W. David Moore
and Adminsolutions Inc. v. Sung Nam Kim
Claim Number: FA0107000098248
PARTIES
The Complainant is W. David Moore and Adminsolutions Inc., Charlotte, NC ("Complainant") represented by Donna A. Tobin, of Cooper & Dunham LLP. The Respondent is Sung Nam Kim, Pohang, Korea ("Respondent").
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <adminsolutions.com>, registered with Hangang Systems, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Young Kim sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on July 19, 2001; the Forum received a hard copy of the Complaint on July 23, 2001.
On July 26, 2001, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name <adminsolutions.com> is registered with Hangang Systems, Inc. and that the Respondent is the current registrant of the name. Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@adminsolutions.com by e-mail.
A timely response was received and determined to be complete on August 20, 2001.
On August
24, 2001,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum
appointed Young Kim as Panelist.
The Forum received a supplement to the Complaint on August 27, 2001, which complies with Supplemental Rule 7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
Complainant asserts that (i) Complainant is a well known provider of employee leasing services throughout the United States and has been using the mark ADMINSOLUTIONS (hereinafter, "Subject Mark") as early as December 1, 1997; (ii) Complainant is the owner of U.S. Reg. No 2,244,448 for the Subject Mark; and (iii) Respondent's domain name <adminsolutions.com> (hereinafter "Subject Domain Name") is confusingly similar to the Subject Mark.
Complainant contends that after Complainant sent a letter to Respondent requesting that the Subject Domain Name be transferred, Respondent linked the Subject Domain Name to a website with the domain name <noisevibration.com.> Complainant also contends that since Respondent does not appear to operate any legitimate or bona fide business in connection with the Subject Domain Name or commonly known by the domain name or portion thereof, Respondent has no rights in or legitimate use for the Subject Domain Name.
Complainant asserts that Respondent offered the Subject Domain Name for sale, and when Complainant challenged the Subject Domain Name, Respondent quickly linked it to another site, fabricated a story about starting a business and misrepresented the date it first registered the Subject Domain Name.
Based on the above, Complainant asserts that Respondent has acquired the Subject Domain Name for the purpose of unfairly competing with Complainant by selling, renting or otherwise transferring it to Complainant or a competitor; and Respondent also registered the Subject Domain Name to prevent Complainant from using its own mark as a domain name, and to confuse the public as to the source or origin of goods and services sold in connection with the Subject Mark.
Respondent asserts that since many web programmars use "admin" in their e-mail account (for example, admin@vibration.co.kr), "admin" is a generally used prefix.
Respondent also asserts that "adminsolutions" means "Advanced MINimum Solutions" in his major field, i.e., in the field of noise and vibration and he linked the Subject Domain Name to another web site due to difficulties in operating a web site.
In response to Complainant's assertion that Respondent misrepresented the date it first registered the Subject Domain Name, Respondent contends that since such information is readily available to anybody from the "whois" database, it is absurd to think that Respondent made such misrepresentation on purpose. Respondent also asserts that since he has been operating the site on the subject of noise and vibration since 1999, he got confused about the date of registration of the Subject Domain Name.
In response to Complainant's assertion that Respondent offered to sell the Subject Domain Name, Respondent contends that he never offered to sell the Subject Domain Name to Complainant. He also asserts that he did not use the phrase "interested in" to pursue sale of the Subject Domain Name.
C. Complainant's Additional
Submissions
In the supplement to the complaint, Complainant asserts that Respondent has not proven that he operates a web site or a legitimate business in connection with the Subject Domain Name or is known by the Subject Mark.
Complainant also asserts that although Respondent argues that the phrase "if you are interested in" does not mean the domain is for sale, that is obviously the common meaning of the words and it is not necessary for an offer of sale to be made directly to a mark owner to constitute bad faith.
FINDINGS
Complainant started its business from December 1997 and is the owner of U.S. Reg. No 2,244,448 for the Subject Mark.
Respondent is operating a web site on noise and vibration in connection with the domain name <noisevibration.com> and <adminsolutions.com> is linked to the <noisevibration.com> site. The <adminsolutions.com> page includes the phrase "if you are interested in this domain, feel free to contact me."
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
It is held that Complainant is a registered owner of the Subject Mark in the United States and the Subject Mark is identical or confusingly similar to the Subject Domain Name.
Registration and
Use in Bad Faith
In the fields of computers and Internet, the term "admin" is used to refer to an administrator and the term "solutions" is used to refer to programs or means to solve a given problem in many countries around the world, and in particular, the English terms are also widely used in Korea without translation. Accordingly, a combination of the above two terms "adminsolutions" is considered as ordinarily meaning "a program used by an administrator" or "a program used in system management" in the relevant fields. It is therefore reasonable to conclude that the term "adminsolutions" is a non-distinctive generic name.
Although Complainant is a registered owner of the Subject Mark, the territorial scope of its rights is limited to the United States and the Subject Mark has only been used since December 1997. In addition, Complainant has failed to prove that the Mark became famous or acquired a secondary meaning as a result of its use of the Subject Mark. Especially, when the nature of the business associated with the Subject Mark, i.e., employee leasing service, is considered it is difficult to conclude that Complainant's business or the Subject Mark has been known outside the United States. Complainant also failed to provide any proof for us to reach a different conclusion.
Complainant asserted that a direct offer by Respondent for sale of the Subject Domain Name is not a requisite to establish bad faith of Respondent. If a mark is distinctive and famous enough, one can reasonably conclude that a domain name was registered in bad faith with the intention of selling it for consideration in excess of the out-of-pocket costs directly related to the domain name, even if the domain name registrant did not directly make an offer for sale to the owner of the mark.
However, since the
Subject Domain Name is considered a generic name and it is not proven that it
acquired a secondary meaning, it would not lead to a conclusion that Respondent
registered and is using the Subject Domain Name in bad faith even if Respondent
made an offer for sale of the Subject Domain Name. Moreover, Complainant failed to present any evidence that Respondent
knew about the Subject Mark, and registered and is using the Subject Domain
Name in bad faith. Accordingly,
Complainant has not sufficiently established that Respondent had registered and
is using the Subject Domain Name in bad faith. (VZ VermögensZentrum AG v.
Anything.com, D2000-0527 (WIPO Aug. 22, 2000).
Respondent's mere allegation of future use is not sufficient to establish his rights or legitimate interest in the Subject Domain Name. However, no facts are presented to dispute the Respondent’s allegation either.
DECISION
For the foregoing reasons, the Panel decides that Complainant failed to meet all three requirements of the paragraph 4(a) of the Policy. Accordingly, pursuant to paragraph 4 of the Policy and paragraph 15 of the Rules, the complaint is dismissed.
Young Kim, Panelist
Dated: September 7, 2001
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