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Generic Top Level Domain Name (gTLD) Decisions |
Best Buy Concepts Inc. v. Hyukmahn Ahn
Claim Number: FA0204000112514
Complainant
is Best Buy Concepts Inc., Eden
Prairie, MN, USA (“Complainant”) represented by Joseph M. Joyce. Respondent
is Hyukmahn Ahn, Seoul, SOUTH KOREA
(“Respondent”).
The
domain name at issue is <bestbuy.biz>,
registered with Netpia.com, Inc.
On July 11, 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 27, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 14, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 3,
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.
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
The
<bestbuy.biz> domain name is identical to Complainant’s BEST BUY
mark.
Respondent
has no rights or legitimate interests in the <bestbuy.biz> domain
name.
Respondent
registered the <bestbuy.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant owns registered trademarks
for the BEST BUY mark, registered with the United States Patent and Trademark
Office (Reg.
Nos. 1,379,703; 1,676,112; 1,657,622, 1,899,212; 2,196,852;
2,259,212; 2,277,543). Complainant has
used its BEST BUY mark since 1989 in association with its retail stores selling
stereos, televisions, major appliances,
and other electronics.
Respondent registered the <bestbuy.biz>
domain name on March 27, 2002.
Complainant’s investigation revealed no use or planned use of the domain
name.
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 its rights in the BEST BUY mark through registration with the
United States Patent and Trademark Office
and continuous use in commerce.
Respondent’s
<bestbuy.biz> domain name contains Complainant’s entire BEST BUY
mark. Therefore, the domain name is
identical to Complainant’s mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain name
and Respondent’s
failure to respond, the Panel may presume Respondent has no
such 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 Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Complainant’s investigation revealed that
Respondent does not own and is not the beneficiary of any trademark or service
mark identical
to the <bestbuy.biz> domain name. Respondent has not come forward to show that
it does hold rights in the <bestbuy.biz> domain name. Therefore, Respondent does not have any
rights or legitimate interests in the domain name pursuant to STOP Policy ¶
4(c)(i). See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that, because Respondent did not come forward with a
Response, the Panel could
infer that it had no trademark or service marks
identical to <grammy.biz> and therefore had no rights or legitimate
interests
in the domain name); see also 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).
Complainant could not find any use of the
<bestbuy.biz> domain name, nor could it find any demonstrable
plans to use the domain name by Respondent.
Respondent has not come forward to offer any evidence of use or plans to
use the <bestbuy.biz> domain name. Therefore, Respondent has no rights or legitimate interests in
the domain name pursuant to STOP Policy ¶ 4(c)(ii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb.
Forum Mar. 4, 2002) (finding that in order to show rights or legitimate
interests in the disputed domain name
Respondent must establish with valid
evidence “a course of business under the name, or at least significant
preparation for use of
the name prior to learning of the possibility of a
conflict” with an IP Claimant); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000)
(finding that absent evidence of preparation to use the domain name for a
legitimate purpose, the
burden of proof lies with the Respondent to demonstrate
that it has rights or legitimate interests).
Respondent is not commonly known by BEST
BUY or <bestbuy.biz>.
According to the domain name registration information, Respondent is
only known to this Panel as Hyukmanhn Ahn.
Also, Complainant has never licensed or given permission to Respondent
to use its BEST BUY mark in any fashion.
Therefore, Respondent has no rights or legitimate interests in the
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 Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in domain name when Respondent is not
known
by the mark).
Accordingly, Respondent has no rights or
legitimate interests in the disputed domain name, thus, STOP Policy ¶ 4(a)(ii)
has been satisfied.
Due to the unique nature of the STOP IP
Claim procedure, Respondent had notice of Complainant’s rights in the BEST BUY
mark. Therefore, Respondent’s
registration, despite this notice, constitutes bad faith registration. 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> when Respondent
registered it with “full knowledge that his
intended business use of this domain name was in direct conflict with a
registered trademark
of a known competitor in exactly the same field of
business”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-Up Trademark Opposition
Policy the Panel concludes that relief shall
be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <bestbuy.biz> be TRANSFERRED from Respondent to
Complainant and that subsequent challenges under the STOP Policy against this
domain name SHALL NOT be permitted.
James P. Buchele, Panelist
Dated: July 15, 2002
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