DECISION

Qwest Communications International Inc. v. Yoongoo Cho d/b/a SebinTech Inc

Claim Number:  FA0402000237516

PARTIES

Complainant is Qwest Communications International Inc. (“Complainant”), represented by Anthony J. Malutta, of Townsend and Townsend and Crew, LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111.  Respondent is Yoongoo Cho d/b/a SebinTech Inc (“Respondent”), 148-26, Yonghyundong Namgu, Inchon, SE 121160, Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ridethelight.com>, registered with Network Solutions, Inc.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 17, 2004; the Forum received a hard copy of the Complaint on February 18, 2004.

On Feburary 19, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ridethelight.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent 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@ridethelight.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 24, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <ridethelight.com> domain name is identical to Complainant’s RIDE THE LIGHT mark.

2. Respondent does not have any rights or legitimate interests in the <ridethelight.com> domain name.

3. Respondent registered and used the <ridethelight.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Qwest Communications International, Inc., is an international telecommunications company with a substantial worldwide presence.  It has registered various RIDE THE LIGHT trademarks with the U.S. Patent and Trademark Office (“USPTO”) (e.g. Reg. Nos. 2,777,897, 2,216,984, 2,576,129, and 2,289,880, registered on October 29, 2003, January 12, 1999, June 4, 2002, and November 2, 1999, respectively).  It has also registered the same mark in Korea (e.g. Reg, No. 5,394 registered on May 15, 2002, the Complaint has discrepancies concerning the Reg. No and Reg. Date of the other two). 

Respondent, Yoongoo Cho, registered the <ridethelight.com> domain name on November 15, 2003.  It is using the <ridethelight.com> domain name to offer pornography. 

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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 has owned the registration for the RIDE THE LIGHT mark since, at least, January 1999.  Its registration of the mark connotes that it has rights in the RIDE THE LIGHT mark.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

Respondent’s <ridethelight.com> domain name is identical to Complainant’s mark.  The only difference is the omission of the spaces between the words, which does not significantly distinguish the domain name from the mark.  See Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks.

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  The Panel may accept all reasonable assertions by Complainant as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence.

Respondent is using the <ridethelight.com> domain name to offer pornography.  Respondent’s use of a domain name identical to Complainant’s mark to offer pornography is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use, pursuant to Policy ¶ 4(c)(iii).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark; see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”.

There is nothing in the record, including the WHOIS domain name registration information, that indicates that Respondent is otherwise known by the disputed domain name.  The Panel infers that Respondent is not commonly known by the domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail".

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is offering pornographic material, presumably for commercial gain, at a domain name that incorporates Complainant’s mark in its entirety.  Therefore, the Panel finds that Respondent is intentionally trying to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source of the domain name, pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website.

Respondent is also appropriating Complainant’s mark to peddle pornography.  The Panel finds that this is bad faith registration and use under 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith; see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <ridethelight.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  April 5, 2004

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