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Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0204000112505
Complainant
is London Special Risks Limited,
London, UNITED KINGDOM (“Complainant”) “represented by” Christopher Shane Duffy. Respondent is Wooho T&C d/b/a RGnames, Seoul, KOREA (“Respondent”)
“represented by” Byeongguk Choi. [2]
The domain name at issue is <angel.biz>, registered with Wooho T&C Co. d/b/a RGNames.
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.
M. KELLY TILLERY, ESQUIRE 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 27, 2002; the Forum received a hard copy of the
Complaint on
April 29, 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”).
A timely Response was received and
determined to be complete on June 7, 2002.
On July 17, 2002,
pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE, as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
Complaint contends that ANGEL is a
commercial lines insurance product (Employment Practices Liability Insurance)
sold in the U.S. Complainant contends
that ANGEL will in the future offer directors’ and officers’ insurance coverage
as well. Complainant contends that
ANGEL includes “ANGEL FINE ART” which underwrites and brokers insurance for private
and corporate collections
and museums.
Complainant contends that it is the owner
of the ANGEL trademark and has used same in connection with its insurance
services since
1999.
Complainant contends that “next month the
trademark will have final approval from the U.S. Patent and Trademark Office to
become a
Registered Trademark.”
Complainant contends that over the past
three years it has built brand recognition through the creation of a
distinctive logo and
the branding of all marketing, website and communication
materials with the ANGEL trademark.
Complainant attaches copies of advertisements, head papers and business
cards utilizing the mark.
Complainant contends that Respondent is a
domain name registration organization based in Korea which has no business,
product or service
that is currently named ANGEL and thus it has no legitimate
interest in the domain name.
Complainant contends that Respondent is a
domain name registering service which has registered the domain name in
question for the
sole purpose of financial gain. Complainant contends that Respondent is not the owner of a
trademark or service mark that is identical to ANGEL and that Respondent
has
made no demonstrable preparation to use the domain name and therefore is
stopping the Complainant from developing its branding
and business
location/distribution channels and that Respondent has not been commonly known
as the domain name and no trademarks
have been acquired or sought by
Respondent.
B. Respondent
Respondent contends that over 6,760,000
web pages are seen on a Yahoo Search for “ANGEL” and that there are many domain
names that
include the word “ANGEL.”
Respondent further contends that ANGEL is
a general and public word used by many people and is “general and open to the
public on
the Internet.”
Respondent contends that the recent WIPO
Arbitration Decision of INT Media Group v. Castresana, D2002-0249 (WIPO)
supports its position.
Respondent contends that Complainant does
not own a Registered Trademark for ANGEL.
Respondent contends that it “won the
angel.biz domain name by the most fair method in the world” and thus it has
rights and legitimate
interests in respect of the domain name.
Respondent denies that it registered the
domain name for the purposes of selling, renting or otherwise transferring same
to Complainant
or to any competitor of Complainant.
Respondent denies that it is both a
reseller and a registrar. Respondent
contends that it “. . . contracted a agreement
on February 5, 2002 that the register RG Names shall manage the
angel.biz domain name on behalf of Respondent except the ownership
and
use.” Respondent further contends that
it is “. . . willing to use the angel.biz for its business for sales and
leasing of real estate other
than the Complainant’s business.” Respondent contends that there is no
likelihood of confusion with Complainant’s mark.
(1) Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that the domain name
is identical to a service mark in
which Complainant has rights.
(2) Complainant has not met its burden to prove by a
preponderance of the relevant, credible and admissible evidence that Respondent
has no rights or legitimate
interests in respect to the domain name.
(3) Complainant has not met its burden to prove by a
preponderance of the relevant, credible and admissible evidence that the domain
name has been registered
or is being used in bad faith.
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 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) 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.
At the time that Complainant filed its
Complaint, it had an Application pending in the U.S. Patent and Trademark
Office for the Registration
of the mark “ANGEL” and it contended that “next
month the trademark will have final approval from the U.S. Patent &
Trademark
Office to become a Registered Trademark.” Although this Record does not include any further evidence of the
Registration, this Panel believes it appropriate to review the U.S.
Patent and
Trademark Office Trademark Electronic Search System (TESS) which now reflects that
the mark “ANGEL” was registered to
Complainant by the USPTO on June 25, 2002 in
Class 36 (Registration No. 2585863).
This Panel takes “judicial notice” of same. Under these circumstances, Complainant clearly has rights in and
to the mark “ANGEL” and it is identical to the domain name in question. Thus, Complainant has met its burden to
prove by a preponderance of the relevant, credible and admissible evidence that
the domain
name is identical to a trademark or service mark in which
Complainant has rights.
Respondent
contends that it intends to use the mark for its business of sales and leasing
of real estate. Complainant presents no
evidence to the contrary. In this
proceeding, Complainant has the burden to prove by a preponderance of the
evidence that Respondent has no rights or legitimate
interests in respect to
the domain name. This Panel is
compelled to find on this Record that Complainant has not met its burden. However, this Panel also cannot and does not
find on this Record that Respondent has rights or legitimate interests in the
domain
name.
Respondent
contends that it has registered the domain name in question in good faith for
use in connection with its business of sales
and leasing of real estate. Complainant presents no evidence to the
contrary. In these proceedings,
Complainant has the burden to prove that the domain has been registered or is
being used in bad faith. This Panel is
compelled to find on this Record that Complainant has not met its burden to
prove that the domain name has been registered
or is being used in bad faith.
Complainant’s
Complaint is dismissed.
Subsequent challenges under the STOP Policy against this domain name shall
be permitted.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: July 31, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1344.html