ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: BIOFIELD CORP.
Respondent: JAEHYUN KWON
Case Number: AF-0102
Contested Domain Name: biofield.com
Panel Member: M. Scott Donahey
 

 

1. The Parties

The complainant is Biofield Corp., a corporation headquartered in the City of Alpharetta, State of Georgia, the United States of America. The respondent is Jaehyun Kwon, an individual resident in Seoul, Korea.

2. The Domain Name(s) and Registrar(s)

The domain name at issue is , which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

3. Procedural History

A complaint was submitted electronically to eResolution on January 30, 2000. The hard copy of the complaint form was received on February 4, 2000, together with the required payment of fees. No annexes were submitted in support of the complaint.

The eResolution Clerk:

(1) confirmed the identity of the registrar for the contested domain name as Network Solutions, Inc.;

(2) checked the registrar's Whois database and confirmed all the required contact information for respondent;

(3) checked to see if the contested domain name resolved to an active web page and found that it did not; and

(4) verified that the complaint complied with the requirements of the Rules.

On February 7, 2000, an Official Notification of Arbitration and a copy of the complaint was transmitted to the respondent in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), Rule 2(a), setting a deadline for a response to be filed of February 27, 2000. Accordingly, February 7, 2000 is the commencement date of the proceedings pursuant to Uniform Rules, Rule 4(a). Further communications from and appearance by the respondent confirms that the Official Notification of Arbitration was received by respondent.

On February 7, 2000, the Clerk of eResolution notified the complainant, the respondent, the concerned registrar, and ICANN of the date of commencement of the proceedings.

On February 8, 2000, the Clerk's office received an email from respondent stating that his English skills were too poor for him to understand the complaint and that, in any case, the .rtf format sent to him was not legible.

On February 9, 2000, the Clerk's office replied to the respondent referring him to Uniform Rules, Rule 11 regarding the language of the proceedings and sent a .txt format of the complaint form and required cover sheet. The Clerk's office also requested respondent to supply a fax number so that a copy of the complaint form and required cover sheet could be sent via facsimile.

On February 10, 2000, the Clerk's office received an email asking that communications be directed to another email address.

On February 10, 2000, the Clerk's office received an email message stating that the address postmaster@biofield.com was not valid.

On February 10, 2000, the Clerk's office received an email from respondent stating that he had received the hard copy via the mail and requesting that all further communications be done in Korean.

On February 13, 2000, the Clerk's office sent a copy of the complaint and required cover sheet to the new email address supplied by the respondent.

On February 14, 2000, the Clerk's office sent an email to respondent stating that all necessary efforts would be made to try and translate the required cover sheet from English to Korean.

On February 14, 2000, the Clerk's office received an email from the respondent or his representative, in perfect English, containing a response to the complaint. Given that fact, efforts to translate the cover sheet in Korean were suspended.

On February 16, 2000, the Clerk's office provided respondent with a password and user name to allow him to file a response through the eResolution web site.

On March 2, 2000, the Clerk's office contacted Mr. M. Scott Donahey, Esq. and requested that he act as panelist in this case.

On March 4, 2000, Mr. M. Scott Donahey, Esq., agreed to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On March 6, 2000, the Clerk's office forwarded a user name and a password to M. Scott Donahey, Esq., allowing him to access the complaint form, the response form, and the evidence through eResolution's Automated Docket Management System.

On March 6, 2000, a hard copy of the file was sent to Mr. Donahey.

On March 6, 2000, the parties, the Registrar and ICANN were notified that Mr. Donahey had been appointed and that a decision was to be, save in exceptional circumstances, handed down on March 16, 2000.

On March 9, 2000, after having reviewed the file, the Panel sent the following directive to eResolution:

The Panel has reviewed the file in the above referenced matter and has determined that, as an exceptional matter, this case requires further statements and documents and a telephonic hearing. Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), Rules 12 and 13.

The reasons for this determination are as follows:

1. Complainant filed no annexes in support of the complaint. Uniform Rules, Rule 3(b)(xv);

2. Respondent's primary language is Korean, and there are indications in the file that language difficulties may have caused the response to have been filed late and out of compliance with the rules in that it did not contain the requisite annexes or certification.

3. Although the registration is in the English language, and Uniform Rules, Rule 11(a) and this Panel determines that English is the language of the proceedings, the Panel believes that respondent may be at a disadvantage absent a hearing at which an interpreter could be present.

Accordingly, the Panel orders as follows:

1. That complainant be notified that complainant has until Monday, March 20, 2000, to submit annexes in compliance with Uniform Rules, Rule 3(b)(xv);

2. That respondent be notified that respondent has until Monday, March 20, 2000 to submit a response meeting the requirements of Uniform Rules, Rule 5, and more specifically having the necessary certification required by Uniform Rules, Rule 5(b)(viii) and the annexes required by Uniform Rules, Rule 5(b)(ix). The Panel requests that the Clerk transmit a copy of Uniform Rules, Rule 5 to the respondent with subparagraphs (b)(viii) and (b)(ix) highlighted.

