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#PureRed .com : #UDRP against 20 year old #domain gets no #RDNH finding

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UDRP has been denied.

The domain PureRed.com was registered in 1998, and its Japanese registrant was hit with a UDRP at the National Arbitration Forum.

The Complainant, GAPRC Holding, claimed rights to the PURERED mark:

The petitioner has used the PURERED mark for commercial purposes for at least 12 years (at least from June 1, 2005) in connection with various services including website and service and communication services. In addition, the petitioner is the owner of a US trademark registration against the PURERED mark as US registration number 4, 680, 458 filed on 20th August 2012 and registered on 3rd February 2015. The domain name <purered.com> is similar enough to match or confuse the trademark or service mark to which the petitioner is entitled

Not so fast, said the Respondent Tomihiko Yoshida, who has been using the domain for email during the past 20 years:

Since the respondent uses purered.com as the domain of everlasting e-mail addresses, he has never built a website and is not interested. I have been using yoshida @ purered.com for about 20 years and will continue to use it from now on.

The sole panelist pointed out that the domain’s registration predates the Complainant’s trademark and first use, ordering the domain to remain with the Respondent.

This, would have been a classic case of Reverse Domain Name Hijacking, however that finding wasn’t delivered.

Full details of the decision on PureRed.com follows, translated from Japanese:

National Arbitration Association
Award

GAPRC HOLDING CORP. V. Tomihiko Yoshida

Application number : FA 1807001795875

A party

Complainant in the US GAPRC HOLDING (” Petitioner “) , The applicant ‘s agent is Fritz L. Schweitzer III . The respondent is Tomihiko Yoshida (” respondent “) in Japan.

Registration authority and domain name subject to litigation

The domain name of the dispute is <purered.com>, which is registered in Japan Registry Service Co. , Ltd. (JPRS ) .

panel

The signed party prove that there is no known contradiction when each person engages as a panelist of this case, personally and fairly, and as far as each person can know.

Panelists: Ho Hyun Nahm, Esq.

Procedure passage

The petitioner electronically submitted the petition on July 9, 2018 to the National Arbitration Association.

July 11 , 2018, Japan Registry Service Co. , Ltd. (JPRS ) , by e-mail to the Arbitration Association of America < purered.com > Domain name was registered in Nippon Registry Service Co., Ltd. (JPRS ) Co., Ltd., and confirmed that the respondent is the present registrant of the domain name. Japan Registry Service Co., Ltd. (JPRS ) , the respondent is constrained by the Japan Registry Service (JPRS ) registration agreement, and therefore the dispute concerning the domain name initiated by a third party is applied to ICANN ‘s Unified Domain Name Dispute Resolution Policy In order to solve the problem.

On 15th August 2018 , the Association delivered all appendices, including written notices and written notices of the petition, to the respondent that all registered companies and respondents’ registration list To send to the postmaster @ purered.com a reply to the written request by e-mail by September 4 , 2018 to the persons mentioned as technology, administration, accounting personnel, and postmaster @ purered.com It shall be instructed. Also on August 15 , 2018 , notice of written notice of the written e-mail address of the reply letter and the date of filing the written reply was posted by mail and fax to all registered in the respondent’s registration form Related companies, and all persons described as technical, administrative and accounting personnel.

An answer to this notice was received on August 30 , 2018 . This was submitted within the deadline.

Upon the request of the petitioner seeking settlement of dispute by arbitration of a single panel, the National Arbitration Association nominated Ho Hyun Nahm, Esq. As a panelist.

After examining the progress records so far, the dispute resolution panel (” Panel “) was established by the Arbitration Association of the United States of the Uniform Domain Name Dispute Resolution Policy Article 2 (a) (” Policy “) ( effective date March 1 , 2010 Day ) , and as provided in Regulation 1 , since he submitted a written notice, “I have taken all steps to deliver the notice to the respondent” . Therefore, the Panel recommends that, based on the documents to be submitted and the UDRP policy, the UDRP provision and the supplementary provisions of the National Arbitration Association, and other laws that the panel deems valid, without responding from the respondent There is a possibility of making a decision.

Request for legal remedies

The petitioner requests that the domain name be transferred from the respondent to the complainant.

