DECISION

American Quarter Horse Association v. Taeho Kim

Claim Number: FA0112000103358

PARTIES

The Complainant is American Quarter Horse Association, Amarillo, TX ("Complainant") represented by Kenneth R. Matticks, of the White House on Turtle Creek.  The Respondent is Taeho Kim, Kwangju ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <americashorse.com>, registered with Hangang Systems, Inc.

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.

Young Kim as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 20, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.  The Complaint was submitted in both Korean and English.

On December 21, 2001, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name <americashorse.com> ("the Subject Domain Name") is registered with Hangang Systems, Inc. and that Respondent is the current registrant of the name.  Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 8, 2002, a Korean Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@americashorse.com by e-mail.

A timely Response was received and determined to be complete on February 25, 2002.

Complainant submitted a timely additional submission pursuant to Forum Supplemental Rule #7 on March 4, 2002.

Respondent submitted a timely additional submission on March 11, 2002.

On March 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Young Kim as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts the following in accordance with ICANN Policy 4.

1. Complainant's Trademark Right and Similarity Between the Trademark and the Domain Name

Complainant asserts that it is a membership association of persons who are breeders, racers, suppliers and enthusiasts of the American Quarter Horse, known by long-standing trademark use by Complainant as "America's Horse."

            Complainant asserts that it is the valid current holder of U.S. trademark registrations of the mark AMERICA'S HORSE ("the Subject Mark") and Complainant's use of the Subject Mark precedes Respondent's registration (March 5, 2001) of the Subject Domain Name.  

Complainant asserts that the Subject Domain Name is identical (except for the apostrophe) to the Subject Mark.

                       

            2. Rights or Legitimate Interest

In summary, Complainant asserts that Respondent has never used the Subject Domain Name in commerce or a bona fide offering of goods or services; Respondent has no known rights, products, services or trademarks using AMERICASHORSE.COM nor has Respondent ever been known as AMERICASHORSE.COM or anything remotely similar to it; and Respondent is not making a legitimate noncommercial or fair use of the Subject Domain Name without intent for commercial gain.

Complainant asserts that Respondent has no legitimate interest in the use of the Subject Mark because Respondent has no connection to the breeding or racing of American Quarter Horses and does not appear to be an enthusiast of American Quarter Horses or a supplier to the American Quarter Horse industry.

            3. Registration and Use in Bad Faith

Complainant contends that Respondent offered to sell the Subject Domain Name to Complainant for a sum of $12,000USD.   Complainant also contends that there was no active Internet site at this domain name address at the time of filing the Complaint and that Respondent tries to attract members of American Quarter Horse Association or persons interested in "America's Horse" to its sexually oriented sites.  Based on the above, Complainant asserts that Respondent has acquired the Subject Domain Name for the sole purpose of selling or otherwise transferring the domain name registration to Complainant for an amount in excess of any out of pocket expenses expended in acquiring the registration.

B. Respondent

Respondent asserts the following in accordance with ICANN Policy 4.

1. Complainant's Trademark Right and Similarity Between the Trademark and the Domain Name

Respondent asserts that Complainant does not have a trademark registration in Korea where Respondent is planning to provide the service using the Subject Domain Name.  Respondent also asserts that even if americashorse.com is known in Complainant's country, it is not famous worldwide.

2. Rights or Legitimate Interest

Respondent contends that the Subject Domain Name is generic because it is composed of two common English words and many companies have used "americas and horse" for a variety of services long before Complainant started using the Subject Mark.

Respondent also asserts that he was looking for a name for a web site advertising adult Internet broadcast sites, particularly a name related to a movie "horse-loving madam," which is a very famous adult movie in Korea.  Respondent also contends that it is accepted worldwide that the words "horse" and "sex" are closely related because one can get 675,000 results from a search in "google.com" using the keyword "sex horse."

Respondent also asserts that he could not develop the website much because of the decline of the Internet business and Respondent's lack of time.

