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Generic Top Level Domain Name (gTLD) Decisions |
Sega Corporation v. jsy
Claim Number: FA0204000110789
PARTIES
Complainant is Takemi Suzuki Sega Corporation, Tokyo, Japan (“Complainant”)
represented by Leslie C. McKnew, of Brobeck Phleger & Harrison LLP. Respondent is jsy, Incheon, SOUTH KOREA (“Respondent”).
The domain name at issue is <sega.biz>, registered with Hangang Systems, Inc.
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.
Judge Irving H. Perluss (Retired) is the
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 23, 2002; the Forum received a hard copy of the
Complaint on
April 25, 2002.
On April 25, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of May 15, 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 May 13, 2002.
A timely Additional Submission from
Complainant was received on May 17, 2002.
On May 30, 2002,
pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss
(Retired) as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
1. Sega Corporation (formerly Kabushiki
Kaisha Sega Enterprises, dba, Sega Enterprises and also known as Kabushiki
Kaisha Sega), bases
its STOP Complaint for the <sega.biz> domain
name on the well-established worldwide rights owned by Sega Corporation and its
affiliated entities (collectively referred
to as “Sega”) to the famous and
distinctive SEGA® marks and names. In
the United States, Sega owns numerous trademark registrations for marks that
are comprised of or include the term SEGA in connection
with a wide variety of
goods and services, including but not limited to, computer game hardware,
software and peripherals, video
game programs, machines and peripherals,
clothing, telecommunication services, online gaming services, entertainment
services, computer
services, toys, and arcade game machines.
2. Sega also uses its SEGA® marks and
names, and owns various trademark registration and pending applications for its
SEGA® marks, throughout
the world, including in countries throughout Europe,
Asia, South America, and Latin America, as well as in Australia and Canada for,
among other things, video and computer game hardware, software and
peripherals. In South Korea, the
country where Respondent is located, Sega owns numerous trademark registrations
for its SEGA® mark.
3. The subject domain name <sega.biz>
is identical to (or substantially identical to) Sega’s corporate name and trade
name, and the numerous SEGA® trademarks, service
marks, and domain names owned
exclusively by Sega.
4. Respondent has no rights or
legitimate interest in the <sega.biz> domain name. Respondent has a demonstrated pattern and
practice of registering Internet domain names to which it has no rights, and
its registration
of the <sega.biz> domain name is no
different. Specifically, Respondent was
awarded thirty (30) domain names including <exxon.biz> (which is
comprised of Exxon Corporation’s
registered mark EXXON); and <disney.biz>
(which is comprised of Disney Enterprises, Inc.’s. registered mark DISNEY).
5. Respondent’s numerous <.biz>
domain name registrations demonstrate that Respondent is engaged in a pattern
and practice of stockpiling
domain names to which it has no right or legitimate
interest, presumably, with the hope of selling those domain names to the
rightful
trademark owners or other cybersquatters for a high price. The subject domain name <sega.biz>
is merely another domain name that Respondent obtained in pursuing its domain
stockpiling pattern and that, like the other domain
names it was awarded,
Respondent has no rights or legitimate interest in the <sega.biz>
domain name.
6. There is no evidence that Respondent
ever has had any rights in a trademark or service mark that is comprised of the
distinctive term
“SEGA.” Respondent did
not file an IP Claim for the <sega.biz> domain name.
7. Respondent has never used, or undertaken
any legitimate preparations to use, the <sega.biz> domain name in
connection with a bona fide offering of goods or services.
8. Respondent registered the subject
domain name long after Sega established its rights in its family of SEGA® marks
and names in the
United States, South Korea and elsewhere in the word. Sega began using its SEGA® marks and names
at least as early as 1976. The earliest
Respondent could have registered the subject domain name would have been in
August 2001, which is twenty-five years after
Sega established its rights in
its distinctive and famous SEGA® marks and names.