Party’s argument

A. The petitioner

i) The petitioner has used the PURERED mark for commercial purposes for at least 12 years (at least from June 1, 2005) in connection with various services including website and service and communication services. In addition, the petitioner is the owner of a US trademark registration against the PURERED mark as US registration number 4, 680, 458 filed on 20th August 2012 and registered on 3rd February 2015. The domain name <purered.com> is similar enough to match or confuse the trademark or service mark to which the petitioner is entitled.

ii) The respondent has no right nor rightful interest in the domain name <purered.com>. UDRP policy 3 (b) (ix) (2); UDRP policy ¶ 4 (a) (ii). The respondent is not concerned with the petitioner and has not obtained permission from the complainant to register or use the domain name or to use the PURERED trademark. The respondent is not generally known by the domain name <purered.com> nor by any term incorporated therein, nor is it being operated as such. Both the state of the park domain and the link to the competing website, which provides websites and communication services that compete with the complainant’s services, provide goodwill of goods and services pursuant to UDRP ¶ 4 (c) (i) Nor is it regarded as a legitimate noncommercial or fair use in accordance with UDRP ¶ 4 (c) (iii).

iii) It is proved that the respondent was designated for the first time as a registrant of <purered.com> on 11th July 2018, after the petitioner submitted the first complaint. (Appendix 3, pages 3 to 5). The respondent (and / or NTTPC Communications or one of them) acquired the domain in dispute, after the complainant used the PURERED mark for commercial purpose in 2005 for commercial use, the petitioner filed May 17, 2012 Quite a while after obtaining the PURERED. NET domain to the PURERED.NET domain on August 20, 2012 and making a filing for the PURERED trademark to obtain the U.S. trademark registration number 4, 680, 458 on 20th August 2012. Use of the respondent is attempting to attract Internet users intentionally to <purered.com> due to commercial interests and fraud by creating possibilities for the complainant’s PURERED trademark Internet users to confuse , Malicious in accordance with item 4 (b) (iv) of policy. Reality recognition and / or fictitious recognition of either party’s rights to the PURERED mark are evidence of malicious registration and use of the domain name <purered.com>. Respondents also passively use malicious disputed domain names for malicious intent. < p urered.com> is the page in the state of the park domain. The landing page of <purered.com> does not provide any service, but instead is a home screen linking to the active commercial website www.nadukete.net operated by NTTPC Communications.

B. Respondent

i) The respondent acquired <purered.com> in November 1998 (see the creation date in appendix 1). Reason for acquisition: The mail address at that time uses what was provided from the Internet service provider (ISP) to be contracted, and when ISP is changed, the mail address is also changed. Because the respondent did not want to change the e-mail address, it decided to acquire the domain in order to acquire the e-mail address that can be used for the lifetime without relying on the ISP. Since the respondent’s favorite color is red and red.com has already been acquired, it was set as <purered.com> with a pure meaning ‘pure’.

ii) There are many domain acquisition / maintenance service service providers for individuals to easily acquire, maintain and manage domains. In 1998, the respondent used the ASCII store · domain desk to <purered.com> At the same time, using the mail transfer service provided by ASCII store · domain desk, we forwarded the mail arriving at yoshida @ purered.com to the email address provided by the contracting ISP. Even if you change the ISP you subscribe to, you can use yoshida @ purered.com for lifetime because you can change the setting of the mail address of the forwarding destination. In 2002, the ASCII store · domain desk business was transferred to VeriSign’s VeriSign domain service, so it used the VeriSign service as it is. There is no respondent ‘s name in WHOIS’ s Registrant of Annex 1 in 2001, and the address of the respondent at that time is stated. After that it has become only the name of the trader, but the respondent does not do anything in particular, and in August 2018, the mail of Annex 3 arrived from ‘naming and nets’, and that WHOIS was corrected It began to understand.

iii) Since the respondent uses <purered.com> as the domain of everlasting e-mail addresses, he has never built a website and is not interested. I have been using yoshida @ purered.com for about 20 years and will continue to use it from now on. I do not want to be infringed on this right. The respondent is a personal, good faithful user. According to domain history of disputed domains, the petitioner proved to be the first time registered as a registrant of <purered.com> on 11th July 2018 after the petitioner submitted the first complaint . ‘Naming it is nets’ just changed the WHOIS information to the respondent’s name. In the domain history, the domain has been registered in the name of NTTPC Communication previously, and NTTPC Communications was registered on May 23, 2014 (the last record on which a third party is displayed as a registrant) and It is shown that the domain was acquired somewhere between May 30, 2014 (the first record on which NTTPC Communications is listed as a registrant).

Fact finding

1. The petitioner is the owner of a US trademark registration as US registration number 4, 680, 458 for the PURERED mark.

2. The confirmed domain name <purered.com> was first registered on November 3, 1998.

Deliberation

Article 15 (a) of this Regulation specifies that the panel shall “ruled on a petition based on statements and documents to be submitted pursuant to policies, regulations, and other policies and laws deemed appropriate” are doing.

