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Generic Top Level Domain Name (gTLD) Decisions |
The Paris Pages v. Wooho T&C Ltd. d/b/a/
RGNAMES.COM and Youngmi Park
Claim Number: FA0204000110763
PARTIES
Complainant
is The Paris Pages, San Diego, CA,
USA (“Complainant”) represented by Norman
H. Barth. Respondents are Wooho T&C Ltd. d/b/a/ RGNAMES.COM,
Seoul, SOUTH KOREA and Youngmi Park, Beijing, CHINA (“Respondents”) .
The
domain name at issue is <paris.biz>,
registered with Wooho T&C Co. d/b/a
RGNAMES.
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.
Mr.
Peter L. Michaelson, Esq., as Panelist.
The
Complaint was brought pursuant to the Start‑up Trademark Opposition
Policy (“STOP" or "Policy”) available at http://www.neulevel.biz/ardp/docs/stop.html, which was adopted by
NeuLevel, Inc. ("NeuLevel"), as the Registry Operator, and approved
by Internet Corporation for Assigned
Names and Numbers (ICANN) on May 11, 2001,
and revised by NeuLevel on September 19, 2001; and in accordance with the
Rules for STOP
as adopted by NeuLevel and also approved by ICANN on May 11,
2001 ("STOP Rules") and as supplemented by the National Arbitration
Forum Start‑up Trademark Opposition Policy for .BIZ "STOP"
Supplemental Rules then in effect (“STOP Supplemental
Rules”).
The
Complainant has standing to file a STOP Complaint, as it timely filed the
required Intellectual Property (IP) Claim Form with
NeuLevel. As an IP Claimant, the Complainant timely
noted its intent to file a STOP Complaint against Respondent Wohoo T & C
Ltd. with NeuLevel
and with the National Arbitration Forum (the “Forum”).
The
Complainant submitted its Complaint to the Forum electronically on April 21,
2002; the Forum received a hard copy of the Complaint
on April 26, 2002.
On
May 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 4,
2002 by which Respondent Wohoo T & C Ltd could file a Response to the Complaint,
was transmitted to that
Respondent in compliance with paragraph 2(a) of the
Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on June 3, 2002.
The
Complainant’s additional submissions were received on June 6, 2002. The Respondents' additional submissions were
received June 8, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Mr. Peter L. Michaelson, Esq. as the single Panelist.
Due
to existence of extraordinary circumstances, the Panel extended the due date of
the decision one week from July 8, 2002 to July
15, 2002.
The
Complainant requests that the domain name be transferred from Respondent Wohoo
T & C Ltd. to the Complainant.
A.
Complainant
1. Identicality
The Complainant contends that the
disputed domain name <PARIS.BIZ> is identical to the term “PARIS" in which it claims
common law trademark rights.
Specifically, the
Complainant states that it has been using the domain name <PARIS.ORG>
since May of 1995. As evidenced by the
front page of its web site accessible through the <PARIS.ORG> domain
name, the Complainant contends that
it is using the term "PARIS" in
conjunction with the services of: promoting business and tourism in the area of
Paris,
France and, more generally, France in an electronic site accessible
through a global computer network; and providing information,
news, and
research articles via an online web site and global computer information
network on a wide range of business, cultural
and educational issues related to
Paris, France. The Complainant contends
that, by virtue of its continuous use of the term "PARIS" via its
<PARIS.ORG> website since
May of 1995, the Complainant has acquired
common law trademark rights in that term in at least the United States of
America.
Hence,
the Complainant concludes that the requirements of paragraph 4(a)(i) of the
Policy are satisfied.
2.
Rights and legitimate interests
The Complainant contends that the
Respondent Registrar has no rights or legitimate interests in the disputed
domain name.
Specifically,
the Complainant states that Respondent RGNAMES is an ICANN Accredited
Registrar (as indicated on icann.org/registrars/accredited-list.html
). This Respondent is properly known as
Wooho T & C Ltd., d/b/a/ RGNAMES.COM, Korea.
In
that regard, the Complainant contends that this Respondent, being a Registrar
of domain names, is not the owner or beneficiary
of a trade or service mark
identical to the term "PARIS", this Respondent does not have use of
or made any demonstrable
preparations to use the term "PARIS" in
connection with a bona fide offering of goods or services, and that this
Respondent
has not been commonly known by the term "PARIS". Further, the Complainant contends that as an
official ICANN Accredited Registrar, this Respondent is in the business to
register domain
names, not in the business of using domain names, including
domain names incorporating the term "PARIS". Hence, the Complainant believes that
"[t]he only interest Respondent may have in the domain name PARIS.BIZ is
to sell it for
profit", which does not reflect a legitimate interest in
that name.
