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Generic Top Level Domain Name (gTLD) Decisions |
Kamikaze Canada Inc. v. Seo Sung Ki
Claim Number: FA0205000113963
Complainant
is Kamikaze Canada Inc., Boisbriand,
PQ, CANADA (“Complainant”) represented by Cosmin
Curechean. Respondent is Seo Sung Ki, Kyungki Do, KOREA
(“Respondent”).
The
domain name at issue is <kamikaze.biz>,
registered with YESNIC Co. Ltd.
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.
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.
Transfer
of the domain name from Respondent to Complainant.
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.
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.
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
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.
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.
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.
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
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