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DECISION

 

Steve Houghton v. KWANGPYO KIM / MEDIABLUE INC

Claim Number: FA1812001821929

PARTIES

Complainant is Steve Houghton (“Complainant”), represented by John J. Arnott of Munck Wilson Mandala, LLP, Texas, USA.  Respondent is KWANGPYO KIM / MEDIABLUE INC (“Respondent”), represented by Jason Schaeffer of ESQwire.com. P.C., New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <securelock.com>, registered with Uniregistrar Corp.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.

 

Nathalie Dreyfus, Diane Thilly Cabell and Sebastian Matthew White Hughes as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 19, 2018; the Forum received payment on December 19, 2018.

 

On December 21, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <securelock.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@www.securelock.com. Also on December 27, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on January 22, 2019.

 

A timely Additional Submission was received by Complainant on January 25, 2019, and determined to be complete on the same.

 

On February 1, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Nathalie Dreyfus, Diane Thilly Cabell and Sebastian Matthew White Hughes as Panelists.

 

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

  1. Complainant

Complainant contends that the disputed domain <securelock.com> is confusingly similar to its trademark SECURLOCK as the addition of the silent letter “e” does not prevent any likelihood of confusion.

 

Complainant alleges that Respondent has no rights or legitimate interests in the <securelock.com> domain name. Complainant states that Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s SECURLOCK trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Complainant further states that Respondent’s use of the domain name as a pay per click site does not constitute a bona fide offering of goods or services. Complainant argues that Respondent intents for commercial gain to misleadingly divert consumers or to tarnish its trademark.

 

Complainant states that Respondent registered the domain name in bad faith. Complainant argues that Respondent has registered and acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark. Complainant argues that Respondent has commercially benefitted unfairly and opportunistically, from the goodwill associated with Complainant’s SECURLOCK trademark, by using a domain name substantially identical to Complainant’s trademark to divert consumers to a pay per click site linking to Complainant’s business competitors.

 

  1. Respondent

Respondent explains that Complainant does not have rights on the disputed domain name. Respondent argues that if Complainant has rights on the trademark SECURLOCK, Complainant does not have rights on the correctly spelled <securelock>. Respondent explains that it used dictionary words for the disputed domain name, thus the disputed domain name cannot be confusingly similar to Complainant’s trademark. Respondent states that it did not register the disputed domain name with Complainant’s trademark in mind and had no knowledge of Complainant’s trademark.

 

Respondent further argues that it has rights on the disputed domain name. Respondent explains that it purchased the Disputed Domain because “secure lock” is a common term, short, and memorable domain name that it believed no party could claim exclusive rights. Respondent argues that it has registered thousands of generic dictionary common word domain names such as <SecureAir.com>, <SecureInn.com>, <SecureWay.com>, <SecureBit.com> and <SecureGlass.com> and <LineLock.com>. Respondent explains that the disputed domain name is hosted with a service which places pay-per-click (PPC) advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. Respondent has used the domain name to display PPC advertising links related to the descriptive words in the disputed domain name and general topics. Respondent argues that there is no links related to Complainant or its business on its webpage. Respondent further states that the links are related to the meaning of the words “secure” and “lock”.

 

Respondent further states that it did not register the disputed domain name or used in bad faith. Respondent registered the domain name simply because it incorporated a descriptive term that became available when its prior owner allowed the Disputed domain’s registration to expire. Respondent argues that it did not know Complainant’s trademark. Respondent states that the combination of the descriptive “Secure” with the word “Lock” is a commonly used term worldwide. Respondent also argues that Complainant made an offer to purchase the disputed domain name but it fails. Respondent argues that Complainant filed a Complaint because it failed to buy the disputed domain name.

 

Respondent further alleges that Complainant engaged in a reverse domain name.

 

  1. Additional Submissions

Complainant provided additional submissions in which he states that:

(i)    the terms SECURLOCK and SECURELOCK must be considered as a whole, thus the disputed domain name <securelock.com> is confusingly similar to the SECURLOCK trademark.

(ii)  Respondent reasonably had knowledge of Complainant’s pre-existing trademark rights in SECURLOCK at the time of purchasing the disputed domain name <securelock.com>.

(iii) Respondent has historically targeted, and continues to target Complainant by using the disputed domain name <securelock.com> to advertise Complainant’s direct competitors to the SECURLOCK self-storage businesses and/or to divert the public to websites for Complainant’s direct competitors.

 

Respondent did not submit additional submissions.

FINDINGS

Complainant owns the registered trademark SECURLOCK filed on October 1, 1997 (Serial number 75-224,071) and registered on December 1, 1998 No. 2,207,558, duly renewed, for storage services, namely self-storage in modular storage buildings, in class 39.

 

Complainant is a national provider of self-storage facility services currently operating stores in sixteen cities in the states of Arizona, Georgia, Tennessee and Texas.

 

The disputed domain name <securelock.com> was registered on June 4, 2007 by Respondent. The disputed domain name redirects to a parking page displaying pay-per-click links.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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

Complainant has established its trademark rights on the trademark SECURLOCK. Complainant is also the owner of the domain name <securlock.com>.