Thus, the Complainant concludes that the
Respondent Registrar cannot demonstrate any rights or legitimate interests in
the disputed
domain name pursuant to paragraph 4(a)(ii) of the Policy.
3.
Bad faith use or registration
The Complainant contends that the
Respondent Registrar's conduct evidences bad faith registration of the disputed
domain name.
In particular, the Complainant contends that as
a domain name Registrar, RGNAMES has registered the disputed domain name
<PARIS.BIZ> for the sole purpose of selling this domain name to
interested parties either in competition with the Complainant, or to the
Complainant
himself for valuable consideration in excess of that Respondent's
documented out-of-pocket costs directly related to the domain name,
and, given
that the Complainant is in the business of selling domain names, it will likely do so here at a profit.
Thus, the Complainant concludes that this
Respondent has registered the disputed domain name in bad faith contrary to
paragraph 4(a)(iii)
of the Policy.
B.
Respondents
1.
Identicality
The
crux of the Mr. Youngmi Park's (which this Panel has now joined to this action
as an additional respondent -- henceforth referred
to as "Respondent
Park") argument, as best understood by the Panel, is that the Complainant
has no trademark rights at
all in the term "PARIS" inasmuch as that
term is primarily geographically descriptive and as such can not be accorded
common
law trademark rights.
Specifically,
Respondent Park takes the position that the term "PARIS" is a
regional, i.e. geographic, word and, as such,
may be "used by everybody
without any restrictions on the Internet", i.e. it is "open to the
public".
Hence,
in the absence of having trademark rights, the Respondent Park appears to argue
that the Complaint must fail.
2.
Rights and legitimate interests
Respondent
Park states that it has rights and legitimate interests in the disputed domain
name.
Specifically, he states that he "won
the word, Paris.Biz by the most fair method in the world of many people who
want or need
the word Paris.Biz. And as above the word, Paris is open to the
public and general on the Internet".
3.
Bad faith use or registration
First,
as to bad faith registration, Respondent Park states that he never
registered the disputed domain name primarily for the purpose of selling,
renting, or otherwise transferring the word, "PARIS",
to the
Complainant or to a competitor of the Complainant.
Second, Respondent Registrar denies the
Complainant's assertion that it, being a Registrar, is a reseller of domain
names. With respect to the present
dispute, Respondent Park specifically states that on February 5, 2001 he
entered into a contractual agreement
with the Registrar (a copy of that
agreement in English translation is submitted with the Response) through which
the Registrar agreed
to manage the disputed domain name on behalf of Mr. Park
with exception of ownership and use of the name. Respondent Park states that on March 13, 2002, he moved to
Beijing, China for business reasons (and provided a copy of salient pages
of
his Chinese visa in the Response).
Hence, Respondent Park asserts that the
Respondent Registrar is just temporarily holding the disputed domain name
simply on his behalf,
particularly since this name is the subject of
pending IP Claims.
Respondent Park states that the
Registrar, Wooho T & C Ltd d/b/a RGnames.com, uses @wooho.net or
@rgnames.com for its e-mail addresses
as seen in the RGnames.com site However, as best understood by the Panel,
Respondent Park apparently states that his registrant, administrative and
technical contact
e-mail address is
cbg567@yahoo.com and not @wooho.net or @rgnames.com.
Furthermore, Respondent Park states that
he is willing to use the disputed domain name for sales and leasing of real
estate, hence
in a different field than the Complainant's business.
In addition, Respondent Park states "[a]nyone doesn't confuse
Paris.Biz (for Business) with Paris.Org ( for Organization)." Hence, he concludes that "[t]here is no
creating a likelihood of confusion with the Complainant's mark as to the
source, sponsorship,
affiliation, or endorsement of its web site." However, Respondent Park states that
inasmuch as the disputed domain name is presently "locked", he is
unable to use it
at the moment.
Thus, Respondent Park concludes that he
has neither registered nor used the disputed domain name in bad faith.
C.
Additional Submissions
Since
the additional submissions from both the Complainant and the Respondents were
timely received by the Forum, along with the appropriate
payment, the Panel has
fully considered each of these submissions.
1.
