The Complainant is Prime Image Delaware Inc. of Chalfont, Pennsylvania, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America.
The Respondent is Jungsuk Lee of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <primeimage.com> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2008. On July 1, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
On July 2, 2008, the Registrar transmitted by email to the Center its verification response confirming that the registrant was as identified in the original Complaint, namely, Dotiz Interactive with one, Yunsung Yunsung being the relevant administrative, technical and billing contact for the Domain Name. In the course of subsequent email correspondence with the Center the Registrar informed the Center (by email dated July 10, 2008) that the registrant was in fact Jungsuk Lee with the email address “[email protected]”.
The Center sent an email communication to the Complainant on July 11, 2008 providing the registrant and contact information disclosed by the Registrar on July 10, 2008, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 16, 2008 citing Jungsuk Lee as the Respondent.
The Center verified that the Complaint together with the amended 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 July 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 11, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 18, 2008. 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.
The Panel has reviewed the correspondence between the Center and the Registrar with some care and believes it possible that the apparent change of registrant following the filing of the Complaint may have been as a result of administrative incompetence at the Registrar's end. The Registrar's email of July 10, 2008 commences “I'm sorry my unprofessional reply of previous notification”. Whether or not that is the case is of no practical consequence in that, for the purposes of this decision, the Panel proposes to treat the Respondent as having been one and the same throughout, from acquisition of the Domain Name to the present.
As a result of the confusion caused by the Registrar, the Complainant was concerned that the language of the registration agreement might have become Korean (or some other language other than English) and requested that the Panel exercise his discretion under the Rules to declare English as the language of this administrative proceeding. Were it necessary for the Panel to exercise his discretion in that way, he would have done so. The evidence filed by the Complainant satisfied the Panel that no prejudice would have been caused to the Respondent in so doing. However, it is not necessary, the Registrar having confirmed to the Center that the language of the registration agreement is English.
4. Factual Background
The unchallenged evidence of the Complainant supported by the annexures to the Complaint enables the Panel to make the following findings of fact:
1 The Complainant and its predecessors in title have used the mark PRIME IMAGE in connection with video processing equipment since 1985.
2 The Complainant is the registered proprietor of United States of America trade mark registration number 1,689,972 dated June 2, 1992 for video signal processing equipment.
3 The Domain Name was acquired by the Respondent on a date unknown to the Panel, but in any event many years after the Complainant and its predecessors had commenced use of the PRIME IMAGE mark.
4 The Domain Name is connected to a pay-per-click landing page featuring prominent links entitled “Video Editing”, “Corporate Video”, “Time Tailor” (another trade mark of the Complainant) and “Video Production”, many of the links being to competitors of the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant points to its PRIME IMAGE trade mark registration and contends that the Domain Name is identical to it.
The Complainant contends that while the Respondent is clearly using the Domain Name for commercial gain by way of its pay-per-click links on its website, that use cannot, in the circumstances of this case, be said to be a bona fide or legitimate use of the Domain Name within the meaning of paragraph 4(c) of the Policy.
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
As indicated in Section 3 above, following the filing of the original Complaint by the Complainant, the Registrar's Whois database was changed, thereby necessitating an amendment to the Complaint. The registrant for the Domain Name, originally identified as “Dotiz Interactive, Yunsung Yunsung [email protected]” became “Jungsuk Lee – [email protected]”.
The change post-filing of the Complaint was irregular and should never have been allowed to occur. It is not apparent to the Panel what its purpose was (it may have been an administrative error), but it can have no bearing on this decision. As indicated above, the Panel proposes to treat the Respondent as having been one and the same throughout, from acquisition of the Domain Name to the present.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant's registered trade mark, PRIME IMAGE, and the generic domain suffix. The latter may be ignored for the purposes of assessing identity/confusing similarity. The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case to the effect that (a) the Complainant's trade mark is well-known in the field of video editing; (b) the fame of the Complainant's mark predates the registration of the Domain Name; (c) whoever is responsible for the pay-per-click advertising links is clearly very well aware of the Complainant, its business area and the Complainant's competitors; (d) the Respondent will be earning revenue via the website to which the Domain Name is connected; (e) it is very probable that that income will be being derived from visitors to the Respondent's website, hoping and anticipating that they are visiting an official/authorized site of the Complainant; (f) the Respondent's intention at the outset was to derive a commercial gain in this manner on the back of the Complainant's reputation and goodwill in respect of its trade mark. Needless to say, the Complainant has not granted the Respondent any permission for this use or indeed any use of its trade mark.
The Respondent clearly has a case to answer, but has declined to provide an answer. Moreover, there is no evidence to suggest that Respondent is known by the Domain Name or any name corresponding to the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name
D. Registered and Used in Bad Faith
The Panel finds that the evidence overwhelmingly supports the Complainant's contention that the Respondent's intention at the outset was to use the Domain Name to deceive Internet users and thereby derive a commercial gain on the back of the Complainant's reputation and goodwill in respect of its trade mark.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
7. 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 domain name <primeimage.com> be transferred to the Complainant.
Tony Willoughby Sole Panelist
Date: August 28, 2008
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