Apple founder, Steve Jobs has been resting in peace since he passed in 2011, and now The Steve Jobs Archive LLC has secured his matching .com domain.
SteveJobs.com was secured via the UDRP process that granted transfer away from its Korean registrant. The domain was registered in 1999, but it existed before and it dropped.
Ms. Laurene Powell Jobs, Steve Jobs’s widow, is an officer of the Complainant in this UDRP case.
Full details on this decision follow:
Steve Jobs Archive, LLC v. jongsubkim
Claim Number: FA1909001861755
PARTIES
Complainant is Steve Jobs Archive, LLC (“Complainant”), represented by Aaron D. Hendelman, California. Respondent is jongsubkim (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stevejobs.com>, registered with Inames Co., Ltd..
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Kyung Jik Kwak, Esq. (Chair), Ho-Hyun Nahm, Esq. and The Honourable Neil Anthony Brown QC as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on September 11, 2019; the Forum received payment on September 11, 2019.
On September 16, 2019, Inames Co., Ltd. confirmed by e-mail to the Forum that the <stevejobs.com> domain name is registered with Inames Co., Ltd. and that Respondent is the current registrant of the name. Inames Co., Ltd. has verified that Respondent is bound by the Inames Co., Ltd. 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 September 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@stevejobs.com. Also on September 19, 2019, 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 October 14, 2019.
On November 8, 2019, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Kyung Jik Kwak, Esq. (Chair), Ho-Hyun Nahm, Esq. and The Honourable Neil Anthony Brown QC as Panelists.
On November 21, 2019 due to exceptional circumstances, the time period within which the Panel shall be required to render its Decision was extended until December 6, 2019.
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.
PRELIMINARY ISSUE: Language of Proceeding
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. The Panel has discretion to determine the appropriate language of the proceedings on appointment. Complainant respectfully requests that the proceedings be conducted in English. In accordance with the Rules, paragraphs 11(a), 10(b) and 10(c), Complainant requests that the Panel determine English to be the language of the proceeding for the following reasons: (i) Complainant does not speak Korean and requiring Complainant to translate the complaint into Korean would be costly for Complainant and would delay the proceedings unnecessarily; and (ii) content found at the disputed domain name, including on the “about” page of the website that resolves from the domain name <stevejobs.com> is in English, showing that Respondent is at least comfortable with the use of English.
Respondent rebuts that (i) it was not possible to delve into and analyze the Complaint drafted and filed by Complainant and the evidences since the trademark rights alleged to be attached to “EXHIBIT D” by Complainant were not transmitted in the Korean-translated version to Respondent; (ii) this fact constitutes a procedural defect on the part of Complainant, and it shows lack of diligence on the part of Complainant, and Complainant should bear the full accountability for failing to submit a translated version; (3)not only is Respondent unfamiliar with the use of the English language as a person who was born in Korea and has been using nothing but the Korean language, but also he has been using the services provided Naver, Korea’s top web directory and search engine.
The Panel duly notes that a prior case involving Respondent was conducted in English. See Marshalls of Nevada, Inc. v. Kim Jongsub, FA0506000495434 (Forum Aug. 10, 2005). The Panel also notes that Respondent prepared and filed its Response in Korean which appears to be written on the basis of his good understanding of the Complaint in English.
Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case, the Panel decides English to be the language of the proceeding without requiring Respondent to submit an English translation of its Response written in Korean. See Section 4.5.1, WIPO Jurisprudential Overview 3.0.
PARTIES’ CONTENTIONS
A. Complainant
i) Complainant is the lawful owner of the Steve Jobs publicity rights and the trademark rights in the STEVE JOBS name (Compl. Ex. G). The name STEVE JOBS is protected as a registered trademark in multiple jurisdictions throughout the world, as shown in (Compl. Ex. D). The name STEVE JOBS has also acquired strong common law trademark rights. The commercial community and international public identify Mr. Jobs as the alter ego of Apple. As CEO, Chairman and advisor to Apple for decades and the renowned visionary behind the company’s creations, Mr. Jobs became inseparably intertwined with the company’s successes and failures. Complainant submits the articles as Compl. Ex. E, showing Steve Jobs’ connection to Apple and public perception, connecting Mr. Jobs to the successes and failures of the company. The <stevejobs.com> domain name is identical to Complainant’s trademark, STEVE JOBS.