Complainant's Additional Submission
The
Complainant essentially takes the position, contrary to Respondent Park's view,
that the Registrar, RGNames, by virtue of being
listed as the registrant in the
corresponding WHOIS record for the disputed name, is the owner of record of
that name and hence was
correctly named as a Respondent (at that time being the
sole Respondent).
Furthermore,
the Complainant states that the WHOIS record was created on March 27, 2002
which is more than six weeks after the date
of the contract between the
Registrar and Respondent Park. Given
this, the registrant submitted knowingly false registration information in the
WHOIS record which is further evidence of either
fraudulent and/or bad faith
registration.
2.
Respondents' Additional Submission
Respondent
Registrar readily acknowledges that the WHOIS record names the wrong party as
the registrant. The Registrar
acknowledges that it registered the disputed domain name on behalf of
Respondent Park but entered, by mistake, its name
rather than that of Mr. Park
as the registrant. In that regard, the Registrar stated that while the
registrant name is incorrect,
the address listed in the record is that of Mr.
Park and not of the Registrar.
Further,
the Registrar stated that it has tried on several occasions to correct the
WHOIS record to properly reflect Mr. Park as the
registrant, but has been
unable to effectuate the necessary change.
In that regard, the Registrar stated that Registry Operator, NeuLevel,
will not correct the registrant name without an appropriate
order to do so from
the Forum.
Lastly,
the Registrar contends that a city name, such as "PARIS", is not
susceptible to registration as a trademark.
A. The Complainant's
mark
The term “PARIS” has not
been registered by the Complainant as a trademark or service mark in any
jurisdiction. Hence, to the extent this
term conveys any exclusivity as a trademark or service mark, the extent of
those rights, if any and in those
jurisdictions (such as the United States)
that recognize unregistered marks, must be determined under common law.
B. The Complainant’s and the Respondents'
activities
The Complainant has been
using the domain name PARIS.ORG since May 1995. Through its web site resolvable through this name, the
Complainant has been using the term "PARIS" since May 1995 through
its web site for promoting business and tourism in the area of Paris, France
and, more generally, France; and providing information,
news, and research
articles on a wide range of business, cultural and educational issues related
to Paris, France.
On February 6, 2002,
Respondent Park, then due to his impending relocation to Beijing, China,
entered into an agreement with the Registrar
for the latter to register and
manage the disputed domain name for the former.
Subsequently, on March 27, 2002, the
Registrar registered the disputed domain name <paris.biz>. A copy of the WHOIS registration record for
this name has been provided to the Panel by the Forum. Though this record lists the Registrar as
the registrant, rather than Respondent Park, this Panel finds that this error
is inadvertent
and persists despite reasonable efforts by the Registrar to
correct the record.
On April 21, 2002, the Complainant timely
filed its STOP Complaint (ticket number HU73092117, challenge priority 1 with
the Forum to challenge the registration
of the disputed domain name, and to which a Response has been timely filed.
Since the date the name has been
registered, Respondent Park has not used the disputed domain name, though he
expressed plans on using
that name in connection with a real estate business.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the respondent has no rights or legitimate interests in
respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Substantial
commonality exists between the ICANN policies governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”)
and STOP proceedings. While numerous STOP decisions having been
rendered to date, a far larger corpus of several thousand UDRP decisions
currently exists
and which provides very useful guidance for many of the same
issues that arise under STOP. Hence,
the Panel, where appropriate and pursuant to paragraph 15(a) of the STOP Rules,
will exercise its discretion and rely on relevant
UDRP decisions as applicable
precedent here.
Ownership
and compulsory joinder
The
Panel is persuaded by the agreement provided by Mr. Park and existing between
him and the Registrar -- which the Complainant does
not dispute, that, in spite
of the Registrar's name being listed as the registrant in the WHOIS record for
the disputed domain name,
Mr. Park and not the Registrar is the true owner of
the domain name. Hence, the Panel, as
indicated below, now orders the Registry Operator, to the extent such an order
is needed, to either correct the
WHOIS record for this name or permit the
Registrar to appropriately correct that record.
Without
full and proper jurisdiction over the domain name owner, the Panel is without
authority to act. Though the Complaint
was solely filed against Respondent Registrar, the Panel, to exercise complete
jurisdiction over this dispute
and to expeditiously resolve it and in
accordance with its general powers under paragraphs 10(a)-(c) of the Rules, now
joins Mr.
