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Generic Top Level Domain Name (gTLD) Decisions |
Pioneer v. Kim Dong-Gum
Claim Number: FA0204000112486
Complainant
is Pioneer, Long Beach, CA, USA
(“Complainant”) represented by Robert J.
Skousen, of Skousen & Skousen. Respondent is Kim Dong-Gum, Seoul, SOUTH KOREA (“Respondent”).
The
domain name at issue is <elite.biz>,
registered with EchoKorea, Inc. d/b/a DomainRG.
On July 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James P. Buchele as
the single Panelist. 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.
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
May 2, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 29,
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
June 3, 2002, Complainant submitted an additional submission pursuant to Forum
Supplemental Rule 7, which was received timely.
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.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <elite.biz> domain
name is identical to Complainant’s ELITE mark.
2. Respondent has no rights or legitimate
interests in the <elite.biz> domain name.
3. Respondent registered the <elite.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of U.S.
Trademark Reg. No. 1,591,868 for the ELITE mark denoting the following goods
and services: audio
and video products, amplifiers, video disc players, compact
disc players and monitor televisions, among others. Complainant registered
the
ELITE mark on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) on April 17, 1990. Complainant’s registered
mark has been
continuously used since 1988.
Respondent registered the disputed <elite.biz>
domain name on March 27, 2002. Complainant’s trademark search of Respondent
revealed no pending or registered trademarks for the
use of the ELITE mark.
Respondent is not authorized or licensed to use Complainant’s ELITE mark.
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
has established that it has rights in the ELITE mark through registration with
the USPTO and subsequent continuous use
since 1988.
Respondent’s
<elite.biz> domain name incorporates Complainant’s mark in its
entirety. Respondent’s disputed domain name emulates Complainant’s mark in form
and spelling. Therefore, Respondent’s domain name is identical to Complainant’s
ELITE mark.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate interests
in the disputed domain 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). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make
all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply
to the Complaint).
Respondent has not come forward to
proffer any evidence that it has trademark rights in the ELITE mark anywhere in
the world. As previously
stated, Complainant’s online trademark investigation
failed to yield any results indicating outstanding applications or
registrations
under Respondent’s name. Therefore, Respondent has no rights or
legitimate interests in the <elite.biz> domain name pursuant to
STOP Policy ¶ 4(c)(i).
Eventual use of the disputed domain name
will inevitably cause confusion among Internet users searching for Complainant.
The intended
use of a domain name identical to Complainant’s mark to mislead or
confuse Internet users is not considered a bona fide offering
of goods or
services pursuant to STOP Policy ¶ 4(c)(ii). See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (inferring that Respondent registered the domain name
<householdbank.com>, which
incorporates Complainants HOUSEHOLD BANK mark,
with hopes of attracting Complainant’s customers and thus finding no rights or
legitimate
interests); see also State
Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27,
2000) (finding that “unauthorized providing of information and services under a
mark owned by
a third party cannot be said to be the bona fide offering of
goods or services”).
Additionally, there is no evidence on the
record and Respondent has not come forward to establish that it is commonly
known by the
<elite.biz> domain name pursuant to STOP Policy ¶
4(c)(iii). See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by
the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and
never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Due to the nature of NeuLevel’s STOP
registration procedure and Complainant’s listing on the Principal Register of
the USPTO, Respondent
is thought to have been on notice of Complainant’s rights
in the ELITE mark. Respondent’s registration of the disputed domain name
while
lacking rights or interests in the domain name, and despite being placed on
notice, evidences bad faith under STOP Policy ¶
4(a)(iii). 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”); see also Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that
the unique nature of the STOP Policy and the notice given to Respondent
regarding
existing IP Claims identical to its chosen domain name precluded good
faith registration of <genelogic.biz>”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the STOP Policy, the Panel
concludes that the requested relief should be hereby
GRANTED.
Accordingly,
it is Ordered that the <elite.biz> domain name be TRANSFERRED from
Respondent to Complainant. NO
FURTHER CHALLENGES against this domain name shall be permitted under the
STOP Policy.
James P. Buchele, Panelist
Dated: July 11, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1121.html