9. Respondent registered the subject
domain name <sega.biz> in bad faith. Respondent has engaged in a pattern and practice of registering
<.biz> domain names that are comprised of third parties’ marks
and
generic terms, such as the <sega.biz>, <exxon .biz>, and
<disney.biz> domain names, among others.
10. Respondent registered the <sega.biz>
domain name despite receiving clear and unequivocal notice of Sega’s
established rights in its famous and distinctive SEGA® mark
and name. Pursuant to the <.biz> registry’s
policy of notifying an applicant of IP Claims that have been submitted for the
requested domain
name, Respondent received notice of Sega’s IP Claim, which
provided detailed information regarding Sega’s long-standing and established
rights in its famous and distinctive SEGA® marks and names. Respondent, however, ignored Sega’s rights
and proceeded to register the disputed subject domain name, which infringed
upon Sega’s
established trademark rights.
Respondent’s knowing decision to register the <sega.biz>
domain name despite being fully aware of Sega’s established rights evidences
Respondent’s bad faith intent to trade on Sega’s
goodwill.
11. Apart from Respondent’s receipt of
Sega’s IP Claim, Respondent clearly was aware of Sega’s established rights in
its famous and distinctive
SEGA® mark and name, and Respondent’s only
motivation for registering the subject domain name was to profit unlawfully from
the goodwill
and reputation represented by Sega’s coined SEGA® marks and names.
B. Respondent
1. The disputed domain name <sega.biz>
is not identical to Complainant’s marks, because there are many persons who
relate to the word <sega.biz> in various fields and in various
languages around the world.
2. Respondent is one of the persons who
relate to the word <sega.biz>.
He is working in a small company which has the company name “Seongsu
Gagong” and his father is the president of the company. The company was established in 1997 and
registered in Seongdong” tax office in 1998.
Its main business is processing or manufacturing related with shoe
products. In actuality, Respondent’s
family managed the business from the 1980’s but it was a home industry.
3. “Seongsu” and “Seongdong are the
administrative district names in Seoul in South Korea, and “Gagong” is a Korean
word which means
processing or manufacturing.
Thus “SEGA” is just a simplified character form of “SEongsu GAgong.”
4. Respondent has rights and a
legitimate interest in the disputed domain name. This is because Respondent had a membership identification and
password with his registrar (Hangang
Systems), and his credit card number and personal information were opened at
<.biz> domain registration periods.
Thus, he became a domain registration applicant in his needed or
favorite fields like others. Some of
Respondent’s family and friends wanted to register domains for the purpose of
their needs but some of them did not want to
disclose the personal information,
or were not familiar with computer use and the registration process. Thus, Respondent executed their needs or
lent his identification and password.
Accordingly, most of the domains registered in Respondent’s name have
other real owners, each of whom has his needs and reasons.
5. Respondent
has made demonstrable preparations to use the disputed domain name in
connection with a bona fide offering of goods and
services, before notice of
the dispute. Thus, creating the site
<worldbench.hihome.com> evidences demonstrative preparation to use for a
bona fide offering of goods
or services.
This site is being made and tested for three months for “Seongsu
Gagong,” and will mainly offer leather products.
6. Respondent’s privacy is being
invaded through the sale of his domain information by NeuLevel, Inc.
7. Respondent denies:
(a)
that there are circumstances indicating that Respondent has registered
the domain name primarily for the purpose of selling, renting
or otherwise
transferring the domain name registration to the Complainant or to a competitor
for Complainant, for valuable consideration
in excess of Respondent’s
documented out-of-pocket costs directly related to the domain name; or
(b)
that Respondent has registered the domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain
name; or
(c)
that Respondent has registered the domain name primarily for the purpose
of disrupting the business of a competitor; or
(d)
that by using the domain name, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s
website or other
online location, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s
website or location or of a product or service on Respondent’s website or
location.
C. Additional Submissions
Complainant
made a timely additional submission.