ii) Respondent has no rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii) because Respondent is not known by the name Steve Jobs nor has it otherwise developed rights to the STEVE JOBS mark; has no affiliation with Complainant or Steve Jobs; has no permission to use the mark; and is not using the mark in a fair use manner. According to the information (Compl. Ex. A), Respondent’s legal name is Kim Jongsub. Complainant has not licensed or otherwise permitted Respondent to use the STEVE JOBS mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the STEVE JOBS mark. Respondent’s diversionary use of a Complainant’s mark to attract Internet users to its own website, which contained hyperlinks to content unrelated to Steve Jobs and solicitations for consulting services is not nominative or a legitimate noncommercial fair use. Respondent’s use of the disputed domain name is avoidable because it is not necessary to identify Respondent’s own consulting services.
iii) Respondent’s bad faith intent in registering the disputed domain name is conclusively established by: (i) Respondent’s knowledge of prior rights in the STEVE JOBS mark and the fame of the STEVE JOBS mark; (ii) Respondent’s attempt to take advantage of the goodwill in the STEVE JOBS mark by registering a domain name comprising of the mark in its entirety; (iii) Respondent’s use of the disputed domain name to exploit the goodwill in the STEVE JOBS mark by offering consulting services under the mark for personal gain; (iv) Respondent’s renewal of the domain name after further rights had been acquired in the mark; and (v) Respondent’s repeated use of third-party trademarks for unlawful commercial gain. This registration and use of the disputed domain name clearly constitute bad faith under ICANN Policy ¶ 4(a)(iii).
B. Respondent
i) The ‘steve jobs’ trademark as alleged by Complainant has never been registered or used in the U.S. or Korea according to the data constituting “Compl. Ex. D” as filed by Complainant. It shows bad faith and intent on the part of Complainant to select the jurisdictions in which trademark registration is easy for the purposes of reverse domain name hijacking in one to two years, and it shows Complainant’s plan and premeditation for such bad faith conduct.
Common law trademark rights in a person’s name needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name is insufficient to establish trademark rights in a person’s name. A review of Complainant’s Exhibits E, F, G, H, and I for which Complainant asserts that “Steven Paul Jobs” is famous suggests that they contain only web search hits in English and the statements of fact known only in the U.S. Not only is Respondent unfamiliar with the use of the English language as a person who was born in Korea and has been using nothing but the Korean language, but also he has been using the services provided Naver, Korea’s top web directory and search engine. Respondent has been unable to have access to the data in English entered into evidence by Complainant, and as such, it is clear that Respondent could not have known of such data.
ii) The use of “STEVE JOBS” included in “STEVE JOBS KIM” as the English name of Respondent “Steve Jobs Kim” on domain names is lawful and legitimate. Respondent has been using “Steve Jobs Kim” as a name since 1999 for a period of over 20 years. Respondent has been operating the so-called “job stock” site of “Steve Jobs Kim” as the official web site. There exist various persons with the same names such as “Steven Paul Jobs”, “Steven Jobs”, and “Steve Jobs” in the U.S. Not one particular citizen or individual can have such names exclusively, and it shows that such names are not of reputation or fame.
iii) Respondent paid a fee and registered the domain name on December 21, 1999, and the renewal fee was rightfully paid for the purposes of continuous maintenance and management. As well, since 19 December 2011, the so-called “steve jobs kim’s job stock” was created and has since been used. From June 2017 through September 2019, the site has been used as a facebook extension page, and it was merely transformed into the so-called “under construction” page merely, and the description made as “under construction” shows the rightful and lawful act of owning the domain name. At present, the “under construction” page that has been used as a service provided by ‘Inames’ as the domain name registrar is filed as Resp’s Ex.17. Also, the facebook page entered into evidence by Complainant only shows the provision of services by someone else on a courtesy basis, and the actual person never engaged in any operations or creations. No role was played in editing or operating the page, and Complainant’s bad faith criticism is unsound and unfounded.
As well, it is not such that there have been any monetary gains or exchanges through the use of Facebook pages, and it contains only the contents that should not otherwise be excluded therefrom.
It is clear that the disputed domain name had never been registered or obtained for the purposes of selling, leasing, or assigning it to somebody else. Respondent had run the site by 19 September 2019 since 21 December 1999 concerning the disputed domain name, and it is clear that Complainant has never made any request or contact for the <stevejobs.com> domain name matter. Complainant has never ever had a claim for the <stevejobs.com> domain name since 21 December 1999 when the disputed domain name was registered.
