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Generic Top Level Domain Name (gTLD) Decisions |
Frank Russell Company v. Sungjo Park
Claim Number: FA0204000112476
PARTIES
Complainant
is Frank Russell Co., Tacoma, WA,
USA (“Complainant”), of Seed Intellectual Property Law Group PLLC. Respondent is Sungjo Park, Seoul, SOUTH KOREA (“Respondent”).
The
domain name at issue is <russell.biz>,
registered with Hangang Systems, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 23,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to 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 May 13, 2002.
Complainant
filed an additional submission on May 15, 2002 in compliance with Forum
Supplemental Rule 7.
On June 7, 2002, pursuant to STOP Rule 6(b), the Forum
appointed John J. Upchurch as
the single Panelist. On June 20, 2002, the Panel ordered that the
deadline for rendering its decision be extended until July 11, 2002.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
1. Complainant is the owner of numerous
registrations worldwide for the mark
RUSSELL for use in connection with financial goods and services.
2.
The disputed domain name <russell.biz>, uses the identical
text string, “russell,” which is a valid and subsisting registered trademark of
Complainant.
3.
Respondent has no rights in the RUSSELL name.
4.
Respondent registered the domain name <russell.biz> in bad
faith.
B.
Respondent
1.
The Respondent did not directly respond to Complainant’s allegations,
and they are deemed to have
been denied.
C.
Additional Submissions
Complainant addressed Respondent’s request
to conduct the proceedings in the Korean language. It was determined by the Forum that Respondent’s request should
be denied, a procedural decision with which the Panel concurs.
The Panel finds that the relief requested
by the Complainant should be granted.
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.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
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.
Upon evidence presented by Complainant,
it appears Respondent is neither the owner or beneficiary of a trade or service
mark containing
the term “Russell.”
“Russell” is not a Korean surname.
Further, Respondent has been shown to have registered at least 32
additional domain names associated with famous trademarks around
the world,
none of which are linked to an active Internet page. Respondent has no rights or legitimate interests in the domain
name <russell.biz>.
The circumstances indicate that
Respondent registered the domain name <russell.biz> with the
intent to traffic in the domain name.
Respondent registered with a web site community for those interested in
trafficking in Internet domain names.
This, coupled with the registration of at least 32 additional names
under the circumstances described above, constitutes bad faith. See Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Server (Nat. Arb. Forum Nov. 6, 2000) (finding that “general
offers to sell the domain name, even if no certain price is demanded, are
evidence
of bad faith”); Wrenchead.com, Inc. v. Hammersla, D2000-1222
(WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an
auction site is evidence of bad faith registration
and use).
DECISION
The Panel finds in favor of the
Complainant, and the domain name <russell.biz> is hereby ordered
to be transferred from Respondent to Complainant. Subsequent challenges under the Stop Policy
against this domain name shall not be permitted.
John J. Upchurch, Panelist
Dated: July 10, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1105.html