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Generic Top Level Domain Name (gTLD) Decisions |
KT Corp. v. Jeoung-woon Choi
Claim Number: FA0204000112422
Complainant
is KT Corp., Seongnam, KOREA
(“Complainant”) represented by Kijoong
Kim, of Dong-suh International Law
Office. Respondent is Jeoung-woon Choi, Incheon, KOREA (“Respondent”).
The
domain name at issue is <hanmir.biz>,
registered with Hangang Systems, Inc.
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 April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 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
<hanmir.biz> domain name is identical to Complainant’s HANMIR
mark.
Respondent
has no rights or legitimate interests in the <hanmir.biz> domain
name.
Respondent
registered the <hanmir.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant owns a registered
trademark with the Korean Intellectual Property Office for the HANMIR
mark. Complainant, formally known as
Korea Telecommunication Corporation, started its business in 1981.
Complainant uses the HANMIR mark in
connection with its Internet search website, which offers on-line shopping and
on-line auction
services. Complainant
began using the HANMIR mark with its related services in September 1999.
Complainant has spent an extensive
amount of time, effort and money in promoting the HANMIR mark and associated
services. Complainant is one of the
biggest information and communication corporations in Korea grossing 11.5
trillion won in 2001. Consequently,
Complainant and the HANMIR mark are very well-known in Korea.
Respondent registered the <hanmir.biz>
domain name on March 27, 2002 and has made no apparent use or development 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 to the HANMIR mark through registration with the
Korean Intellectual Property Office and subsequent
continuous use.
Respondent’s
<hanmir.biz> domain name contains Complainant’s entire HANMIR mark
with only the inconsequential addition of “.biz.” Hence, Respondent’s domain name is identical to Complainant’s
mark.
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 Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
to be deemed true).
Complainant’s investigation revealed that
no entity owns a trademark identifying different designated goods similar to
its HANMIR
mark in Korea, which is where Respondent is located. Respondent does not refute Complainant’s
assertions and failed to come forward with any evidence that affirmatively
shows it holds
rights in a trade or service mark that is identical to the <hanmir.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); 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).
There is no evidence of demonstrable
plans to use the <hanmir.biz> domain name by Respondent. Furthermore, Complainant’s HANMIR mark has
gained a substantial amount of notoriety and fame in Korea. Thus, it can be inferred that any use of the
domain name by Respondent would mislead Internet users as to an association
with Complainant. See William
L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum Mar. 21,
2002) (finding the Respondent’s
“intent to trade [on] the goodwill of Complainant’s mark, by attracting
Internet users confused as to the
likely affiliation between Complainant and
Respondent’s website” indicated the Respondent had no rights or legitimate
interests pursuant
to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse
Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum
Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered
to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
Due to the fame and notoriety that the
HANMIR mark has achieved in Korea it is unlikely that Respondent, a Korean
resident, could
be commonly known by HANMIR or <hanmir.biz>, as
required to overcome the burden of STOP Policy ¶ 4(c)(iii). Furthermore, there is no evidence on the
record that satisfies the STOP Policy ¶ 4(c)(iii) burden in favor of
Respondent. Therefore, Respondent has
no rights or legitimate interests in the <hanmir.biz> domain
name. See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark
prevented Respondent from
being commonly known by <grammy.biz>); 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 disputed domain name,
thus, STOP Policy
¶ 4(a)(ii) has been satisfied.
Prior to registering the domain name
Respondent was aware of Complainant’s business and rights in the HANMIR mark,
given Complainant’s
established reputation in Korea. Furthermore, Respondent had notice of Complainant’s rights given
the unique nature of the STOP IP Claim procedure. Therefore, Respondent’s registration, despite knowledge of
Complainant’s rights in the HANMIR mark, constitutes bad faith. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual
or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constitutes
bad faith); see also 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”).
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 <hanmir.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 29, 2002
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