START-UP TRADEMARK OPPOSITION POLICY

DECISION

UniTech v. Tachoung Son

Claim Number: FA0204000112439

PARTIES

Complainant is UniTech, Edinburgh, UNITED KINGDOM “Complainant”).   Respondent is Tachoung Son, Gyeonggi-do, KOREA (“Respondent”).

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <unitech.biz>,  registered with Echokorea, Inc.

PANEL

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.

            Judge Richard B. Wickersham, (Ret.) 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 May 22, 2002.

On June 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 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 Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on June 27, 2002.

On July 16, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to  Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

            The Complaint is based on the following factual and legal grounds: STOP Rule 3(c)(ix).

[a.]       The domain name is identical to a trademark number 2121179 as registered and awarded by and to the Complainant with the Trademarks Registry of Britain and Northern Ireland.

The domain name is identical to a trademark application in its final stages of acceptance as submitted by the Complainant with the Trademark Registry for the European Union.

            STOP Rule 3(c)(ix)(1); STOP 4(a)(i).

[b]        The Complainant is the legal owner and uses for business and commercial purposes, and is recognized by the International markets under the UNITECH mark, all Top Level Domain Names with the same identity as the domain contested and similar names listed as follows:

                       

                        <UNITECH.NET>

                        <UNITECH.ORG>

                        <UNITECH.INFO>

                        <UNITECH.CO.UK>

                        <UNITECH.ORG.UK>

                        <UNITECH.NET.UK>

                        <UNITECH.TECH>

                        <UNITECH.BE>

                        <UNITECHGROUP.CO.UK>

                        <UNITECHGROUP.ORG>

                        <UNITECHGROUP.NET>

                        <UNITECH-INNOVATIONS.COM>

                        <UNITECH.GROUP.NAME>

The Complainant has been trading as UniTech since the registration of the company “Universal Information Technology Group Ltd” since 1996, as a consolidation of separate Internet, Computer and Software related business before that time.  During which time the identity of UniTech has been widely established.

Recent actions in the UK against other parties have been successful in the protection of the UniTech name.  These actions have satisfactorily for all parties been conducted through dialogue and have avoided the courts or protracted legal proceedings so far.  It is the hope that the Respondent will recognize the Complainants case as valid in the same way.

            STOP Rule 3(c)(ix)(2); STOP 4(a)(ii).

[c.]       The Complainant has attempted to contact the Respondent using email communications without any success until 25^th April to the email address and telephone number stated on the Respondents registration for the domain name <UNITECH.BIZ>.

The Complainant has attempted to remedy their claim on the <UNITECH.BIZ> domain name through dialogue, which has been thwarted by the lack of any willingness to engage in a dialogue by the Respondent.

The Complainant’s establishment of the identity UNITECH, and use of the listed domain names in Clause 6(b) above, as central to its identity, market recognition and business as an Internet Technology Company, is threatened by the Respondent’s claim on the domain name <UNITECH.BIZ> especially in the context of the .BIZ extension as a Business mnemonic extension in a market place the Complainant has invested considerable time and money in building the UNITECH identity.

It is inconceivable that nothing other than confusion and the likelihood of commercial or other gain, intentionally or unintentionally, could be the result of the use of the domain name <UNITECH.BIZ> by the Respondent.  This is magnified by the nature and connotation as a business identity the .BIZ top level domain extension is designed to have.

            STOP Rule 3(c)(ix)(3); STOP 4(a)(iii).

B.   Respondent

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name.  STOP Rule 5(c).

[a.]       The UNITECH, domain name registered by Respondent is identical with the name Respondent’s company UNITECH CO., LTD and Respondent is having international and domestic business with the name above since the company has been established in 1994.

In addition, as specified in the certification of business registration, the UNITECH CO., LTD is a company that offers environmental drugs, environmental technologies consulting, and environmental engineering, therefore, UNITECH CO., LTD’s business filed is different from the trademark rights of Complainant’s filed which is elements of Internet Technologies and software development.

            STOP Rule 3(c)(ix)(1); STOP Policy ¶ 4(a)(i).