Its contentions therein are as follows:
1. Respondent first attempts to defend
his improper registration of the <sega.biz> domain name by
asserting that his family’s leather business is named Seongsu Gagong and that
he intends to use the <sega.biz> domain name for a company
website. These assertions, even if true,
offer no support for Respondent’s registration of the subject <sega.biz>
domain name. The “Seongsu Gagong”
designation affords no rights to the <sega.biz> domain name since
on its face it is entirely different from the <sega.biz> domain
name.
Moreover, the fact that SE and GA
happen to be the first two letters of the two admittedly separate and unrelated
words “Seongsu”
and “Gagong” does not establish any rights in the well-known
SEGA® mark and name, or any rights to the <sega.biz> domain
name. There is no evidence – nor could
there be – that anyone associates the words “Seongsu Gagong” with SEGA, or vice
versa.
In
making his argument, Respondent admits that his family’s company is not named
SEGA. Respondent fails to offer any
evidence or even to make any representations establishing that Respondent’s
family’s company has ever
been known as SEGA, or ever has used the term SEGA
for a bona fide offering of goods or services.
Additionally, the website that
Respondent claims he is developing for Seongsu Gagong (which is located at
<worldbench.hihome.com>
does not include the term SEGA, nor does it even
display the “Seongsu Gagong” designation (except in the copyright notice at the
bottom of the site).
2. Respondent engaged in a pattern of
registering domain names to which he has no rights, and that he at the very
least was a key contributor
to the wrongful acts of others for whom the domain
names allegedly were acquired. Such
actions, in addition to the fact that he admittedly intends to use the <sega.biz>
domain name for a commercial purpose and that he continued with the
registration despite being fully aware of Sega’s established
rights in its
famous and distinctive SEGA® marks and name, demonstrate bad faith and compels
the transfer of the domain name to Complainant
Sega Corporation, its rightful
owner.
3. The remaining contentions made by
Respondent are irrelevant, i.e.,
invasion of privacy; that the other people in the world may have rights to the
terms that are related to the subject name; and whether
Complainant owns other
domain names that include the SEGA® marks and 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.”
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.
STOP Policy ¶4(a)(i)
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.
Unlike domain name disputes brought under
the UDRP, STOP claims require that the disputed domain name be identical to a trademark or service mark
in which the Complainant holds rights.
A domain name that is merely confusingly
similar to a mark cannot be transferred through a STOP claim (although the
holder of a non-identical but similar mark could bring a UDRP
complaint when
the domain name eventually clears any other pending STOP complaints). See
Commonwealth
Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 3002) (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>).
Here, the evidence establishes
conclusively that the Complainant has at least eleven registrations with the
United States Patent and
Trademark Office for the mark SEGA® which are
identical to the domain name <sega.biz>, and the Panelist so finds
and concludes.
STOP Policy ¶4(a)(ii)
STOP Policy ¶4(c) functions similarly to
UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or
legitimate interests
in a domain name.
Under STOP policy ¶4(c), the Respondent
may demonstrate its rights or interests by proving:
i. The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name; or
ii. Before
any notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
iii. The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has
acquired no trademark or
service mark rights.
Respondent has submitted no evidence
whatever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the
Panelist finds and
concludes that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent
contends that he has made demonstrable preparations to use the subject domain
name in connection
with a bona fide offering of goods. He asserts his family’s leather business is
named “Seongsu Gagong” and that he intends to use the <sega.biz>
domain name for a company website.
The
Panel has difficulty in finding Respondent’s assertion to be credible.
Moreover, that SE and GA happen to be the
first letters of the two admittedly separate and unrelated words “Seongsu” and
“Gagong”
does not establish any rights in the well-known SEGA® mark and name,
or any rights to the <sega.biz> domain name. There is no evidence that anyone associates
the name “Seongsu Gagong” with SEGA.
In addition, Respondent has admitted that
his family’s company is not named SEGA.