Youngmi Park, being the true owner of the disputed domain name,
as a compulsory Respondent. Doing so is
consistent with paragraph 2 of the Response through which Mr. Park listed
himself and his address as the Respondent's
contact details, hence implicitly
requesting and consenting to such joinder.
Identicality/Complainant's
rights in its mark
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the complainant
asserts rights.
Numerous Panels including this one, when faced
with unregistered marks, have upheld their protectable status in the United
States
under the Policy. In that
regard, when faced with this issue, the panel in Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc. FA 95560 (Nat.
Arb. Forum, November 2, 2000) held: “ICANN dispute resolution policy is broad
in scope in that the reference to a trademark
or service mark in which the
complainant has rights means that ownership of a registered mark is not
required. Unregistered or common
law trademark or service mark rights will
suffice to support a domain name complaint under the policy”. See, e.g., Frampton v. Frampton
Enterprises, Inc. D2002‑0141 (WIPO April 17,
2002); America Online, Inc. v. Deep d/b/a
Buddy USA Inc. FA 96795 (Nat. Arb. Forum, May 14, 2001); Missing Children Minnesota v. Run Yell Tell,
Ltd. FA 95825 (Nat. Arb. Forum,
November 20, 2000); Mike
Warner 2001 v. Larson FA 95746 (Nat. Arb. Forum November 15, 2000); CMG Worldwide Inc. v. Page FA 95641
(Nat. Arb. Forum, November 8, 2000); Home
Properties v. SMSOnline FA 95639 (Nat. Arb. Forum November 2, 2000); and Bridal Rings Company v. Yemenian FA
95608 (Nat. Arb. Forum October 26, 2000).
Furthermore, the Panel in United
States Postal Service v. Consumer Info. Org. FA 95757, (Nat. Arb. Forum,
November 27, 2000) held: “The UDRP does not discriminate between registered and
unregistered marks.” In Exario Network Inc. v. THE DOMAIN NAME YOU
HAVE ENTERED IS FOR SALE AF‑0536 (eResolution, December 11, 2000),
the Panel recognized: “It is well established that a complainant need not own a
registered
trademark to invoke the policy.
It is sufficient that a complainant have rights in an unregistered
trademark.” In that regard, also see Sand Hill Wholesale of Ohio v. Hatton FA
95970 (Nat. Arb. Forum December 18, 2000), and David Taylor Cadillac/Buick Co. v. Spider Works, Ltd., FA 95832
(Nat. Arb. Forum November 30, 2000).
Similarly, see American Home
Products Corp. v. Healthy Futures D2000‑0454 (WIPO August 3, 2000); Cho Yong Pil v. ImageLand, Inc. D2000‑0229
(WIPO May 10, 2000); SeekAmerica
Networks, Inc. v. Masood D2000‑0131
(WIPO April 13, 2000); and Bennett
Coleman & Co. v. Lalwani; and
Bennett Coleman & Co. v. Long
Distance Telephone Company, D2000‑0014 and 2000‑0015, (WIPO
March 11, 2000).
However, not all unregistered terms
qualify for common law trademark protection.
Though
common law marks are sufficient to trigger the Policy, nevertheless for a
unregistered term to acquire common law trademark
status, that term, as used in
commerce by its owner, must have acquired, through its use, an appropriate
level of distinctiveness
such that the term has acquired sufficient secondary
meaning in the mind of the relevant consuming public. Geographically descriptive terms are rarely, if ever, able to
acquire secondary meaning sufficient to overcome their public recognition
as a
common name of a place or region. In
that regard, the Panel in City of Dearborn v. Mekled d/b/a ID Solutions FA
99602 (Nat. Arb. Forum November 12, 2001) in assessing, in the context of the
UDRP, whether the term “cityofdearborn” has any common
law trademark
significance to implicate that policy, quoted from Glenwood Springs Chamber
Resort Ass’n, Inc. v. College Transportation Inc. FA 98825 (Nat. Arb. Forum
Oct. 31, 2001):
“Moreover, we are persuaded by the
reasoning of the Panel in Brisbane City Council v. Warren Boulton Consulting
PTY LTD, D2001-0047 (WIPO May 7, 2001) and the Panel in City of
Salinas v. Baughn, FA 97076 (Nat. Arb. Forum June 4, 2001), with respect to
the limited applicability of the Policy to geographically descriptive
marks. As the learned Panels noted in
both City of Salinas and Brisbane City, the Interim Report of the
Second WIPO Internet Domain Name Process (the “Interim Report”), issued on
April 12, 2001, contained a
detailed discussion pertaining to “Geographical
Indications, Indications of Source and other Geographical Terms” and suggest
that
such names of geographical places are not within the Policy. While this discussion is not determinative of
our decision here, it does inform our basic belief that the names of
geographical locations,
such as the City of Salinas, have a limited capacity to
perform the function of a trademark as required by the Policy. See, e.g., Interim Report at paragraph 277
(stating that “the protection of place names within the gTLDs is a novel
concept”); see
also, Interim Report at paragraph 282 (stating that to provide
such protection, it would be necessary to revise the Policy by way
of ‘the
incorporation into it of an additional cause of action’). See Brisbane City of Salinas, supra. As further noted in Brisbane City Council
v. Warren Bottom Consulting Pty Ltd., No. D2001-0047 (WIPO May 7, 2001),
‘The assumption which underlies this discussion in the Interim Report appears
to be that, as
a general rule, place names per se are not trademarks for the
purposes of the Uniform Policy.”
