WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions

You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2002 >> [2002] GENDND 1287

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

Kamikaze Canada Inc. v. Seo Sung Ki [2002] GENDND 1287 (26 July 2002)


National Arbitration Forum

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Kamikaze Canada Inc. v. Seo Sung Ki

Claim Number: FA0205000113963

PARTIES

Complainant is Kamikaze Canada Inc., Boisbriand, PQ, CANADA (“Complainant”) represented by Cosmin Curechean.  Respondent is Seo Sung Ki, Kyungki Do, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kamikaze.biz>, registered with YESNIC Co. Ltd.

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 May 9, 2002; the Forum received a hard copy of the Complaint on May 14, 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 16, 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

The <kamikaze.biz> domain name is identical to Complainant’s KAMIKAZE mark.

Respondent has no rights or legitimate interests in the <kamikaze.biz> domain name.

Respondent registered the <kamikaze.biz> domain name in bad faith.

B. Respondent

Respondent did not submit a Response.

FINDINGS

Complainant owns a registered trademark with Canadian Intellectual Property Office for the KAMIKAZE mark (Reg. No. 546,053).  Complainant manufactures and distributes martial arts equipment.  Complainant has been using the KAMIKAZE mark since 1996 to promote its products.

Complainant operates a website at <kamikaze.com>, where it sells it martial arts products associated with the KAMIKAZE mark.  At this website, Complainant conducts approximately fifty percent of its yearly sales. 

Respondent registered the <kamikaze.biz> domain name on March 27, 2002 and has not used or shown plans to use the domain 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 established its rights to the KAMIKAZE mark through registration with the Canadian Intellectual Property Office and subsequent continuous use.  Respondent’s <kamikaze.biz> domain name is identical to Complainant’s KAMIKAZE mark, but for the inconsequential addition of the top-level domain “.biz.”

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

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 extensive investigation, including a search of the Korean Trade Mark Office, uncovered no registered rights or interests of Respondent in any mark similar to the KAMIKAZE mark.  Also, Respondent has not come forward with any evidence showing ownership or beneficiary rights in a trade or service mark that is identical to the <kamikaze.biz> domain name.  Therefore, Respondent has no 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).

Complainant conducts nearly half of its yearly sales on its <kamikaze.com> website and is interested in expanding its website addresses to create more business.  Complainant’s investigation revealed that Respondent registered <kamikaze.biz> without any evidence of bona fide commercial plans to use it.  Respondent has not come forward to offer any evidence to the contrary.  Hence, Respondent does not have 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).

Complainant’s investigation failed to uncover any evidence that Respondent was commonly known by the KAMIKAZE moniker.  Complainant never granted Respondent permission, express or implied, to use the KAMIKAZE mark.  Respondent is known by this Panel as Seo Sung Ki.  Respondent failed to affirmatively show that it is commonly known by KAMIKAZE or <kamikaze.biz>.  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, the Panel finds that Respondent has no rights or legitimate interests in the <kamikaze.biz> domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Respondent was notified of Complainant’s interests in the KAMIKAZE mark because of the unique STOP IP Claim procedure.  Despite this notice, Respondent proceeded to register <kamikaze.biz>.  Respondent’s registration with knowledge of Complainant’s rights in the KAMIKAZE mark constitutes bad faith.  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.

DECISION

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

Accordingly, it is Ordered that the <kamikaze.biz> domain name be TRANSFERRED from Respondent to Complainant.  Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

Sandra Franklin, Panelist

Dated: July 26, 2002


WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1287.html