START-UP TRADEMARK OPPOSITION POLICY

DECISION

Cleartrack Information Network v. Lee Young IL

Claim Number: FA0204000110762

PARTIES

Complainant is Cleartrack Information Network, Brentwood, TN, USA (“Complainant”) represented by Dean M. Weiland.  Respondent is Lee Young IL, Susung-Gu, Korea (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <HAWK.biz>, registered with Hangang Systems, Inc.

PANEL

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.

Hon. Ralph Yachnin 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 April 19, 2002; the Forum received a hard copy of the Complaint on April 23, 2002.

On April 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 16, 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 May 31, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin 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

1. “Domain name HAWK.BIZ is covered under Cleartrack Information Network’s registered trademark of ‘Hawk Visibility’ and ‘Hawk Next Generation Visibility.’”

2. Respondent has not established ownership or beneficiary status of a trademark or service mark that is identical to the domain name.  Respondent has not demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services.  Respondent has not been commonly known by the domain name.  Thus, Respondent has no rights or legitimate interests in respect of the domain name.

3. Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs.  Respondent registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name.

4. Complainant filed its IP Claim with Neulevel on August 28, 2001 and this precedes Respondent’s registration of the domain name on March 27, 2002.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant asserts that it holds trademark rights in HAWK VISIBILITY and HAWK NEXT GENERATION VISIBILITY.  Complainant makes no claim and has provided no evidence that it holds rights in a HAWK or HAWK.BIZ mark.

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 holds trademark rights in HAWK VISIBILITY and HAWK NEXT GENERATION VISIBILITY. 

The STOP Policy requires Complainant to prove that the disputed domain name is identical to a trademark or service mark in which it asserts rights.  STOP Policy ¶ 4(a)(i).  Because Complainant has not demonstrated that it holds rights in a mark identical to the disputed domain name, its Complaint must fail.  See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy ¶ 4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>).

STOP Policy ¶ 13(b) requires, “[i]n the event that there is more than one [IP] Claimant, the Administrative Panel shall decide, in light of its findings in respect to each of the elements identified in Paragraph 4(a), whether any further challenges shall be permitted in respect of [the] domain name . . . .”

Because there are no further IP Claims pending against the <hawk.biz> domain name, the Panel need not address whether Respondent has rights or interests in the domain name or whether it registered or used the domain name in bad faith.  Even if the Panel accepts all of Complainant’s allegations as true, the Complaint must be dismissed because STOP Policy ¶ 4(a)(i) has not been satisfied. 

DECISION

Having determined that Complainant lacks sufficient rights under STOP Policy ¶ 4(a)(i) to make out a STOP Complaint, the Panel concludes that relief must be denied.

Accordingly, the Complaint is dismissed.

                                     Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: June 3, 2002

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