 

The disputed domain name <securelock.com> fully incorporates Complainant’s SECURLOCK trademark with the mere addition of the silent letter “e”. The added element “e” does not add significant distinguishing value to the disputed domain name because phonetically the terms SECURLOCK and SECURELOCK are indistinguishable. Previous Panel have held that “confusing similarity between JOBSPRING and JOPSPING where the omission of the letter “r” does not add significant distinguishing value to the domain name” (See Motion Recruitment Partners, Inc. v. Andrew Johnson d/b/a Jobsping/admin admin, FA1103001375976, Forum, May 5,2011).

 

Therefore, Panel finds that SECURLOCK and SECURELOCK are phonetically confusingly similar.

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, in accordance with Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii), after which the burden shifts to Respondent to show it does have rights or legitimate interests (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828, Forum, Aug. 18, 2006).

 

In the present case, Complainant has made a prima facie case demonstrating that the Respondent is not commonly known by the domain name per the WHOIS, nor has it any connection whatsoever with Complainant.

 

Additionally, Complainant contends that Respondent is using the Disputed Domain Name to host a website that promotes other commercial sites via click-through links, presumably netting Respondent commercial gain.

 

In view of Complainant’s arguments, the Panel finds that Complainant satisfies its burden of proof. The burden shifts to Respondent to show that it does have rights or legitimate interests in the Disputed Domain Name <securelock.com>.

 

Respondent answers that it has rights and a legitimate interest in the disputed domain name. Respondent explains that it has registered the disputed domain name because it comprises solely of the combination of the words “secure” and “lock”, in other words, a common combination that Respondent believed no party could claim exclusive rights. Moreover, Respondent has many other non-trademark domain names most notably other registrations of descriptive word domain names such as <secureair.com>, <secureInn.com>, <SecureWay.com>, <SecureBit.com>; <SecureGlass.com>, and <LineLock.com>.

 

Respondent is not alone in having such a business model and it is an accepted and not unusual practice (See Rocky Lountain Health Maintenance Organization, Incorporated v. Port Media, FA 01218881, (Forum Jan. 26, 2012).

 

Previous Panels have already held that “the wide nature of those other registrations seems to suggest that the Respondent has sought to benefit from the registration of a wide range of geographical and other generic terms without any clear evidence indicating that the respondent had targeted the trademarks of others in this effort.” (See Hotel Plaza Limited et al. v Vertical Axis, Inc et al., WIPO case D2008-1760)

 

The Panel finds that merely registering a domain name comprised of common terms such as “secure” and “lock” does not by itself automatically confer rights or legitimate interests on Respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.

 

In this case, the disputed domain name redirects to PPC links. Respondent argues that these links are not selected but are the result of the generic or descriptive meaning of terms contain in a domain, as opposed to being selected with a trademark in mind. The PPC ads are auto generated by Google’s or parking provider software and relate to topics of general interests

 

The Panel finds that Respondent registered the disputed domain name based on its descriptive nature, and probably not because of Complainant’s trademark.

 

Therefore, the Panel finds that Complainant failed to demonstrate that Respondent has no rights or legitimate interests in the Disputed Domain Name in accordance with Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered the disputed domain name in bad faith.  Complainant states that Respondent acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark SECURLOCK.

 

Complainant further argues that Respondent has commercially benefitted unfairly and opportunistically from the goodwill associated with Complainant’s trademark, by using a domain name identical to Complainant’s trademark. Complainant argues that the fact that the disputed domain name redirects to Pay per click links is an evidence of bad faith.

 

Complainant has shown that it has relevant rights on the SECURLOCK trademark which is registered in the US. However, the Respondent is based in Korea. The Panel notes that there is no evidence of the worldwide reputation of Complainant’s trademark.

 

Respondent argues that it did not know Complainant’s trademark. Respondent states that the combination of the descriptive “Secure” with the word “Lock” is a commonly used term worldwide. Therefore, by registering a domain name with the descriptive words “secure” and “lock”, Respondent thought that no party could claim exclusive rights on these descriptive words.

 

Respondent argues that there is no evidence of bad faith registration or use. To the contrary, Respondent argues that it has purchased many others domain names with descriptive terms that were available. Respondent registered the Disputed Domain simply because it incorporated a descriptive term that became available when its prior owner allowed the Disputed Domain’s registration to expire.

 

Panel notes that Respondent has probably registered the Disputed Domain name without Complainant’s trademark in mind.

 

Thus, the Panel finds that Complainant failed to demonstrate that Respondent registered the Disputed Domain Name in bad faith, in accordance with Policy ¶ 4(a)(iii).

 

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.  Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <securelock.com> domain name, of its rights to use the disputed domain name.

 

Respondent asserts that Complainant filed the Complaint after attempting to purchase the Domain name from Respondent but failed to do so.

 

The Panel here finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests and that Respondent registered and is using the disputed domain name in bad faith. The Panel thus concludes that reverse domain name hijacking has occurred.  see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

 

Respondent has proven this claim and this Panel finds the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

Therefore, the Panel finds that reverse domain name hijacking has occurred.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall DENIED.

 

Accordingly, it is Ordered that the <securelock.com> domain name REMAIN WITH Respondent.

 

 

Nathalie Dreyfus,

Diane Thilly Cabell, and

Sebastian Matthew White Hughes,

Panelists

 

Dated:  13 February, 2019

Source: World Intellectual Property Organization (WIPO) and National Arbitration Forums (NAF)

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