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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alexey Kistenev v. Jinsu Kim

Case No. D2008-1870

1. The Parties

The Complainant is Alexey Kistenev of Sovetskaya, Russian Federation, appearing pro se.

The Respondent is Jinsu Kim of Ansan-si, Republic of Korea, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <torrentreactor.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 December 4, 2008. On December 5, 2008, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the disputed domain name. On December 8, 2008, 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.

On December 9, 2008, the Center notified the parties of the Center’s procedural rules relevant to the language of the proceeding. The Center entertained the arguments of the Respondent and the Complainant on December 9 and December 10, 2008, respectively. On December 11, 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 the Respondent of the Complaint, and the proceeding commenced on December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. The due date for Response was extended to January 14, 2009 on the Respondent’s request. The Response was filed with the Center on January 13, 2009.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on January 30, 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.

4. Factual Background

The Complainant is an individual, who operates a number of sites, including <torrentreactor.net> (originally registered on October 20, 2003). The Complainant’s subject site provides software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). Having reviewed the Complainant’s site, it appears that most, if not all, of the files promoted or available for download are unlawful copies of software, movies, music, televisions shows, etc. – in other words, works subject to copyright protection.

The Respondent is an individual who has lost in two prior UDRP proceedings already. STX LLC v. Yu nae ho, Jinsu Kim, WIPO Case No. D2006-0567 (stx.com); and AIDA Cruises German Branch of Costa Crociere S.p.A. v. Jinsu Kim, WIPO Case No. D2006-1290 (aida.com). While the disputed domain name was originally registered on June 16, 2003 (which predates the registration date for the Complainant’s domain name <torrentreactor.net>), the Respondent himself apparently obtained the registration on or around July 28, 2008 after winning an auction process for the disputed domain name. The Respondent asserts that he paid USD17,500 for the disputed domain name. The disputed domain name is used to link to a domain name parking service (through which the Respondent expects to generate revenue), and eventually forwards to a site that provides explicit pornographic material.

Before the Complaint was filed, there was a series of communications and negotiations between the Complainant and the Respondent, all conducted in perfectly understandable and proficient English. Eventually, the Respondent offered to sell the disputed domain name to the Complainant for the amount of USD150,000. Complainant returned with an offer of USD30,000. The Respondent made a final offer of USD50,000. Thereafter, the subject Complaint was filed.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has trademark rights in TORRENTREACTOR, and that the disputed domain name is essentially identical. With no trademark registrations to assert, the Complainant argues that it acquired trademark rights to TORRENTREACTOR through his use of the domain name <torrentreactor.net> and various logos that he created and used via this site.

The Complainant has made the required prima facie assertions that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. More specifically, the Complainant asserts that the Respondent is attempting to generate money through confusion with the Complainant’s site. Moreover, the Respondent is intentional trying to cause confusion given the inclusion of the Complainant’s domain name address (i.e., <torrentreactor.net>) in the source code for the Respondent’s site – thus making it more likely to come up on search results targeting <torrentreactor.net>.

B. Respondent

The Respondent asserts that the Complainant has no trademark rights in TORRENTREACTOR, as this is merely a combination of two words with specific meanings that can be found in the dictionary, and other domain names using TORRENTREACTOR held by third parties exist or have existed.

The Respondent also asserts that it has a right and legitimate interest in the disputed domain name because he purchased it after winning a bidding process in which he paid USD17,500 for the registration.

The Respondent asserts that it was never his intention to sell the domain name, and that he has plans to use it himself shortly. The Respondent explains that linking the disputed domain name to a porn site via a domain name parking service was intended to be only temporary.

6. Discussion and Findings

Preliminary Issue: Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise. In this case, the default language of the proceeding is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent eventually filed his response in Korean.

Since both parties were permitted to and in fact did present their cases in the language of their preference, it appears that fairness has been maintained in view of the overall circumstances. Further, prior communications between the parties were conducted in quite proficient English, the Respondent was able to manage using the services of a domain name parking service based in the United States of America, and the content displayed via the disputed domain name is all provided in English. For these reasons, the Panel finds it fairer as a whole to render this decision in English.