Furthermore, Respondent must have used the disputed domain name for personal purposes only in light of the fact that the <stevejobs.com> domain name has never been used commercially and that it was rare in Korea to register his or her own name in the country at that time.
iv) Complainant is asserting that Respondent has previously taken unfair advantage of a third party’s trademark by using a confusingly similar domain name to host a website offering competing goods, a fact tending to show bad faith by way of citing the UDRP precedent concerned with <marshals.com> rightfully owned by Respondent and is laying unfounded claims against Respondent [Marshalls of Nevada, Inc. v. Kim Jongsub, Case No. 495434 (Forum Aug. 10, 2005)]. Under the final and conclusive judicial decision in the lawsuit to confirm the cancellation of the domain name transfer and of ownership, Respondent prevailed, and it is rightfully owned by Respondent according to the verdict.
v) Of the 195 U.N. member states, only 6 are said to be the countries in which the trademark right was established, and laying a claim for the right to use .com domain name and to the ownership of it on a global scale shows bad faith, and it is an act of reverse domain name hijacking in an erroneous fashion. It has been over 20 years since the registration of the disputed domain name, and it has been 9 years since the passing of the late Steven Paul Jobs, and at present, Complainant is now laying a claim for the disputed domain name and is making a request for a domain name transfer. The claim made by Complainant is illegal and phony and constitutes reverse domain name hijacking and should therefore be dismissed.
FINDINGS
1. The disputed domain name was registered on December 21, 1999.
2. Complainant has established rights in the STEVE JOBS mark based upon registration for the mark STEVE JOBS with the Swiss Intellectual Property Office (e.g., Reg. No. 730433 registered on October 16, 2018); with the Norwegian Industrial Property Office (e.g., Reg. No. 302932 registered on March 21, 2019); and trademark registrations for the same mark in some other jurisdictions.
3. Complainant has also established that the name STEVE JOBS acquired common law trademark rights across the globe prior to December 21, 1999.
4. Internet users who are directed to the disputed domain name’s resolved website are likely to believe that they have successfully accessed a website related to, or authorized by, Steve Jobs or his successors.
5. Complainant has not engaged in reverse domain name hijacking.
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 contends that the name STEVE JOBS is protected as a registered trademark in multiple jurisdictions throughout the world, as shown in Compl. Ex. D. Respondent argues that the year of registration was 11 October 2018, 5 February 2019, 11 October 2018, 8 April 2018, 10 October 2018, and 30 July 2019, and these are the years of registration as alleged by Complainant, and they are only recent even on a presumptive basis. As well, the jurisdictions in which the registrations occurred according to the exhibits filed by Complainant include the countries in which it is easy to register trademarks, and they do not contain the U.S. in which Complainant is based or even Korea in which Respondent is based.
However, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. See Section 1.1.2, WIPO Overview 3.0 stating (noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element). The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case. See Section 1.1.3, WIPO Overview 3.0 stating (While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.).
Therefore, the Panel finds that Complainant has rights in the STEVE JOBS mark based upon registration for the mark STEVE JOBS with the Swiss Intellectual Property Office (e.g., Reg. No. 730433 registered on October 16, 2018); with the Norwegian Industrial Property Office (e.g., Reg. No. 302932 registered on March 21, 2019); and trademark registrations for the same mark in some other jurisdictions.
Complainant contends that the name STEVE JOBS has also acquired strong common law trademark rights. The commercial community and international public identify Mr. Jobs as the alter ego of Apple. As CEO, Chairman and advisor to Apple for decades and the renowned visionary behind the company’s creations, Mr. Jobs became inseparably intertwined with the company’s successes and failures. Compl. Ex.E shows Steve Jobs’ connection to Apple and public perception, connecting Mr. Jobs to the successes and failures of the company.
Respondent rebuts that common law trademark rights in a person’s name needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name is insufficient to establish trademark rights in a person’s name.
Complainant states that Steve Job’s personal name has taken on such a cachet that it has become a trademark. See Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005). It further submits a screenshot of an archived news and media database showing the STEVE JOBS name linked to Apple over 10,000 times in articles across the globe prior to December 21, 1999, the date of Respondent’s registration for the <stevejobs.com> domain (Compl. Ex. H), including in Asia at least 1,247 times prior to the same date, displayed in Compl. Ex. I. After founding Apple, Mr. Jobs served in executive, leadership and chief advisory roles at Apple for about 24 years total. Mr. Jobs supervised the rollout of successful Apple products such as the iPod, Apple iTunes Store, iPhone and iPad, and, at times, successfully requested that efforts on certain products be halted or discontinued to allow the company to focus on more promising endeavors (Compl. Ex. E). Complainant also submits Compl. Ex. F: a few awards and recognitions Mr. Jobs received during and after his lifetime for the contributions, he, through Apple, made to the technology industry as a whole, as well as Apple’s recognition for the same. In 2002, Apple was awarded the Technical Grammy Award for its technical contributions to the music industry. See Compl. Ex. F. Complainant, which is solely owned by Mr. Jobs’ widow, Mrs. Jobs, is the owner of the rights in the STEVE JOBS trademark and has an interest in protecting the STEVE JOBS name from commercial use.
