START-UP TRADEMARK OPPOSITION POLICY

DECISION

KT Corp. v. Jeongok Song

Claim Number: FA0204000112424

PARTIES

Complainant is KT Corp., Seongnam, KOREA (“Complainant”) represented by Kijoong Kim, of Dongsuh International Law Offices.  Respondent is Jeongok Song, Seoul, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kornet.biz>, registered with Hangang Systems, Inc.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

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 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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”).

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 July 1, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant asserts:

1. that the disputed domain name <kornet.biz> is identical to its KORNET mark;

2. that Respondent has no rights or legitimate interests in respect of the disputed domain name;

3. that Respondent registered or used the disputed domain name in bad faith.

B. Respondent did not submit a Response.

FINDINGS

Complainant, formerly known as Korea Telecommunication Corporation, has continuously operated in the information and communication industry since at least 1981, opening Asia’s first commercial Internet service in June 1994.  Complainant provides high speed Internet services in Korea under the KORNET mark, which is short for “KORea telecom interNET.”  Complainant has become the country’s leading information and communication company.

Complainant currently serves at least four million high speed Internet service subscribers and generated approximately 370 billion won through KORNET services during 2001.  Each year, Complainant expends billions of won in advertising and promotion and reports that its total revenue for 2001 exceeded 11 trillion won.

Complainant asserts that its KORNET trademark is famous in Korea and has provided evidence that the mark is registered in the Korean Intellectual Property Office.  The mark was registered as early as June 23, 1994, and has been used ever since in association with computers and computer peripherals, communication products and services, and information services.

Respondent registered the disputed domain name on March 27, 2002 and has made no apparent use of the name.

DISCUSSION

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.”

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

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.

Complainant’s Rights in the Mark

Complainant has demonstrated its rights in the KORNET mark as required by STOP Policy ¶ 4(a)(i) through registration and continuous use in Korea.  The <kornet.biz> domain name is identical to Complainant’s mark.

STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights in the KORNET mark and has further provided substantial evidence to support its assertion that the mark has become famous in Korea.  Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name.  Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Complainant and its mark are well known in Korea.  Complainant asserts that Respondent, a resident of Korea, was aware or should have been aware Complainant’s proprietary rights in KORNET.  Even if Respondent was not previously aware of Complainant’s rights in the mark, Complainant asserts that Respondent was made aware of its rights by way of the STOP IP Claim notification procedure.

There is no evidence that Respondent holds any trademark rights, either independently or as a beneficiary, in a mark identical to KORNET or <kornet.biz> as would defeat Complainant’s claim pursuant to STOP Policy ¶ 4(c)(i).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

Further, there is nothing in the record that suggests Respondent is commonly known by the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).  Given the fame of Complainant’s mark, such a claim seems improbable.  See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark prevented Respondent from being commonly known by <grammy.biz>).

Finally, although Respondent has, as yet, made no use of the contested domain name, any future use will likely constitute an opportunistic attempt to trade on the goodwill and fame already established in Complainant’s mark.  This cannot be held to demonstrate a bona fide offering of goods or services as contemplated by STOP Policy ¶ 4(c)(ii).  See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum Mar. 21, 2002)  (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)).

STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Complainant has provided considerable and credible evidence to support its claim that its KORNET mark has achieved fame in Korea.  As Complainant has also noted, Respondent was made actually aware of Complainant’s rights in the mark through registration of the infringing domain name during the STOP IP Claim notification process.  Because Respondent has no rights or legitimate interests in the domain name, its registration of <kornet.biz> with such knowledge demonstrates bad faith under the STOP Policy.  See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim.  Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).

STOP Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief should be hereby granted.

Accordingly, it is Ordered that the <kornet.biz> domain name be transferred from Respondent to Complainant and that subsequent challenges against this domain name under the STOP Policy shall not be permitted.

Sandra Franklin, Panelist

Dated: July 11, 2002

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