SellUp.com : Nineteen year old #domain fights back at #UDRP

SellUp.com, a domain registered in 2001, was hit with a UDRP. The case was decided at the National Arbitration Forum and its Korean registrant responded.

Complainant Shilen Aminthat registered the SELLUP mark with the United States Patent and Trademark Office in 2020.

The Respondent responded in part:

The registration of the disputed domain (registered on September 21, 2001) predates the Complainant’s mark (registered on August 11, 2020) for 18 years. The date of first use (January 19, 1999) as indicated in the trademark register is not supported by objective evidence. Complainant’s trademark application for the mark ‘SELLUP’ was once rejected on October 16, 2019 due to the lack of distinctiveness by the reviewing examiner of the USPTO. The Complainant’s applied-for mark ‘SELLUP.COM’ was finally rejected on April 24, 2020 in response to its communication filed on April 15, 2020 due to insufficient evidence of acquired distinctiveness.

If this is true, then the registration of the mark SELLUP appears to be volatile and might risk cancellation, should someone contest it.

The sole panelist stated:

The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s first claimed rights in the SELLUP mark for 18 years. 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.

Final decision: Deny transfer of the domain SellUp.com to the Complainant. Respondent’s request for a finding of Reverse Domain Name Hijacking was not granted. Full details follow:

Shilen Amin v. Dong Jin Kim

Claim Number: FA2010001918372

PARTIES

Complainant is Shilen Amin (“Complainant”), New York, USA. Respondent is Dong Jin Kim (“Respondent”), Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sellup.com>, registered with Megazone Corp., dba HOSTING.KR.

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 October 26, 2020; the Forum received payment on October 26, 2020. The Complaint was received in English.

On October 27, 2020, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <sellup.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 November 3, 2020, the Forum served the Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of November 27, 2020 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@sellup.com. Also on November 3, 2020, the Korean language 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 Response was received after the deadline to file a response, determined to be complete on November 28, 2020.

On December 2, 2020, 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

A. 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 is a domain name investor and holds many domain names which are primarily parked at multiple Non-Korean Registrar(s) where the primary language is English. In particular, the disputed domain was still kept and parked at Godaddy.com, LLC for many years until its recent transfer to a Korean Registrar which further demonstrates Respondent’s familiarity with the English language. Therefore, Respondent is capable of understanding English.

Respondent rebuts:

(i) It was not possible to delve into and analyze the Complaint drafted and filed by Complainant and the evidences in English; (ii) not only is Respondent unfamiliar with the use of the English language as a person who was born in Korea and has been residing in Korea; and thus (iii) the proceedings should be in Korean.

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.

B. Deficient Response

A Response was received on November 28, 2020, after the deadline to file a response. Thus the Response is not in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). Given that the Response was only one day late, and bearing in mind the content of the Response, the Panel has decided to accept and consider the Response.

PARTIES’ CONTENTIONS

A. Complainant

i) Complainant registered the SELLUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,122,302, registered Aug. 11, 2020). The disputed domain name is identical and confusingly similar to Complainant’s mark. The disputed domain name adds the generic top-level domain (“gTLD”) “.com.”

ii) Respondent has no rights or legitimate interests in disputed domain name. Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given permission to Respondent to use the SELLUP mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, or legitimate noncommercial or fair use. Respondent failed to make demonstrable preparations to use the disputed domain name for nearly 20 years.

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent displays a pattern of targeting trademark holders through domain name registration and holding. Respondent registered the disputed domain name for the primary purpose of disrupting the business of a competitor. Respondent intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. Respondent failed to respond to Complainant’s cease and desist letter.

B. Respondent

i) The registration of the disputed domain (registered on September 21, 2001) predates the Complainant’s mark (registered on August 11, 2020) for 18 years. The date of first use (January 19, 1999) as indicated in the trademark register is not supported by objective evidence. Complainant’s trademark application for the mark ‘SELLUP’ was once rejected on October 16, 2019 due to the lack of distinctiveness by the reviewing examiner of the USPTO. The Complainant’s applied-for mark ‘SELLUP.COM’ was finally rejected on April 24, 2020 in response to its communication filed on April 15, 2020 due to insufficient evidence of acquired distinctiveness.

ii) The word ‘sell up’ is a generic and descriptive term. Therefore, Respondent has rights to or legitimate interests in the disputed domain name.

iii) Complainant failed to prove Respondent’s bad faith registration and use of the disputed domain name. As the disputed domain name predates the registration of Complainant’s mark, Respondent did not register the disputed domain name in bad faith. Furthermore, Respondent was not aware of Complainant or its mark at the time of registration of the disputed domain name. Complainant’s mark was neither known nor famous at the time of registration of the disputed domain name. The term ‘sell up’ is a generic name and is open to the public use. Respondent never operated any competing business. Therefore, Respondent did not use the disputed domain name in bad faith. There are a good number of UDRP precedents which did not recognize a passive holding of a domain name as bad faith use. One of the factors in determining the existence of bad faith use in case of a passive holding is the notoriety of the mark concerned. However, Complainant’s mark is not a well-known mark.

iv) Complainant has engaged in the reverse domain name hijacking. Complainant filed the trademark application for the mark ‘SELLUP.COM’ which is identical with the disputed domain name. This trademark application was finally rejected on April 24, 2020 in response to its communication filed on April 15, 2020 due to insufficient evidence of acquired distinctiveness.

FINDINGS

1. The disputed domain name was registered on September 21, 2001.

2. Complainant has established rights to the SELLUP mark through its registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 6,122,302, registered Aug. 11, 2020).

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

4. 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 asserts rights in the SELLUP mark based upon registration with the USPTO (e.g. Reg. No. 6,122,302, registered Aug. 11, 2020). Registration of a mark with a trademark authority such as the USPTO sufficiently establishes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). 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 SELLUP mark per Policy ¶ 4(a)(i).

Registration and Use in Bad Faith

The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s first claimed rights in the SELLUP mark for 18 years. 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. Complainant failed to 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 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.”).

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)(iii) means that the Panel need not consider whether Complainant has proven the remaining element contained in Paragraph 4(a)(ii) (i.e., whether Respondent has no rights or legitimate interests in the disputed domain name).

Reverse Domain Name Hijacking

Respondent claims that Complainant has engaged in reverse domain name hijacking because Complainant filed the trademark application for the mark ‘SELLUP.COM’ which is identical with the disputed domain name.

Under Paragraph 1 of the Rules, “Reverse Domain Name Hijacking” (RDNH) is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

As the Panel finds that Complainant has prevailed on the “identical/confusingly similar” prong of the Policy ¶ 4(a)(i), Complainant does not seem to have been motivated by bad faith, but rather by excessive and unjustified optimism about a case that was always dubious. Therefore, the Panel does not make a finding of Reverse Domain Name Hijacking. See 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).

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 <sellup.com> domain name REMAIN WITH Respondent.

Ho Hyun Nahm, Esq., Panelist

Dated: December 10, 2020

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