Article 4 (a) of this policy states that it is necessary for the petitioner to prove the following three conditions to obtain cancellation of the use of the domain name or order to be relocated .

(1) The domain name registered by the respondent has similarity that is the same as or confusing with the trademark or service mark to which the complainant has rights.

(2) The respondent has no right or legitimate interest on its domain name.

(3) The domain name is registered or used in malicious intent.

Identity and / or similarity to confuse

The petitioner asserts that it is the owner of a US trademark registration against the mark of PURERED as US registration number 4, 680, 458 filed on August 20, 2012 and registered on February 3, 2015 . This Panel judges that the PURERED trademark registration of the applicant ‘s US Patent and Trademark Office is sufficient to acknowledge that the petitioner has the right to a PURERED trademark. Reference: T-Mobile USA, Inc. dba MetroPCS v . Ryan G Foo / PPA Media Services , FA 1627542 (Forum Aug. 9, 2015) (The applicant reserves the right to HARU’s trademark through trademark registration to the US Patent and Trademark Office You are allowed to have it . )

The petitioner asserts that the domain name <purered.com> is similar in that it complies or confuses the trademark or service mark in which the petition is entitled .

Constitution of conflict domain name ‘ .com ‘ is a generic top level domain, so it does not have discrimination as a trademark , so if you exclude such discrimination-free parts , This panel judges that the conflict domain name is the same as the trademark of the complainant . See also: Retail Royalty Company and AE Direct Co LLC v. wang mo ran , FA 1654301 ( Forum Feb. 5, 2016) (“The panel admits that the respondent’s domain is the same as the complainant’s AEO trademark in accordance with the policy ¶ 4 (a) (i) . “)

Registration and use by malicious intent

The petitioner ‘s trademark right against PURERED of the complainant is that the petitioner first used the PURERED mark for commercial use as of June 1, 2005 , and filed a trademark application on August 20 , 2012 2 The right related to his / her trademark right registered on the 3rd of the US federal Patent and Trademark Office precedes acquisition of the domain name <purered.com> dated 11th July 2018 by the registrant of the conflict domain name Which will precede acquisition by NTTPC Communications in May 2014 ) . However, the panel states that the name of the respondent is registered as the registrant of the conflict domain name according to the Whois record of 2001 that the first registration date of the respondent’s conflict domain name is November 3, 1998 That is, the Whois record information submitted by the petitioner and the respondent (Exhibit 2 of the petitioner and Appendix 1 of the respondent).

Therefore, the panel states that the allegation that the petitioner ‘s claim that the claimant’ s right relating to the trademark right has priority over the registration date of the respondent ‘s conflict domain name, has no legitimate basis for it, rather the registration of the respondent’ s conflict domain name Confirm that priority is given to the first use date, filing date, registration date of the complainant’s trademark.

The Panel is the basis for registration of a trademark right that can apply for dispute settlement according to the first requirement of UDRP regardless of its registration date. If possible, registration of the dispute domain name by the respondent is related to the trademark right of the applicant In the case of preceding the right, at the time the respondent registered the conflict domain name, he was not aware of the existence of the trademark of the petitioner, so it is not recognized that the respondent registered the conflict domain name with malice . Such a panel also seems to be judged in light of UDRP’s general precedent. See also: John Ode dba ODE and ODE – Optimum Digital Enterprises v. Intership Limited , D2001-0074 (WIPO, May 1, 2001) and Digital Vision, Ltd. v. Advanced Chemill Systems , D 2001-0827 (WIPO Sep. 23, 2001 ). See also: Platterz v. Andrew Melcher , FA 1729887 ( Forum Jun. 19, 2017) (” Whatever the merits of Complainant ‘s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both and 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 ___ ___ 0 ___ ___ 0 ___ ___ 0 ___ ___ 0 registered. “).

Therefore, the panel concluded that the respondent judged that the respondent did not register the domain name of the dispute maliciously , and the petitioner could not fulfill the requirements of UDRP ¶ 4 (a) (iii) .

Since the panel does not satisfy UDRP ¶ 4 (a) (iii), the applicant judges that analysis concerning satisfaction of other requirements of UDRP is unnecessary. Reference: Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 ( Forum Sept. 20, 2002) (finding that that complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 ( Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4 (a) (i)).

Award

Since all three conditions could not be met under the UDRP policy , the panel dismisses legal remedies .

Therefore, « purered.com » I order the domain name to continue to be owned by the respondent .

Ho Hyun Nahm, Esq. , Panelist
September 7, 2018


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