A. Identical or Confusingly Similar

While the disputed domain name is identical to TORRENTREACTOR as asserted by the Complainant, this first required element has not been established because he has failed to demonstrate the basic premise of having a trademark right in TORRENTREACTOR.

First, the Complainant does not appear to hold any trademark registrations in any jurisdiction. While this is not necessarily fatal, as the existence of trademark rights can be established in other manners, the grounds asserted by the Complainant for recognizing a trademark right are simply insufficient. The Complainant argues that it owns and has used the domain name <torrentreactor.net>, and that there are many visitors to this site. However, the mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right. For example, the site found at “www.cars.com” appears to be extremely successful and has been in service for quite some time, but related trademark applications have been denied registration before the United States Patent and Trademark Office. The provided record and submissions in the proceeding are in this Panel’s view insufficient to establish that the Complainant has the requisite rights to the claimed TORRENTREACTOR mark. Perhaps if the provided record had contained stronger evidence of the claimed mark having acquired secondary meaning as an identifier of the Complainant’s goods and services, the outcome might have been different. The onus is ultimately on the Complainant to make its case, particularly in relation to the threshold issue of rights in a mark, and here the Complainant has not succeeded in doing so. If the Complainant is confident that he has rights in TORRENTREACTOR, the Panel suggests that he obtain a trademark registration, which would put many of the related issues to rest.

For the reasons given above, the Panel finds that the Complainant has failed to establish this first element.

With the failure of the first element, discussion of the remaining two elements is not required. However, for the sake of clarification, the Panel wishes to note a few points.

B. Rights or Legitimate Interests

The Respondent’s assertion that he has a right or legitimate interest in the disputed domain name because he paid USD17,500 for it in an auction is not particularly relevant. Domain names are often traded and auctioned off for profit depending on the amount of traffic associated with it, and it is often the case that domain names that are confusingly similar to an already operating domain name or existing trademark fetch a higher price among cybersquatters and domain name traders.

Further, the Respondent claims that he has intentions of actually using the domain name rather than simply seeking revenue from a domain name parking service. The Respondent further claims that his plans relate to the dictionary definition of “torrent” and “reactor” (the Respondent claims that these mean “rapids/rushing stream” and “reaction equipment/apparatus”, respectively), noting that he wrote in email to the Complainant, “I’m planning to use this name in a month.” The Panel first notes that the Respondent did in fact state this in an email. However, that email is dated August 6, 2008. Almost seven months have passed, and the disputed domain name still forwards to a pornography site via a domain name parking service. Also, the Panel finds it difficult to imagine what type of site could relate to the definition meanings for “torrent” and “reactor” in combination. But in any event, anyone with a genuine intention to use a domain name for a legitimate and bona fide business might be concerned about the effects of allowing the domain name to be linked to a pornography site for such a long period of time. In other words, the Panel finds the Respondent’s explanations and argument irrelevant and/or not credible.

C. Registered and Used in Bad Faith

One of the more telling points of bad faith on the part of the Respondent is the prior history of cybersquatting, as cited in the sections above. Further, notwithstanding the Respondent’s assertions that he had no intentions of selling the disputed domain name to the Complainant, the email exchanges clearly show otherwise. The Respondent initially offered to sell for USD150,000, and in response to a proposal of US$ 30,000 by the Complainant, responded by proposing, “The price is $50k and not negotiable.” The Panel finds that there is more than sufficient evidence in the records to reach a finding of bad faith use on the part of the Respondent.¹

7. Decision

For all the foregoing reasons, the Complaint is denied.

Ik-Hyun Seo
Sole Panelist

Dated: March 2, 2009

¹ In this light, and in the event that the Complainant was subsequently able to show that it had obtained the requisite rights at the relevant time in the claimed TORRENT REACTOR mark, this Panel would not entirely rule out the possibility of the Complainant perhaps being able to bring a re-filed complaint against the Respondent provided the relevant re-filing criteria were met. See e.g., Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. In any event, the present outcome would not prevent either party from pursuing the matter further in a court of competent jurisdiction.