The Panel observes that the name ‘Steve Jobs’ has satisfied the factors to consider when determining whether a name has acquired common law trademark protection in the case Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005), namely: (i) the extent to which the commercial community identifies the individual with the company; (ii) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; (iii) the extent of the personal ownership of the company by the individual; (iv) the degree of personal control that the individual exercises over the enterprise; (v) the extent to which the individual is identified with any major achievements of the enterprise; and (vi) whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.
As such, the Panel concludes that the name STEVE JOBS acquired common law trademark rights across the globe prior to December 21, 1999, the date of Respondent’s registration for the <stevejobs.com> domain.
Next, Complainant asserts that the disputed domain name is confusingly similar to the STEVE JOBS mark. The Panel notes that Respondent incorporates the mark in its entirety and adds the “.com” gTLD eliminating space between ‘STEVE’ and ‘JOBS’ in the disputed domain name. Addition of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the disputed domain name is identical and/or confusingly similar to Complainant’s STEVE JOBS mark per Policy ¶ 4(a)(i).
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 Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent is not known by the name Steve Jobs nor has it otherwise developed rights to the STEVE JOBS mark; has no affiliation with Complainant or Steve Jobs; has no permission to use the mark; and is not using the mark in a fair use manner. According to the information (Compl. Ex. A), Respondent’s legal name is Kim Jongsub. Complainant has not licensed or otherwise permitted Respondent to use the STEVE JOBS mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the STEVE JOBS mark. Respondent’s diversionary use of a Complainant’s mark to attract Internet users to its own website, which contained hyperlinks to content unrelated to Steve Jobs and solicitations for consulting services is not nominative or a legitimate noncommercial fair use. Respondent’s use of the disputed domain name is avoidable because it is not necessary to identify Respondent’s own consulting services.
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent rebuts that the use of “STEVE JOBS” included in “STEVE JOBS KIM” as the English name of Respondent “Steve Jobs Kim” on domain name is lawful and legitimate. Respondent has been using “Steve Jobs Kim” as a name since 1999 for a period of over 20 years. Respondent has been operating the so-called “job stock” site of “Steve Jobs Kim” as the official web site. There exist various persons with the same names such as “Steven Paul Jobs”, “Steven Jobs”, and “Steve Jobs” in the U.S. Not one particular citizen or individual can have such names exclusively, and it shows that such names are not of reputation or fame.
The Panel cannot find any evidence that Respondent began to use the name ‘Steve Jobs’ as his nick name prior to December 21, 1999, the date of registration for the disputed domain name. According to Respondent’s assertions, since December 19, 2011, Respondent has been operating the so-called “job stock” site of “Steve Jobs Kim” as the official web site.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel concludes that Complainant established the element required per Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent’s bad faith intent in registering the disputed domain name is conclusively established by: (i) Respondent’s knowledge of prior rights in the STEVE JOBS mark and the fame of the STEVE JOBS mark; (ii) Respondent’s attempt to take advantage of the goodwill in the STEVE JOBS mark by registering a domain name comprising of the mark in its entirety; (iii) Respondent’s use of the disputed domain name to exploit the goodwill in the STEVE JOBS mark by offering consulting services under the mark for personal gain; (iv) Respondent’s renewal of the domain name after further rights had been acquired in the mark; and (v) Respondent’s repeated use of third-party trademarks for unlawful commercial gain. This registration and use of the disputed domain name clearly constitute bad faith under ICANN Policy ¶ 4(a)(iii).