As
to the present case, it is indisputable that the term “PARIS”, which forms the
second level domain of the disputed domain name,
is the name of an extremely
well-known city in France. It is
absolutely inconceivable that anyone, at first instance, hearing this term
would think of anything other than that particular
city. Accordingly, not only does this term not
have any common law significance as a trademark, it strains reason to even
contemplate that
this term could ever obtain such significance.
Therefore,
in the absence of the Complainant having any valid trademark rights in term
“PARIS”, the Complainant has failed to satisfy
paragraph 4(a)(1) of the Policy.
The
Panel's inquiry now turns under the Policy to assessing whether the Respondents
have rights and legitimate interests in the disputed
domain name. If the Respondents have such rights and
legitimate interests, then, under paragraph 4(a)(ii) of the Policy, the Panel
must dismiss
the Complaint and permit no subsequent challenges, as against the
Respondents, to the disputed domain name.
Alternatively, if the Respondents do not possess any rights or
legitimate interests, the Panel then also dismisses the Complaint but
permits
subsequent challenges to the name.
For
purposes of assessing rights or legitimate interests, the Panel will ignore the
Respondent Registrar as it clearly, by virtue
of its role as a Registrar and
not a user or owner of the disputed domain name, has no rights or legitimate
interests of its own
in that name -- nor could it ever acquire any. Hence, any determination of the existence of
rights or legitimate interests must be solely assessed based on Respondent
Park's own
actions.
Paragraph 4(c) of the Policy provides a non-exhaustive list of
criteria which, if any are present, demonstrates that a respondent
has rights
or legitimate interests in the contested domain name. These are:
(i) The respondent is
the owner or beneficiary of a trade or service mark that is identical to the
domain name;
(ii) Before any notice
to the respondent of the dispute, its 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; or
(iii) The respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even though it has
acquired no trademark or service mark
rights.
Respondent Park has offered no proof that his actions with respect
to the disputed domain name satisfy any of the criteria under paragraph
4(c) of
the Policy. In fact, in the Panel’s
mind, it is highly unlikely given his non-use of the name and his inability,
like that of the Complainant,
to ever possess valid common law trademark rights
in the term “PARIS”, that he will ever acquire any rights or legitimate
interests
in the disputed domain name.
Consequently, this
Panel concludes that the Respondents have no rights or legitimate interests in
the disputed domain name under paragraph 4(a)(ii)
of the Policy.
In view of the above findings, there is
no need for the Panel to address the issue of whether the Respondents either
registered or
used the disputed domain name in bad faith.
DECISION
In
accordance with paragraphs 10 of the Policy and 15 of the STOP Rules:
(a)
the relief sought by the Complainant is hereby denied; and
(b) inasmuch as the Complainant does not have rights
in the mark to which it is asserting, the Complaint is hereby dismissed.
Further,
inasmuch as the Panel finds that the Respondents do not have rights or
legitimate interests in the disputed domain name,
the Panel orders that
subsequent STOP challenges to this domain name, as against these Respondents,
will be permitted.
Lastly,
to the extent an order is needed, the Panel now orders the Registry Operator, NeuLevel,
to either correct the WHOIS record
for the disputed domain name to properly
reflect Mr. Youngmi Park as the registrant of that name rather than the
Registrar, Wooho
T&C Ltd. d/b/a/ RGNAMES.COM, or to permit the Registrar
itself to make the correction.
Peter L. Michaelson, Esq., Panelist
Dated: July 10, 2002
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