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Generic Top Level Domain Name (gTLD) Decisions |
National Aeronautics and Space
Administration v. Ko Suk Ju
Claim Number: FA0204000110865
Complainant
is National Aeronautics and Space
Administration, Washington, DC, USA (“Complainant”) represented by John
Mannix. Respondent is Ko Suk Ju, KyongsangNam Do, KOREA
(“Respondent”).
The
domain name at issue is <nasa.biz>,
registered with Yesnic Co. Ltd.
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.
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 25, 2002; the Forum
received a hard copy of the Complaint on
April 30, 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.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <nasa.biz>
domain name is identical to Complainant’s NASA mark.
2. Respondent has no rights or legitimate
interests in the <nasa.biz> domain name.
3. Respondent registered the <nasa.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant’s NASA mark has been
established by congressional statute and regulation, common law use and foreign
trademark registration
(e.g., Britain and Northern Ireland Reg. No. 2067457B
issued April 10, 1996 and Italy Reg. No. 00794878 in 1997).
By an Act of Congress of the United
States, the National Aeronautics and Space Administration (NASA) was
established on July 29, 1958
(42 U.S.C. 2451). The words incorporated in the
acronym are protected from misuse by any person in accordance with 42 U.S.C.
2459b, section 311 of the “National Aeronautics and Space Act of 1958.”
Respondent registered the contested
domain name on March 27, 2002 and has yet to establish a purpose for the domain
or develop an
affiliated website.
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
has used the NASA mark on various goods and services since 1958. NASA and the
NASA insignia have been used, and continue
to be used, on a number of
materials, educational and functional. Complainant has established that it has
rights in the NASA mark
through congressional enactment, registration and
subsequent continuous use since Complainant’s formation in 1958. Complainant
need
not register in the U.S. the federally protected mark for it to have
rights in the NASA mark. See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the Complainant's trademark or service mark be
registered
by a government authority or agency for such rights to exist. Rights in the mark can be established by pending
trademark applications); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy
does not require “that a
trademark be registered by a governmental authority
for such rights to exist”).
Respondent’s
<nasa.biz> domain name incorporates Complainant’s mark in its
entirety. Therefore, Respondent’s domain name is identical to Complainant’s
NASA
mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate 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 has established that it has
common law rights in the disputed domain name because it has used the NASA mark
extensively
since its congressional formation in 1958. Complainant’s NASA mark
is a prominent internationally recognized mark due to Complainant’s
significant
achievements, such as, International Space Station, Space Shuttle Discovery,
Hubble Space Telescope, Mars Missions, Skylab,
among others. Respondent has not
come forward to proffer any evidence that it has rights in the NASA mark
anywhere in the world.
Complainant’s investigation and search of the U.S.
Patent and Trademark Office’s online database revealed that Respondent has no
applications or registrations on file for the NASA mark. Therefore, Respondent has
no rights or legitimate interests in the <nasa.biz> domain name
pursuant to STOP Policy ¶ 4(c)(i).
Respondent has failed to make use of the
contested domain name and has also failed to provide this Panel with any
evidence establishing
a valid course of business under the <nasa.biz> domain
name. Therefore, Respondent’s registration of the <nasa.biz> domain
name is not in connection with a bona fide offering of goods and services under
STOP Policy ¶ 4(c)(ii). Failure to provide
evidential confirmation as to the
use of the disputed domain name leads to the inference that one does not exist.
See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4,
2002) (finding that in order to show rights or legitimate interests in the
disputed domain name
Respondent must establish with valid evidence “a course of
business under the name, or at least significant preparation for use of
the
name prior to learning of the possibility of a conflict” with an IP Claimant); see
also Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb.
Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered
the domain name <foxstudios.biz>
in order to get a website address for
her planned dance studios, without evidentiary support, was insufficient to establish
that
she had rights or interests in respect to the domain name at issue).
Additionally, it can be inferred that
Respondent’s planned use of a domain name identical to Complainant’s mark would
be to divert
Internet users interested in Complainant’s services to
Respondent’s website; this also violates the STOP Policy. See Credit Suisse
Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum
Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered
to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <nasa.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is only known
to this Panel as Ko Suk Ju. Furthermore, one would be hard-pressed
to find a
person who could show rights or legitimate interests in a historical mark that
has existed since 1958. The famous nature
of Complainant’s mark prevents
Respondent from claiming that it has been commonly known by an identical mark. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in domain name when Respondent is not known
by the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to
demonstrate any rights or legitimate interests in the <twilight-zone.net>
domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent had constructive notice of the
NASA mark when it registered the domain name by virtue of the STOP registration
procedure,
foreign trademark registrations and international fame of the NASA
mark. Therefore, it can be inferred that Respondent registered
the domain name
for the purpose of preventing Complainant from registering its NASA mark
exhibiting bad faith pursuant to STOP Policy
¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S
Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of
a domain name goes further than merely correctly using in an advertisement
the
trade mark of another in connection with that other’s goods or services: it
prevents the trade mark owner from reflecting that
mark in a corresponding
domain name”); see also 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 interests in the
mark). Respondent was aware that it was intentionally infringing upon
Complainant’s mark. See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence
of bad faith includes actual or constructive knowledge of commonly known mark
at the time of registration).
Additionally, due to the aforementioned
international fame associated with Complainant’s mark, Respondent was
constructively aware
of Complainant’s NASA mark and the opportunities available
to those affiliated with it. The <nasa.biz> domain name is
identical to Complainant’s NASA mark resulting in the likelihood that Internet
users will believe that there is some
affiliation between Respondent and
Complainant; notwithstanding the fact that Respondent had no authorization to
make use of Complainant’s
mark. Registration of the <nasa.biz> domain
name, despite its being identical, is evidence of bad faith pursuant to STOP
Policy ¶ 4(b)(iv) since Respondent will inevitably
attract unsuspecting
Internet users seeking Complainant’s website based on the goodwill associated
with its famous mark. See Red Bull
GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s
expected use of the domain name <redbull.org> would lead people
to
believe that the domain name was connected with Complainant, and thus is the
equivalent to bad faith use); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the Start-Up Trademark Opposition Policy, the Panel concludes
that relief shall
be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <nasa.biz> 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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