Lastly,
the website that Respondent claims he is developing for Seongsu Gagong (which
is located at <worldbench.hihome.com>
does not include the term SEGA, nor
does it display the “Seongsu Gagong” designation (except in the copyright
notice at the bottom
of the site).
Accordingly, the Panel finds and
concludes that Respondent does not fall within ¶4(c)(ii). There have been no demonstrable preparations
to use the subject domain name for a bona fide offering of goods.
Thus, Respondent does not have a
legitimate interest or rights to the subject domain name.
STOP Policy ¶4(a)(iii)
STOP Policy ¶4(b) provides four
non-exclusive examples of circumstances that, if proven, will satisfy the bad
faith requirement of
STOP Policy ¶4(a)(iii).
To establish bad faith under the STOP
Policy, a Complainant need only prove either
registration or use of the domain
name in bad faith, not both as the UDRP requires.
STOP claims differ from UDRP claims in
one very significant and fundamental way.
Unlike the UDRP, under STOP when a registrant (Respondent) registers a
domain name for which an IP Claim was previously filed, the
registrant is
notified of the potential for trademark infringement before being allowed to
proceed with the registration. One
Panel has recognized that registration of a domain name despite such notice in
appropriate circumstances, could “almost preclude
any possibility of registration
in good faith of a domain name. . . .” Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding
bad faith where Respondent registered the <genelogic.biz> domain name
“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”).
In the Panel’s view, Complainant has gone
much further and has established Respondent’s bad faith registration under STOP
Policy ¶4(b)(ii).
Under UDRP ¶4(b)(ii), a Complainant may
demonstrate Respondent’s bad faith by showing that Respondent registered the
domain name for
the purpose of preventing Complainant from registering domain
names that reflect its mark(s), provided Respondent has engaged in
a pattern of
such conduct. Under STOP Policy
¶4(b)(ii), the Complainant may similarly prove bad faith by showing the
Respondent registered the domain name for
the purpose of preventing Complainant
from registering domain names reflecting its mark(s). However, under the STOP provision, there is no “pattern” of
conduct requirement. Thus, Panels have
found bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at
issue and no prior history of trademark
infringement was established. See Peachtree Software v. Scarponi, FA
102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy
¶4(b)(ii), noting that it was reasonable to conclude
Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding
domain name, given Respondent’s knowledge
of Complainant’s mark and Respondent’s lack of rights or interest in the mark).
But here, the Panel finds substantive
evidence and, thus, concludes that Respondent has engaged in a pattern of
conduct (even though
a “pattern” is not required) for the purpose of preventing
Complainant and others with registered trademarks from requesting domain
names
that reflect their marks. Indeed, the
proof is that this is a classic case of cybersquatting with the almost conclusive
presumption of the acquisition of domain
names for sale.
Complainant has demonstrated that
Respondent was awarded thirty <.biz> domain names, some of which are
comprised of third parties’
registered trademarks, such as the
<exxon.biz> domain name (which is comprised of Exxon Corporation’s
registered mark EXXON)
and the <disney.biz> domain name (which is
comprised of Disney Enterprises, Inc.’s registered mark DISNEY). Respondent contends that he registered these
names for family and friends. Nevertheless,
he engaged in a pattern of registering domain names to which he had no rights,
and he, at the very least, was a key
contributor to the wrongful acts of others
for whom the domain names allegedly were acquired.
DECISION
Respondent has requested the Panel to
investigate and to consider the alleged violation of his privacy rights by a
registrar. The Panel does not have
authority to consider such a charge, but, if authorized, he would conclude that
Respondent’s privacy rights
were not violated.
Registration of domain names is a public matter, just as is the
registration of trademarks.
Based on the above findings and
conclusions, it is decided that the domain name <sega.biz>
registered by Respondent jsy, shall be and the same is transferred to
the Complainant Takemi Suzuki Sega Corporation.
JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: June 11, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/847.html