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Generic Top Level Domain Name (gTLD) Decisions |
Complainant
is Academy Ltd., Katy, TX, USA
(“Complainant”) represented by Laura
D. Robertson, of Fulbright & Jaworski LLP. Respondent is today, Seoul, SOUTH KOREA (“Respondent”).
The domain
name at issue is <academy.biz>,
registered with Yesnic Co.
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.
David A. Einhorn appointed 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 27, 2002; the Forum
received a hard copy of the Complaint on
April 28, 2002.
On May 9,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”), setting
a deadline of May 29, 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 22, 2002.
Additional
submissions were received from Complainant on May 29, 2002.
On June 6, 2002, pursuant to STOP Rule 6(b), the Forum appointed David A.
Einhorn as the single Panelist.
Transfer of
the domain name from Respondent to Complainant.
[a.] Academy, Ltd. (hereinafter “Complainant”)
owns the mark ACADEMY for use in connection with retail store services in the
field of western
wear; hunting, fishing and sporting equipment and outfitting;
sporting and athletic equipment, gear and footwear; and outdoor and
recreational equipment, outfitting and merchandise, as well as the U.S.
Registration No. 1,922,968 corresponding thereto. Predecessors of Academy, Ltd. commenced use of the mark ACADEMY
in 1951 and have used the mark in commerce to identify retail store
services
continuously since that time.
[b.] The domain name, <academy.biz>,
is identical to Complainant’s mark.
[c.] Respondent has no rights or legitimate
interest in the domain name, <academy.biz>. To the best of Complainant’s knowledge,
Respondent does not own a trademark registration for the mark ACADEMY. Additionally, Respondent is not known by the
name ACADEMY and it does not operate a business or other organization under the
name
ACADEMY. Instead, Respondent goes
by the name “Today”. Further,
Respondent has made no demonstrable preparation to use the domain name <academy.biz>
in connection with a bona fide offering of goods or services.
[d.] Respondent registered the domain name <academy.biz>
in bad faith. Complainant’s ACADEMY
mark is well-known and Respondent either knew or should have known of its
rights in this mark. Moreover, research
into the ICANN-Accredited registrar for <academy.biz> has shown
that the registrar is one of the top offenders of cybersquatting .biz domain
names. Specifically, the registrar in
question registers .biz domains by providing fake trademark registration
numbers.
[a.] The word “academy” is a common noun that
indicates a school for training in a specific art or skill. “Academy” is a generic term.
[b.] ACADEMY is not a famous trademark.
[c.] Respondent has never heard of Complainant
or its goods and services.
Panelist has
reviewed and considered the additional submission of Academy, Ltd. A synopsis of arguments in that submission
is as follows:
[a-b] Jongchul Jeong filed a response to Academy,
Ltd.’s Complaint. While Mr. Jeong is
listed as an administrative assistant for registrant, there is no evidence that
he is personally the current owner
of the domain, <academy.biz>.
[c] Respondent did not dispute that the domain
name, <academy.biz>, is identical to Complainant’s trademark.
[d] Respondent failed to submit any evidence that
it owns or is a beneficiary to a trademark or service mark identical to the
domain,
<academy.biz>.
[e] Respondent failed to show that it has used
or made demonstrable preparation to use the domain, <academy.biz>
before receiving notice of this dispute.
[f] Respondent failed to prove that it, or an
associated business or organization, has been commonly known by the domain, <academy.biz>.
[g] <academy.biz> is a well-known
mark subject to an existing trademark registration and therefore, Respondent
had constructive notice of Complainant’s
rights when it sought registration of <academy.biz>.
The domain
name <academy.biz> is identical to Complainant’s claimed
registered trademark, ACADEMY.
Complainant
alleges that it has rights in the mark deriving from the U.S. federal
registration #1,922,968 for the mark, ACADEMY.
Complainant does not submit a status copy or other evidence of this
registration. The Panel notes that
Complainant is probably intending to refer to trademark registration #1,911,968
for ACADEMY.
“Academy” is
a common term in the English language.
Complainant’s
bare allegation that the mark ACADEMY is well-known or famous, without any
other explanation or evidence in support
thereto, is insufficient to prove this
contention.
Complainant’s
argument that the Yesnic Co. registrar is in the business of registering .biz
domains by providing fake trademark registration
numbers is not accepted by
this Panel as having been established.
On the contrary, Complainant’s own Exhibit 5 consists of a document stating
that “the large number of generic words applied for by
this registry may turn
out to have genuine trademark numbers”.
Respondent
has not offered evidence that it has any right or other legitimate interests in
the mark ACADEMY.
Complainant
has failed to prove that the domain name <academy.biz> was
registered or used by Respondent in bad faith.
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.
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 rights in the mark ACADEMY by reason of its registration of the mark with
the United States Patent and Trademark Office.
Accordingly,
Paragraph 4(a)(i) of the STOP Policy has been satisfied by Complainant.
Respondent
has not shown that it has any rights or legitimate interests in the mark
ACADEMY. Respondent has not alleged
that it owns a trademark identical to ACADEMY.
Neither has Respondent alleged that it has made demonstrable preparation
to use this domain, nor that it, or an associated business
or organization, has
been commonly known by the domain name, <academy.biz>.
Accordingly,
Paragraph 4(a)(ii) of the STOP Policy has been satisfied by Complainant.
“Academy” is
a common term in the English language.
Respondent’s assertion that it has never heard of Complainant or of its goods
or services is not rebutted by Complainant.
Complainant alleges that Respondent had constructive knowledge of its
mark because the mark is well-known.
This argument is rejected in
light of the fact that Complainant has provided no evidence to support its bare
allegation that the mark is well-known or famous.
Accordingly,
Paragraph 4(a)(iii) of the STOP Policy has not been satisfied by Complainant.
The Complaint of Academy, Ltd. with respect to the domain
name <academy.biz> is hereby dismissed. Accordingly, this Panel orders that the domain name at issue not
be transferred from the Respondent to the Complainant. As Respondent has not shown that it has any
rights or legitimate interests in the <academy.biz> domain name,
subsequent challenges under the STOP Policy against this domain name shall be permitted.
David A. Einhorn, Panelist
Dated: June 19, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/908.html