START-UP TRADEMARK OPPOSITION POLICY

DECISION

U.S. Bancorp Licensing, Inc. v. No Kwan-Ho

Claim Number: FA0204000112606

PARTIES

Complainant is U.S. Bancorp Licensing, Inc., Minneapolis, MN, USA (“Complainant”) represented by Michael L. Gannon, of Fish & Richardson, P.C., P.A.  Respondent is No Kwan-Ho, Chungnam, SOUTH KOREA (“Respondent).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <usbank.biz>, 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.

Sandra Franklin 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 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.

On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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 June 7, 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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The domain name <usbank.biz> is identical to Complainant’s US BANK mark.

Respondent has no rights or legitimate interests in the <usbank.biz> domain name.

Respondent registered the <usbank.biz> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns trademark rights in the US BANK mark, which is registered with the United States Patent and Trademark Office as Reg. Nos. 1,481,868 and 2,445,731.  Complainant also has a registered trademark for WWW.USBANK.COM (Reg. No. 2,493,878).  Complainant has used these US BANK marks in connection with its banking and financial-related services since at least as early as 1963. 

Respondent registered the <usbank.biz> domain name on March 27, 2002.  Complainant’s investigation shows that Respondent has made no use of, or demonstrable preparations to use, the <usbank.biz> domain name.  However, Complainant’s investigations revealed that Respondent registered over forty “.biz” domain names and all of the domain names that resolve to a website advertising the sale of the attached domain name.  The <usbank.biz> domain name does not resolve to such a website.

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 has established its rights in the US BANK mark through continuous use in commerce and registration with the United States Patent and Trademark Office.  Respondent’s <usbank.biz> domain name contains Complainant’s entire US BANK mark with only a space missing between “US” and “BANK.”   The absence of a space is without significance when conducting a STOP Policy ¶ 4(a)(i) analysis.  Therefore, Respondent’s <usbank.biz> is identical to Complainant’s US BANK mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s RADIO SHACK mark); see also Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding that the domain name <sydneyoperahouse.net> is essentially identical to Complainant’s famous trademark SYDNEY OPERA HOUSE).

The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the US BANK mark.  Because Respondent has not submitted a Response in this matter, the Panel may properly presume it has no rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s 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 no trademark or service mark registrations for Respondent in regards to US BANK, or any variation thereof, in a number of countries.  Also, Respondent has not come forward to offer any evidence that it owns or is the beneficiary of a trade or service mark that is identical to <usbank.biz> pursuant to STOP Policy ¶ 4(c)(i).  Thus, Respondent has no rights or legitimate interests in respect of <usbank.biz>.  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).

Respondent registered over forty domain names (e.g., <koreabank.biz>, <unitedstatesbank.biz>, <pcbank.biz>, <marketbank.biz>, <billpay.biz>, etc.) and offered them for sale, which leads to the inference that Respondent registered <usbank.biz> for the purpose of selling it.  Registering a domain name for the purpose of selling it does not constitute rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(ii).  See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

Respondent has failed to come forward and offer evidence that it is commonly known by USBANK or <usbank.biz>.  Respondent is only known to this Panel as No Kwan-Ho.  Therefore, Respondent has not met the requirements of STOP Policy ¶ 4(c)(iii).  See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supported a finding for Complainant under the UDRP); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Prior to registering <usbank.biz>, Respondent had constructive notice of Complainant’s rights in the US BANK mark due to Complainant’s registration of the mark on the Principal Register, the mark’s internationally established reputation, and the unique nature of the STOP registration procedure.  Therefore, Respondent registered the <usbank.biz> domain name in bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also 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 Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it 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”).

As previously stated, Respondent is engaged in the business of registering and selling “.biz” domain names.  As such, it can be inferred that Respondent intends to sell the <usbank.biz> domain name.  Therefore, Respondent’s registration of <usbank.biz> constitutes bad faith under STOP Policy ¶ 4(b)(i).  See Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that “the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that . . . Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration"); see also Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the domain name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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 <usbank.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Sandra Franklin, Panelist

Dated: June 18, 2002

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