My domain name is Lukka.com part 2

After losing its first UDRP round for Lukka.com at the National Arbitration Forum just 2 months ago, Lukka Inc. lost another UDRP, refiled at NAF.

Needless to say, if they lost that one too then why wasn’t there a finding of Reverse Domain Name Hijacking?

The domain predates the Complainant’s mark by several years and it’s bullshit UDRPs such as this that annoy and harass domain investors.

The domain transfer was denied.

Lukka, Inc. v. Kyujhin Jang

Claim Number: FA2105001944154

PARTIES

Complainant is Lukka, Inc (“Complainant”), represented by Brie Urbaniak, New York, USA. Respondent is Kyujhin Jang (“Respondent”), Republic of Korea.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lukka.com>, registered with Gabia, Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Ho Hyun Nahm, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 6, 2021; the Forum received payment on May 6, 2021. The Complaint was received in English.

On May 9, 2021, Gabia, Inc. confirmed by e-mail to the Forum that the <lukka.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 May 12, 2021, the Forum served the Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of June 1, 2021 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@lukka.com. Also on May 12, 2021, 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 May 30, 2021.

On June 7, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.

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: RES JUDICATA PRINCIPLE; RE-FILING OF UDRP COMPLAINT

Complainant claims that it submitted a Complaint to the Forum against the disputed domain name on March 1, 2021 (Lukka, Inc v. Lukka Com, FA2103001934915; April 12, 2021) (hereinafter referred to as ‘first proceeding’); the relief was denied; the panel in the first proceeding expressly noted that “Complainant has not provided anything to show that Libra Services Inc. is same as the complainant (Lukka, Inc.). To assert rights in a mark, a complainant must be the owner of the trademark rights. The panel concludes that complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the “LUKKA” trademark, therefore the panel declines to analyze the other two elements of the Policy.”

The Panel notes that Complainant has provided the Panel with the proof demonstrating that it is the owner of the trademark rights. Therefore, the Panel finds that Complainant deserves the opportunity to have its Complaint heard in full in the present proceeding and that the Complaint is properly re-filed.

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed.; see also FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and 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: Respondent understands English, as he previously responded to a Complaint (FA2103001934915) in English.

Respondent rebuts:

Respondent submits the Response in Korean which is the language of the Registration Agreement thereby making the language of the proceedings in Korean pursuant to Rule 11(a).

After considering the circumstance of the present case that Respondent submitted a response in Korean by using English for some parts, the Panel accepts the Complaint filed in English and the Response filed in Korean. The Panel will render its decision in English.

PARTIES’ CONTENTIONS

A. Complainant

i) Complainant received a decision from the Forum Panel on April 12, 2021 stating Complainant lacked rights in the LUKKA mark due to difference between the Complainant’s name and the registrant of the mark, which Complainant has corrected. Complainant has rights in the LUKKA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,979,885, registered Feb. 4, 2020). The disputed domain name is identical or confusingly similar to Complainant’s mark, as Respondent incorporates the mark fully with the only addition being the “.com” generic top-level domain (“gTLD”).

ii) Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name.

iii) Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent may be planning to sell the disputed domain name for profit and has no intention of using the disputed domain name in the United States. Furthermore, Complainant should be allowed to have a domain name that reflects its trademark.

B. Respondent

i) The disputed domain name predates Complainant’s LUKKA mark registration by 9 years. Respondent registered the disputed domain name and identical business name in Korea.

ii) Respondent has rights and legitimate interest in the disputed domain name because the domain name reflects Respondent’s business name. Respondent intends to use the disputed domain name as the basis of a new social media platform, and has spent significant resources to develop and perfect it.

iii) Respondent did not register or use the disputed domain name in bad faith. Respondent acquired the disputed domain name on November 11, 2010, which predates Complainant’s mark. Respondent has never shown any intention of selling the disputed domain name.

FINDINGS

1. The disputed domain name was registered on September 25, 2003.

2. Respondent acquired the disputed domain name on November 11, 2010, which predates Complainant’s mark.

3. Complainant has established rights to the LUKKA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 5,979,885, registered Feb. 4, 2020) and its subsequent recordation of the change of name from Libra Services, Inc. to Lukka, Inc. with the USPTO on March 5, 2020.

4. Respondent has rights and legitimate interest in the <lukka.com> domain name because the domain name reflects Respondent’s business name.

5. Respondent did not register the disputed domain name in bad faith.

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 asserts rights in the LUKKA mark based upon registration with with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 5,979,885, registered Feb. 4, 2020) and its subsequent recordation of the change of name from Libra Services, Inc. to Lukka, Inc. with the USPTO on March 5, 2020. Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).

Next, Complainant contends that the disputed domain name is identical and confusingly similar to Complainant’s mark. The Panel notes that the disputed domain name adds the “.com” gTLD. The addition of a gTLD to a complainant’s mark in forming a disputed domain name is insufficient to distinguish the mark from the disputed domain name per Policy ¶ 4(a)(i). 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). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s LUKKA 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 contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name.

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 it has rights and legitimate interest in the disputed domain name because the domain name reflects Respondent’s business name. Respondent intends to use the disputed domain name as the basis of a new social media platform, and has spent significant resources to develop and perfect it.

Respondent has provided the Panel with a certificate of business registration under the name of Lukka Co., Ltd. (corporate Reg. No. 110111-4469593, established on November 11, 2010) where Respondent is indicated as the representative of the company as well as a copy of each of an outsourcing contract for developing a mobile game dated August 6, 2018 and a receipt for the payment for the advertisement to prove that Respondent intends to use the disputed domain name as the basis of a new social media platform, and has spent significant resources to develop and perfect it.

As the Panel finds that Respondent has successfully rebutted the prima facie case against it, it concludes that Respondent has rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Because Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding, Complainant’s failure to prove the element listed in Paragraph 4(a)(ii) means that the Panel need not consider whether Complainant has proven the remaining element contained in Paragraph 4(a)(iii) (i.e., whether the domain name has been registered and is being used in bad faith). However, the Panel has decided to consider whether Complainant has proven the remaining element contained in Paragraph 4(a)(iii).

Complainant argues that Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent may be planning to sell the disputed domain name for profit and has no intention of using the disputed domain name in the United States. Furthermore, Complainant should be allowed to have a domain name that reflects its trademark.

Respondent rebuts that he did not register or use the disputed domain name in bad faith. Respondent acquired the disputed domain name on November 11, 2010, which predates Complainant’s mark. Respondent has never shown any intention of selling the disputed domain name.

The Panel notes that the disputed domain name predates Complainant’s first claimed rights in the LUKKA mark by 17 years. Respondent acquired the disputed domain name on November 11, 2010, which predates Complainant’s mark by roughly nine years. Therefore, the Panel finds that Respondent did not register the disputed domain name in bad faith. Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the disputed domain name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

Furthermore, as the Panel has concluded that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), it also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

The Panel further finds that Respondent has not registered or used the disputed domain name in bad faith as it notes that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

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

Ho Hyun Nahm, Esq., Panelist

Dated: June 8, 2021

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