3. That arrangements be made for a telephonic hearing with the parties and the panel on Tuesday, March 21, 2000 at a time mutually convenient to the parties. The parties should notify the Clerk as soon as possible of convenient times on that date. The panel will reserve the entire day. The Provider will arrange for a Korean/English interpreter to participate in the telephonic hearing to insure that the respondent is not disadvantaged.

On March 15, 2000, the above directive was transmitted by eResolution to the parties.

On March 15, 2000, an email in the Korean language which was sent by respondent to the complainant was translated into English by a certified, official translator retained by eResolution. The translation and certification are as follows:

Sir,
Thank you for your mail.
If you think it is necessary to conduct the business of Biofield Corp., you should decide on the value of a Domain Name. Please, inform us first of the price.
If the price you propose us is deemed appropriate, we are willing to negotiate.

Jaehyun Kwon.

I, Choon-Hee Tchoi, official translator, certify that the above translation is true and confirm with the original.

Signed /s/

On March 16, 2000, the complainant forwarded to eResolution a copy of the trademark registration page for the registration of the mark "biofield" with the United States Patent and Trademark Office.

On March 16, 2000, the complainant forwarded to eResolution an email in the English language which complainant had received from respondent. The email reads:

we found that the conditions you offered do not satisfy us.
we currently received a new offer regarding this domain name (biofield. com)

we think you should consider a proper compensation for our potential inconvenience as our project is almost completed.

we could access information about your company through the internet. Understanding a future advantage you can gain by using this domain name (biofield.com)
we suggest you make a more realistic offer about its price.

Thank you.

Jaehyun

Respondent failed to file a formal response or annexes within the extended time.

At 5:30 p.m. P.S.T. on March 21, 2000, a telephonic hearing was convened. Present on behalf of complainant was Neil Willoughby, complainant's designated representative, and Dr. Raymond Long, a member of complainant's Board of Directors. Respondent was present. Mrs. Choon Tchoi, a certified Korean/English translator was present. A representative from the Clerk's office and the Panel were also present. All statements were translated as they were made. Complainant and respondent stated their positions and responded to questions from the panel.

4. Factual Background

The complainant has provided evidence of the registration of the "biofield" mark, which mark was registered with the United States Patent and Trademark Office on July 29, 1997, for a period of twenty years. The registration covers a medical apparatus for sensing and analyzing electrical biopotential and biopotential sensors.

Complainant, which is involved in the research and development of cancer treatment, was the original registrant of the domain name at issue and had used it to establish a web site which was operational for several years. When the complainant recently underwent a restructuring, the registration lapsed.

During the period of lapse the domain name was registered by respondent Jaehyun Kwon on November 22, 1999. Respondent has not established a web site through use of the domain name at issue, nor has the respondent otherwise made use of the domain name, such as in an email address.

When complainant learned of this registration, complainant contacted respondent. Respondent stated that he had registered the name for use by a possible non-profit Korean organic farming association. Thereafter, complainant registered . Complainant offered to acquire from respondent the domain name at issue for a payment of $1,000, plus the transfer to respondent of the domain name .

Complainant thereafter filed its complaint with eResolution.

At the telephonic hearing, respondent confirmed that he had sent the emails set out, supra. Respondent alleged that he had registered the domain name for use in conjunction with a business-to-consumer enterprise which he intended to form. Respondent stated that since complainant was a for-profit enterprise, it was reasonable for it to compensate respondent, so that respondent also profited. Respondent stated that U.S.$1,000 was not even equal to one month's salary. Complainant repeated the allegations in its complaint and alleged that emails from respondent had asserted that respondent had conducted research on complainant's business.

5. Parties' Contentions

A. Complainant

Complainant contends that respondent has registered as a domain name a mark which is identical to the trademark registered and used by complainant, that respondent has no rights or legitimate interests in respect of the domain name at issue, and that respondent has registered and is using the domain name in bad faith.

B. Respondent

In informal emails, respondent has denied that he knew of complainant or its trademark at the time of registration and denies that respondent has registered or is using the domain name at issue in bad faith.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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 directs that the complainant must prove each of the following:

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

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

The domain name at issue, , is identical or confusingly similar to complainant's trademark. Respondent has demonstrated no legitimate rights or interests in the domain name at issue.

The final issue is whether the domain name has been registered and is being used in bad faith.

Paragraph 4,b,i of the Policy, provides that "the following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith: . . . circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name." (Emphasis added.)

Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "registered" and "used" the domain name in bad faith as defined in the Policy. Nabisco Brands Co. v. The Patron Group, Inc., D2000-0032.

The Panel is grateful to eResolution for its willingness to expend amounts no doubt well in excess of the fees to retain translators in this case in order to insure that the respondent had a fair opportunity to be heard. The Panel believes that Uniform Rules, Rule 10(b) is paramount and that its observance is essential to the public acceptance of the Policy and the process.

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the trademark and service mark in which the complainant has rights, and that the respondent has no rights or legitimate interests in respect of the domain name, and that the respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name be transferred to the complainant.

Dated: March 23, 2000

 

(s) M. Scott Donahey

Presiding Panelist