Generic Top Level Domain Name (gTLD) Decisions

The Complainant is ActivCard, Inc., Fremont, CA., USA ("Complainant") represented by Philip T. Besirof, of Morrison & Foerster, LLP. The Respondent is Han-chul Chung, Seoul Korea ("Respondent").

The domain name at issue is "activecard.com", which is registered with Hangang Systems, Inc.

Moon Sung Lee

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 18, 2000; the Forum received a hard copy of the Complaint on October 31, 2000.

On October 27, 2000, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name, "activecard.com," is registered with Hangang Systems, Inc. and that Respondent is the current registrant of the name. Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 9, 2000, Respondent was sent a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@lawcheck.com by e-mail; the Commencement Notification set a deadline of November 30, 2000 until which time Respondent would be required to file a Response to the Complaint. At this time, the procedure was commenced in the English language.

On October 29, 2000, Respondent sent an e-mail objecting to the proceedings being conducted in English, but did not file a formal Response to the Complaint by the October 30, 2000 deadline.

On December 6, 2000, in response to Complainant’s request for a one (1) member panel, the court determined that Honorable Carolyn Marks Johnson be the sole panelist (the "Panelist").

On December 20, 2000, the Panelist: (i) determined that, in consideration of Respondent’s request, and in accordance with ICANN Policy Article 11, the proceedings would be conducted in Korean and English, (ii) ordered Complainant to submit the Complaint in Korean, (iii) ordered Respondent to submit the Response in English, and (iv) then determined that a new panel should be determined to conduct the proceedings in both Korean and English.

On January 26, 2001, upon Complainant’s submission of a new Complaint in Korean in accordance with the Panelist’s decision, new proceedings were commenced.

However, Respondent did not submit a Response by the February 16, 2001 deadline.

On February 23, 2001, in accordance with the above ruling on December 20, 2000, the court determined Moon-sung Lee as the new Panelist.

On March 2, 2001, after the deadline for its Response, Respondent submitted an additional Response, but unaccompanied by the required fee. However, an additional Response must be submitted within five (5) business days of the Response submission deadline, accompanied by the required fee, in accordance with Supplemental Rule Article 7. Therefore, because the additional Response was not submitted in accordance with the relevant rule, thus, not a valid Response, the current decision did not consider the Response in making its determination.

Complainant requests that the domain name be transferred from Respondent to Complainant.

As a company duly established under the laws of France, Complainant is engaged in the software and related hardware products business, and such products are used to facilitate internet-related digital signaturing, authentication, and electronic certification.

ActivCard has actively and continuously used the "ActivCard" name and mark from May of 1995.

In March of 1996, ActivCard registered the "ActivCard" mark as a trademark with the U.S. Patent and Trademark Office ("PTO"), and PTO thereafter issued registration number 2,050,650 for the ActivCard trademark on April 8, 1997.

ActivCard registered "activcard.com" as its domain name in November of 1995, and has thereafter continued to operate its business through its activcard.com website.

On April 10, 2000, Kyu-sang Kyung ("KSK") registered "activecard.com" as a domain name.

KSK has registered tens of other domain names, and among such domain names that KSK has registered, such as SamsungGlobalNet.com, there are many domain names, which have similar spellings with names of well-known companies.

ActivCard has discussed the issue of obtaining the "activecard.com" domain name from KSK, and KSK has offered the domain name to ActivCard in exchange for US$15,000 to US$20,000.

Upon sending a cease and desist order to KSK on September 11, 2000, ActivCard requested that KSK transfer the "activecard.com" domain name to ActivCard.

Within ten (10) days of ActivCard sending the cease and desist order to KSK, KSK transferred the "activecard.com" domain name to an individual named Seung-pil Nam ("SPN") on September 21, 2000.

Similar to KSK, SPN also has registered domain names with spellings similar to the names of well-known companies; examples of domain names registered by SPN include samsunginternetcamp.com and samsungcshop.com.

Shortly after ActivCard’s filing a Complaint against SPN, SPN transferred the rights to the "activecard.com" domain name to the current Respondent.

Respondent, like the previous two (2) registrants, KSK and SPN, does not maintain any contents in the website, "activecard.com."

(1) Complainant claims that the domain name at issue is confusingly similar to the mark registered by Complainant as "ActivCard."

(2) Moreover, Complainant contends that, based on the following reasons, Respondent should be deemed to have no right or legitimate interest in the domain name "activecard.com.":

(3) Further, Complainant contends that it should be deemed that Respondent had registered the domain name at issue in bad faith based on the following reasons:

Respondent has not submitted any valid Response despite the order for such submission by December 20, 2000.

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three (3) elements to obtain an order that a domain name should be cancelled or transferred:

(3) the domain name has been registered and is being used in bad faith.

Although the domain "activecard.com" is not identical with Complainant’s registered mark, "ActivCard," the domain name is different by only one letter, and is pronounced almost identically to the registered mark. Thus, the domain name and registered mark have the potential for causing considerable confusion.

Thus, the domain name, "activecard.com," satisfies this element as it appears confusingly similar to Complainant’s registered mark, "ActivCard.com."

Because Respondent is not commonly known to the general public by the domain name, "activecard.com," does not use the domain name in connection with a bona fide offering of goods or services, is not making a legitimate non-commercial or fair use of the domain name, such evidence point to the conclusion that Respondent has no rights or legitimate interests in the domain name at issue.

Therefore, the above reasons require the conclusion that Respondent has no legitimate rights or interest in the domain name, "activecard.com."

Paragraph 4(b) of the Policy illustrates four (4) circumstances, which may be evidence that registration and use of a domain name is in bad faith:

One of the previous registrant’s (i.e., KSK) attempt to transfer the domain name to ActivCard for US$15,000 to US$20,000 should be deemed as evidence of (1) above.

Further, because the previous registrants to the domain name, KSK and SPN, both hold other domain name registrations, which are either identical or similar to well-known trade names or trademarks of other companies (with such domain names having the likelihood of disrupting the legitimate businesses of such well-known companies), KSK and SPN’s other registrations should be deemed as evidence of (1) and (2) above.

Also, KSK had transferred the domain name at issue to SPN upon receipt of a cease and desist order initiated by ActivCard; SPN then transferred the same domain name to Respondent upon commencement of the current proceeding. Such evidence shows bad faith intent to avoid these proceedings. Further, the element of bad faith should be determined by examining the intent of the previous registrants, i.e., KSK and SPN.

Therefore, the above reasons require the conclusion that Respondent had registered and used the domain name at issue in these proceedings in bad faith.