1. Parties and Contested Domain Name
The parties are QuestAir Technology Inc., a Canadian corporation, and Mr. Bohyun Lee, a person resident in Korea.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 31, 2001. The hardcopy of the Complaint Form and annexes were received on September 06, 2001. Payment was received on September 17, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Netpia.com, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on September 18 and September 19, 2001. The requested information was never received.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 21, 2001. This date is the official commencement date of the administrative proceeding.
All the emails were delivered. All the fax failed.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent.
On October 10, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on October 14, 2001.
On October 15, 2001, the Clerk's Office contacted Richard Hill, and requested that he acts as panelist in this case.
On October 16, 2001, Richard Hill, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 17, 2001, the Clerk's Office forwarded a user name and a password to Richard Hill, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 17, 2001, the parties were notified that Richard Hill had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 17, 2001.
On October 17, 2001, the Panel requested the parties to provide by October 26, 2001 translations in English of the web pages at www.questair.com and indicated that it would accept additional pleadings filed in conjunction with the translations. Neither party provided the requested translations.
On October 26, 2001, the Complainant submitted a reply to the Respondent's Response, stating that at the end of July, 2001, the web site operated by the Respondent at www.questair.com appeared to contain "adult" content because it contained a photograph of a clothed woman in a provocative position accompanied by writing in Korean characters.
3. Factual Background
On June 1, 2000, the Complainant applied for Canadian and US trademarks for QUESTAIR, a name it had been using in commerce since October 1999. The trademark applications are for a design incorporating the word QUESTAIR, not for the word QUESTAIR itself.
On August 10, 2000, the Respondent registered the contested domain name <questair.com>.
On August 1, 2001, the Complainant sent an E-Mail to the Repondent, stating:
Are you planning to renew the registration [of questair.com] or will it be available for purchase upon expiry?
On August 3, 2001, the Respondent replied to the Complainant's E-Mail of August 1, stating that he had plans to use the disputed domain name but that he would be willing to consider a sale for a figure in the ballpark of US dollars 15'000.
On August 31, 2001, the Complainant initiated these proceedings.
On September 14, 2001, the Complainant sent an E-Mail to the Respondent offering a final price of Canadian dollars 2000 for the disputed domain name and stating that it would continue the proceedings initiated on August 31, 2001 unless the Respondent agreed to accept his offer by September 19, 2002.
As of October 17, 2001, the site www.questair.com contained several pages in Korean, providing information and news articles on Korea.
4. Parties' Contentions
The Complainant contends that the disputed domain name <questair.com> is identical or confusingly similar to its trademark QUESTAIR, that the Respondent has no legitimate rights in the contested domain name, and that the Respondent registered and is using the contested domain name in bad faith.
Specifically, the Complainant alleges that QuestAir has not licensed or otherwise permitted the Respondent to use its mark and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant
The Registrant is not using the Domain Name in connection with a bona fide offering of good or services and currently the Domain Name is not being used as an active address. Instead, one encounters a "Coming Soon ..." message at the web site.
Furthermore, the Complainant alleges that Respondent's offer to sell the disputed domain name for US dollars 15'000 is evidence of bad faith use and that "if the domain name is purchased and used by a third party it would create a likelihood of confusion with the Complainant's trademark".
The Respondent alleges that the domain name is phonetic rendition of Korean words pronounced "kyoo-stair", meaning a "signal for action" and "stairway" and that he never heard of the QuestAir company. Respondent also alleges that the trademark is made of two common words "quest" and "air" which are legitimately used by many other businesses in their names and/or trademarks.
Respondent further alleges that he always planned to use the domain name <questair.com> to build a site to provide businessmen with useful information on Korea; that he had not actually built the site when he received the first E-Mail from the Complainant; that we was willing to sell the site to a reputable business, but only for a sum in excess of registration costs; and that he proceeded actually to build the site once these proceedings were initiated.
5. Discussion and Findings
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 respondent has no legitimate interests in respect of the domain name; and,
3. the domain name has been registered and used in bad faith.
