escape bad faith inferences by deleting offending content from a webpage after an action is filed. Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729 (“The Respondent cannot avoid a finding of that he is using a domain name in bad faith by relying on alterations to his website following the Complaint. The present tense in paragraph 4(a)(iii) of the Policy must be intended to refer to the position prior to notice of the dispute, in line with paragraph 4(c)(i) of the Policy, since otherwise the Policy could readily be frustrated.”)

The rule should be no different merely because the Respondent acquired ownership shortly before, in this case two weeks prior to, the filing of the UDRP action. The status of the webpage on the date the UDRP action is filed controls the proceedings. This is especially true where, as here, (1) the Respondent does not deny the Complainant’s allegation that on April 20 it sent to Respondent Yu (and Respondent Yu ignored) a cease and desist e-mail apprising Respondent Yu of its claim of rights; and (2) the Respondent kept the challenged webpage active until after the UDRP action was filed. We especially note that Respondent Yu does not deny receipt of the April 20  email; instead he says he did not know of the Complainant’s rights when he purchased the disputed domain name. Even if were to presume an assignee’s good faith and afford him some undefined grace period to take down an offending page, the Respondent here, in the judgement of the majority of the Panel,exceeded that period. If he were acting in good faith, Respondent Yu should have taken down the offending webpage promptly after receiving the April 20 cease and desist e-mail. Instead, he ignored the assertion of rights and forced the Complainant to file this action.

In simplest form, we find that the Respondent must in the circumstances be held responsible for the content of the webpage as of the date of the filing of the UDRP action. The inferences that may be drawn from the content of the webpage should not change where the registrant only recently acquired ownership of the page.

Consequently, we find that Respondent Yu used the <stx.com> domain name in bad faith because the Filing Date Webpage links to competitors and contains meta-tags that show that the page expressly targeted the Complainant’s trademarks. It is immaterial that the Respondent subsequently deleted offending content from the Filing Date Webpage.

A majority² of the Panel also finds that Respondent Yu registered the domain name in bad faith. A showing of bad faith acquisition of a domain name substitutes for a showing of bad faith registration. Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406; BWR Resources Ltd. v. Waitomo Adventures Ltd., WIPO Case No. D2000-0861; Motorola Inc. Newgate Internet, Inc. WIPO Case No. D2000-0079. Consequently, the question is whether Respondent Yu knew of the Complainant’s rights at the time he took the assignment. For two reasons, we find that he must have. First, we consider that the assignee of the disputed domain name in all likelihood had knowledge of the content of the webpage displayed on the acquired domain name at the time of acquisition. Absent contrary evidence from the Respondent, this inference is fair, especially where the assignee pays a substantial sum for the acquisition. We note that the Respondent’s affidavit does not deny knowledge of the contents of the Filing Date Webpage when he acquired rights to the disputed domain name. Respondent Yu may fairly be presumed, therefore, to have had knowledge of, not only the hockey and lacrosse product emphasis and links that the appeared on the <stx.com> webpage, but also of the meta-tags that reveal use of the trademark STX (“stx lacrosse” and “stx field hockey”) in the meta-tags. We find that it is more likely than not that these meta-tags were coded with knowledge of the Complainant’s trademark rights with respect to lacrosse and hockey products for the express purpose of attracting internet users looking for the Complainant’s STX products. Tata Sons Limited v. Tataconnect, WIPO Case No. D2006-0572 (“Furthermore, the Respondent is using the Complainant’s trademark TATA in the meta-tags found in the source code of the website, which is evidence of registration and use in bad faith.”); Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520 (“By including a metatag to Complainant’s ‘gruppo Zegna’, Respondent has, in the opinion of the Panel, revealed his awareness and knowledge of Complainant’s use of ‘consitex’ as a common law trademark.”)

The key question is whether that inference is fairly applied against Respondent Yu, who purchased the disputed domain name after this bad faith coding of meta-tags occurred. A majority of the Panel would find that it is not only fair, but that any other rule would enable an accused cyber-pirate to avoid the UDRP by quick transfers. If it is fair to infer that the creator of the meta-tags was aware of the Complainant’s rights, then we must be permitted to apply the same inference to the conduct of an assignee who fails to take down the offending site after he acquires control of it and continues to publish the webpage after receiving notice of the Complainant’s rights. A majority of the Panel would charge the Respondent with knowledge of the meta-tags that appear on the web-page he continued to broadcast and further charge him with awareness that these meta-tags revealed trademark usage of STX.

A majority of the Panel concludes that the rule should be that one who acquires a webpage that has been used in bad faith assumes responsibility for the contents of that page if he continues to publish it after receiving notice of the Complainant’s rights. In this case, the Respondent continued to broadcast the offending webpage until sometime after this action was filed. We find that this constitutes bad faith registration and use.

 

8. Decision

For all 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, <stx.com> be transferred to the Complainant.

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Lawrence K. Nodine
Presiding Panelist

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Sally M. Abel
Panelist

Dated: August 14, 2006

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DISSENTING OPINION

I respectfully dissent. In my view, the Complainant has failed to sustain its burden of proving that the Respondent registered (or acquired) and has used the disputed domain name in bad faith. I would therefore deny the Complaint.

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¹ Panelist David Sorkin does not join in the finding of bad faith registration.

² Panelist David Sorkin does not join in this portion of the decision and would instead find that Complainant has not satisfied its burden to prove that Respondent Yu registered or acquired the disputed domain name in bad faith.