3. Registration and Use in Bad Faith

Respondent asserts that Complainant solicited the sale of the Subject Domain Name from Respondent.  Respondent also asserts that since Complainant has failed to show that it has any business in Korea, Respondent could not have known the Subject Mark; and therefore, there is no evidence that Respondent registered the Subject Domain Name in bad faith.

Respondent asserts that since the Subject Domain name was registered in March of 2001 while Complainant registered the domain name "AMERICASHORSE.ORG" back in May 2000, Complainant had every opportunity to register the Subject Domain Name. Based on the above, Respondent asserts that it cannot have registered the Subject Domain Name in order to prevent Complainant from registering the Subject Domain Name.

C. Complainant’s Additional Submission

Complainant asserts that Respondent never documented the actual out-of-pocket expenses he was claiming to justify the demand for $12,000.

Complainant asserts that a creator and marketer of sexually oriented sites in Korea has no legitimate interest in American Quarter Horses, and the only rational explanation why Respondent would register the Subject Domain Name is to resell it to Complainant or to build a website having nothing to do with American Quarter Horses with the intention that the Subject Domain Name would attract Internet users by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation or endorsement, and to trade upon the name and goodwill of the American Quarter Horse Association.

D. Respondent’s Additional Submission

Respondent asserts that since Complainant only had showed his interest in purchasing the Subject Domain Name without saying anything about the Subject Mark, he said that he would transfer the Subject Domain Name in exchange for expenses spent on the contents of the web site he had been preparing.

FINDINGS

The Panel finds that Complainant has trademark rights in the name "AMERICA'S HORSE."  Further, the Panel finds that the Subject Domain Name is identical or confusingly similar to the trademark "AMERICA'S HORSE."

However, the Panel finds that Complainant failed to show Respondent's lack of legitimate interest in the Subject Domain Name.

The Panel also finds that Complainant failed to show that the Subject Domain Name has been registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

It is held that Complainant is a registered owner of the Subject Mark in the United States and the Subject Mark is identical or confusingly similar to the Subject Domain Name.

Rights or Legitimate Interests

Respondent argues that the Subject Domain Name is generic because it is composed of two common English words.  Respondent is also alleging that he is operating a site for advertising Internet broadcasting sites for adults using the Subject Domain Name.   Complainant did not present any facts or supporting evidence to rebut the Respondent's allegation.  Accordingly, the Panel finds that Complainant failed to submit sufficient factual evidence to carry its burden to show Respondent's lack of legitimate interest.

Registration and Use in Bad Faith

"America" and "horse" are well known English words even in non-English speaking countries.  The combination of the above two terms with an "s" in between ("americashorse") is considered to mean "horse of America."   It is therefore reasonable to conclude that the term "americashorse" is a non-distinctive generic name.

Although Complainant is a registered owner of the Subject Mark, the territorial scope of its rights is limited to the United States.  In addition, Complainant failed to prove that the Subject Mark became famous or acquired a secondary meaning as a result of its use of the Subject Mark.   Accordingly, it is difficult to conclude that Complainant's business or the Subject Mark has been known outside of the United States.

Complainant asserts that Respondent requested $12,000, which exceeds out-of-pocket costs directly related to the domain name.  However, since the Subject Domain Name is considered a generic name and it is not proven that it acquired a secondary meaning, it would not lead to a conclusion that Respondent registered and is using the Subject Domain Name in bad faith only because Respondent requested money exceeding out-of-pocket expenses when contacted by Complainant.   Moreover, Complainant failed to present any other evidence that Respondent had known about the Subject Mark or Complainant prior to the registration of the Subject Domain Name, and registered and is using the Subject Domain Name in bad faith.  Accordingly, Complainant has not sufficiently established that Respondent had registered and is using the Subject Domain Name in bad faith. See VZ VermögensZentrum AG v. Anything.com, D2000-0527 (WIPO Aug. 22, 2000).

DECISION

For the foregoing reasons, the Panel decides that Complainant failed to meet the three requirements of Paragraph 4(a) of the Policy.  Accordingly, pursuant to Paragraph 4 of the Policy and Paragraph 15 of the Rules, the complaint is dismissed.

Young Kim, Panelist
Dated: April 2, 2002

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