Respondent rebuts that:
(i) Respondent paid a fee and registered the domain name on December 21, 1999, and the renewal fee was rightfully paid for the purposes of continuous maintenance and management. As well, since 19 December 2011, the so-called “steve jobs kim’s job stock” was created and has since been used. From June 2017 through September 2019, the site has been used as a facebook extension page, and it was merely transformed into the so-called “under construction” page merely, and the description made as “under construction” shows the rightful and lawful act of owning the domain name. At present, the “under construction” page that has been used as a service provided by ‘Inames’ as the domain name registrar (Resp. Ex.17). Also, the facebook page entered into evidence by Complainant only shows the provision of services by someone else on a courtesy basis, and the actual person never engaged in any operations or creations. No role was played in editing or operating the page, and Complainant’s bad faith criticism is unsound and unfounded;
(ii) As well, it is not such that there have been any monetary gains or exchanges through the use of Facebook pages, and it contains only the contents that should not otherwise be excluded therefrom;
(iii) It is clear that the disputed domain name had never been registered or obtained for the purposes of selling, leasing, or assigning it to somebody else. Respondent had run the site by 19 September 2019 since 21 December 1999 concerning the disputed domain name, and it is clear that Complainant has never made any request or contact for the <stevejobs.com> domain name matter. Complainant has never ever had a claim for the <stevejobs.com> domain name since 21 December 1999 when the disputed domain name was registered;
(iv) Furthermore, Respondent must have used the disputed domain name for personal purposes only in light of the fact that the <stevejobs.com> domain name has never been used commercially and that it was rare in Korea to register his or her own name in the country at that time; and
(v) Complainant is asserting that Respondent has previously taken unfair advantage of a third party’s trademark by using a confusingly similar domain name to host a website offering competing goods, a fact tending to show bad faith by way of citing the UDRP precedent concerned with <marshals.com> rightfully owned by Respondent and is laying unfounded claims against Respondent [Marshalls of Nevada, Inc. v. Kim Jongsub, Case No. 495434 (Forum Aug. 10, 2005)]. Under the final and conclusive judicial decision in the lawsuit to confirm the cancellation of the domain name transfer and of ownership, Respondent prevailed, and it is rightfully owned by Respondent according to the verdict.
The Panel observes that while constructive notice of a complainant’s mark is insufficient to find bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). The Panel infers that Respondent had actual knowledge of Complainant’s rights in the STEVE JOBS mark prior to Respondent’s registration of the disputed domain name, and thus constitutes bad faith registration per Policy ¶ 4(a)(iii) in light of the notoriety of Complainant’s mark coupled with the fact that Respondent registered the disputed domain name only two years after Mr. Jobs’ relationship with Apple resurged in 1997 which made it possible that Apple enjoyed resurgence on an unprecedented scale and ultimately became one of the most valuable U.S. companies in history.
The Panel finds that Internet users who are directed to the disputed domain name’s resolved website are likely to believe that they have successfully accessed a website related to, or authorized by, Steve Jobs or his successors. Once on the site, viewers are presented with the option to contact stevejobs.com.manager@gmail.com for consulting services as well as with links relaying technology news. Confusion as to whether the domain, website or its services are related to, or authorized by, Steve Jobs or his successors, likely causes engagement with the owner of the website and email account. The Panel agrees that such a use of the disputed domain name, to lure consumers and solicit business, constitutes bad faith use in violation of Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website); ESPN, Inc. v. Ballerini, FA 95410 (Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website); Bama Rags, Inc. v. Zuccarini, FA 94380 (Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).
The Panel concludes that Complainant established the element required per Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent claims that of the 195 U.N. member states, only 6 are said to be the countries in which the trademark right was established, and laying a claim for the right to use .com domain name and to the ownership of it on a global scale shows bad faith, and it is an act of reverse domain name hijacking in an erroneous fashion; and it has been over 20 years since the registration of the disputed domain name, and it has been 9 years since the passing of the late Steven Paul Jobs, and at present, Complainant is now laying a claim for the disputed domain name and is making a request for a domain name transfer; and thus the claim made by Complainant is illegal and phony and constitutes reverse domain name hijacking and should therefore be dismissed.
The Panel notes that Complainant has indeed met its burden under the Policy, and that its efforts in this proceeding demonstrate that Complainant has brought this proceeding in good faith. Since the Panel has found that Complainant has satisfied all of the elements of Policy ¶ 4(a) including common law rights in the ‘STEVE JOBS’ mark prior to Respondent’s registering the disputed domain name, the Panel, therefore, finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Securian Financial Group, Inc. v. me s / enom, FA1595614 (Forum Jan. 16, 2015) (denying request for reverse domain name hijacking where Complainant satisfied all elements of Policy ¶ 4(a)).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stevejobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Kyung Jik Kwak, Esq. (Chair),
Ho-Hyun Nahm, Esq. and
The Honourable Neil Anthony Brown QC, Panelists
Dated: December 11, 2019
Blake Nordstrom, Paul Allen— they have all the billions $$$$$ in the world, the best medical care they can have.. and yet they DIED.