Similarity between the trademark and the domain name
The Complainant's trademark consists of a stylized rendition of the words QUEST and AIR. The words themselves only constitute part of the mark, not the mark itself. The trademark is for the combination of the design and the words, not just the words themselves.
It is not obvious to this panel that the mere letters "questair" are confusingly similar to a trademark that consists of a stylized rendering of those letters, where the design of the letters constitutes an integral part of the trademark. The complainant does not present any evidence that would prove such confusing similarity. A similar finding was made in e-Resolution case AF-09283 <nkf.com>.
The panel holds that the complainant has failed to satisfy its burden of proof on this point.
Lack of rights or legitimate interests in the contested domain name
According to paragraph 4 (c)(i) of the Policy, the Respondent can demonstrate rights or legitimate interests in the contested domain name if:
before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services
Although this Panel does not speak Korean, use of the translation feature of the Altavista search engine shows that the pages in Korean at www.questair.com at the end of October 2001 appeared to contain information of interest to businessmen, as claimed by the Respondent. This would of course be bona fide offering of services. The Complainant alleges that in July 2001 the site "contained a photograph of a clothed woman in a provocative position accompanied by writing in Korean characters". This could be a description of many legitimate advertisements and hence tends to reinforce the Respondent's contention that he is operating a site containing information of interest to businessmen.
The Complainant did not reply to the Panel's request to provide a translation of the web pages in question and thus did not attempt to refute the Respondent's submission that these pages constitute a bona fide offering of services. In accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from any failure to comply with the request it made under Paragraph 12 of the Rules that the parties provide translations of the web pages in question.
The burden of proof in these proceedings is on the Complainant. By not providing translations, the Complainant has failed to prove that the web pages in question do not contain information of interest to businessmen.
Although the Respondent has not presented direct evidence of preparations to create those web pages before the notice of the dispute, this Panel does not believe that it is likely that the Respondent could have created the web pages after receiving notice of the dispute unless it had made preparations well before notice of the dispute.
That is, this Panel holds that the very fact that the Respondent's rather complex web site was created very rapidly, after notice of the dispute, is a demonstration that preparations had been made, prior to the notice of the dispute, to use the disputed domain name for a bona fide offering.
Thus the complaint fails on this ground also.
Bad faith registration and use of the contested domain name
The Complainant alleges that the Respondent acted in bad faith because he offered to sell the contested domain name for an amount well above out of pocket costs.
But that offer was made only after the Complainant asked if the disputed domain name was for sale. Selling a domain name is not a violation of the Policy nor, on its own, evidence of bad faith behavior. It is instructive to note what the Panel said in National Arbitration Forum case FA0099088 <wilshirehomes.com>:
Considered in a vacuum, the electronic mail attached as exhibits may lead to a conclusion of bad faith on Respondent's part. However, taken in context of Respondent's legitimate real estate business in the Wilshire/Westmount neighborhood, and as stated by Respondent in the April 3, 2001 electronic mail reply to Complainants, "[t]his domain is a cash cow for our business. As I mentioned to you earlier, we have over 100 Real Estate domains directing traffic to our site[.]" (Electronic mail attached as Exhibit 13 to Complainants' Complaint). Respondent asserts in his Additional Response that among the numerous domain names directing traffic to the <theseths.com> domain are numerous domains that include neighborhood names from the City of Vaughn and/or Toronto geographic areas. In the final analysis, given the evidence surrounding the purported offer to sell <wilshirehomes.com>, the Panel is unable to find bad faith in either registration or use. The Panel has no basis to doubt Respondent's assertions and evidence that <wilshirehomes.com> was registered for the purpose of legitimate real estate services and that the offer to sell the domain for $39,000 accurately reflects the fact that the domain name directs significant, legitimate business to Respondent's website.
As in the cited case, this Panel holds that the Respondent did not act in bad faith when offering to sell the disputed domain name to the Complainant.
The Panel finds that the Respondent has failed to prove that the disputed domain name is identical or confusingly similar to its trademark; that the Respondent has proven that it has a legitimate interest in the disputed domain name; and that the Complainant has not proven that the disputed domain name was registered and used in bad faith. The complaint is dismissed.
(s) Richard Hill
October 30, 2001