[b.]       Respondent is a director in charge of entire TLD (Top Level Domain) operation working at UNITECH CO., LTD.   Regarding the business related to application and registration of <UNITECH.BIZ>, Respondent performed the operation in an official act as a director of UNITECH CO., LTD.

UNITECH CO., LTD, a workplace of Respondent, is an environmental engineering company established in 1994.  This fact shows that above company has been established 3 years before the Complainant’s company, UniTech and business filed is entirely different.  Unlike the company of Complainant which is focused on a consolidation of separate internet, computer and software related business, UNITECH CO., LTD is focusing on business related to drug supplying and management installation in such file of cooling water handling and semiconductor cleaning.  Therefore, there is no such evidence that both companies are focusing on same business filed.

Respondent has been officially registered in organization of Korea with the company name of above statement and has continued the business in international trades and technologies exchanges with USA, Germany, Japan and China for many years with this registered name.

In addition, the URL <uni-tech.co.kr> has been used in international and domestic business of this company for many years.

            STOP Rule 3(c)(ix)(2); STOP Policy ¶ 4(a)(ii).

[c.]       The name UNITECH is identical with UNITECH CO., LTD and this name has been used as national and international identity since 1994.  Therefore, the recent registration of domain name is an official act to claim proper business practices of UNITECH CO., LTD.

Respondent was on the business trip when Complainant had tried to contact Respondent on April 25, 2002, but Respondent has applied the domain name with reasonable grounds by email and telephone.  Because above domain name is very important in business, Respondent made this standpoint clear to Complainant who suggests the transfer of rights.

           

            STOP Rule 3(c)(ix)(3); STOP Policy¶ 4(a)(iii).

FINDINGS

The following domain is the subject of this Complaint: <UNITECH.BIZ>.  The trademark service provides Registration Certificate Number: 2121179, dated 17 January 1997, the Trademarks Registry for Britain and Northern Ireland.

The Complainant is Nigel Gibbons of Edinburgh.  The Complainant has currently in progress a European Community-wide Trademark registration in its final stages.  The Complainant is also recognized on an International level for its software development skills.  Its future planned use includes elements of Internet Technologies and software development.

Complainant is the legal owner and uses for business and commercial purposes, under the UNITECH mark, Top Level Domain Names including <UNITECH.NET>, <UNITECH.ORG>, etc.

The Complainant has been trading as UniTech since the registration of the company “Universal Information Technology Group, Ltd.”  since 1996 and as a consolidation of separate Internet, Computer and Software related business before that time.

The domain name <UNITECH.BIZ>, according to .BIZ Registry Whois Data, was created by Respondent, registration date March 27, 2002.

As an Intellectual Property (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.

Complainant is UniTech, Edinburgh, United Kingdom and Respondent is Tachoung Son, Gyeonggi-do, Korea.

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.”

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

We find that Complainant has rights in the mark.  The domain name is identical to the Trademark Number 2121179 as registered and awarded by and to the Complainant with the Trademark’s Registry of Britain and Northern Ireland.   The domain name is identical to a trademark application in its final stages of acceptance as submitted by the Complainant with the Trademark’s Registry for the European Union.  The Complainant has been trading as UniTech since the registration of the company “Universal Information Technology Group, Ltd.” since 1996, during which time of UniTech has been widely established.

            Respondent’s Rights or Legitimate Interests

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name.  A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect to the domain name at issue.”  Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).

            Registration or Use in Bad Faith

We find that the registration of the disputed domain name by Respondent is in bad faith.  We find that registration of the domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv), when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant.   Pillsbury Co. v. Prebake Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002).

The Panel finds in favor of Complainant and we transfer the disputed domain name to Complainant, and we determine that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

DECISION

We find that the Complainant has rights in the mark.   We further find that Respondent does not have rights or legitimate interests in the disputed domain name.   We find that Respondent registered the disputed domain name in bad faith.

We find in favor of the Complainant and transfer the disputed domain name to Complainant  and we further determine that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

                                               

                                                                        JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

                                                                       

                                                                                                Dated: July 23, 2002