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Generic Top Level Domain Name (gTLD) Decisions |
BEA Systems Inc. v. Park Sung Jo
Claim Number: FA0204000110843
PARTIES
Complainant
is BEA Systems Inc., San Jose, CA,
USA (“Complainant”) represented by Ronit
M Alcheck, of Brobeck Phleger &
Harrison. Respondent is Park Sung Jo, Seoul, SOUTH KOREA
(“Respondent”).
The
domain name at issue is <bea.biz>,
registered with Netpia.
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.
Alan
L. Limbury Esq., 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 26, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
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 by the Forum to be complete on May
13, 2002.
On 31 May 2002, pursuant to STOP Rule 6(b), the Forum
appointed Alan L. Limbury Esq.
as the single Panelist.
The substance of the Response was as follows:
“I
can not understand, read and write English correctly. And the
language of the Registration Agreement was Korean.
STOP rule
10.2 , rule 11.1 and 11.2 said that:
In
all cases, the Panel shall ensure that the Parties are treated with equality
and that each Party is given a fair opportunity to
present its case.
Unless
otherwise agreed by the Parties, or specified otherwise in the Registration
Agreement, the language of the administrative proceeding
shall be the language
of the Registration Agreement, subject to the authority of the Provider or the
Panel, as the case may be, to
determine otherwise, having regard to the
circumstances of the administrative proceeding.
The
Panel may order that any documents submitted in languages other than the
language of the administrative proceeding be accompanied
by a translation in
whole or in part into the language of the administrative proceeding.
Please
allow to change of language of the administrative proceeding from English
to Korean.
On 3 June 2002
the Forum informed the Panel that the Forum, as the Provider, has chosen to
proceed using English as the language for this administrative proceeding as
provided for
under STOP Rule 11, noting that all STOP Respondents have already
conducted much of the registration process in English. The process included NeuLevel's English
language notification of the IP Claim and specific instructions concerning
proceeding with
the application despite the existence of such a claim.
Respondents had to affirmatively respond to this notification and request
that
the application proceed despite the presence of an IP Claim. These steps were conducted in English.
On 4 June 2002
the Panel gave the following direction:
“Pursuant
to STOP Rule 11(a), the Forum has determined that the language of the
proceeding shall be English. The Panel
therefore rejects the Respondent's request that the language of the proceeding
be changed from English to Korean.
Under STOP Rules 10(a) and 10(b), the Panel is prepared to afford the
Respondent a further 14 calendar days (until June 18, 2002)
within which to
file a Response in the English language. The time for the Panel's decision will
be extended accordingly in due course.”
No
Response in the English language was filed by 18 June 2002 or at all.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is the registered proprietor in the United States, Korea and numerous other
countries of the famous trademark BEA in connection
with computer software,
custom software development services and other related services. The disputed
domain name, <bea.biz> is identical to that mark.
Respondent
has no rights or legitimate interest in the disputed domain name because
·
he does not
operate any business, offer any goods or services or otherwise use the domain
name in commerce;
·
Complainant
has not licensed Respondent to use its mark; and
·
passive
holding cannot demonstrate legitimacy.
The
disputed domain name was registered in bad faith because
·
it
was registered long after Complainant established its rights in its BEA mark in
the United States, Korea and elsewhere;
·
Respondent
has reserved at least 42 <.biz> domain names comprising the well-known
names of cities and organizations, despite
having no apparent rights to any of
the marks identified in those domain names; and
·
under
the STOP Policy, Respondent received an email specifically informing him that
Complainant had filed an Intellectual Property
claim and providing him details
as to the exact mark, the owner and a description of the goods and services
covered by the claimed
mark and complete contact information “so that the .biz
applicant could be under no illusions about the likelihood of a contest over
the registration of the mark or who [sic] to contact if there were any question
in his or her mind.” See Gene
Logic, Inc. v. Cho Kyu Bock, FA 103042 (Mar. 4, 2002). This notice precludes any possibility of
registration in good faith of the <bea.biz> domain name.
These
facts compel the conclusion that Respondent registered the disputed domain name
primarily to create an association with Complainant’s
mark, to attract business
from Complainant, to prevent Complainant from registering the disputed domain
name and generally to disrupt
Complainant’s business.
B.
Respondent
No
substantive Response was filed.
Complainant is entitled to the relief
which it seeks.
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 be filed only when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property claim form. Therefore, every STOP proceeding, properly brought, 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.
Failure to file a
substantive response
The Panel draws two inferences where a Respondent
has failed to submit a substantive Response: (a) the Respondent does not deny
the
facts which the Complainant asserts and (b) the Respondent does not deny
the conclusions which the Complainant asserts can be drawn
from those facts:
see Reuters Ltd v. Global Net 2000, Inc. (WIPO D2000-0441). See also Hewlett-Packard
Co. v. Full System (FA 94637); David G. Cook v. This Domain is For Sale
(FA 94957) and Gorstew Jamaica v. Travel Concierge (FA 94925).
Here,
Respondent must have received and responded to communications in English in
order to register the disputed domain name. Although
claiming not to
understand, read or write English correctly, Respondent managed to do so
perfectly well in the brief Response that
was filed, confined as it was to a
reasoned request for the proceeding to be conducted in English. The Respondent
having failed to
take advantage of the further opportunity extended to him by
the Panel to file a substantive Response in the English language, and
in the
absence of any request on the part of Respondent for a further extension of
time, the Panel finds that Respondent must be
taken to have understood and to
have conceded the correctness of Complainant’s assertions and the inferences to
be drawn from them.
Complainant
has exhibited copies of trademark registration details for its mark BEA. The
Panel is satisfied on this score. The disputed
domain name is identical to
Complainant’s mark.
Respondent
must be taken to have conceded Complainant’s assertions. These circumstances
are sufficient to constitute a prima
facie showing by Complainant of absence of rights or legitimate interest in
the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by
concrete evidence that it does have rights or legitimate interests
in that
name: see Do The Hustle, LLC v.
Tropic Web (D2000-0624) and the cases there cited.
Since Respondent has made no such
showing, the Panel finds that Complainant has established this element.
Respondent
must be taken to have conceded Complainant’s assertions, in particular that Respondent had notice of Complainant’s Intellectual
Property claim before he registered the disputed domain name and that
Respondent
registered the disputed domain name primarily to create an
association with Complainant’s mark, to attract business from Complainant,
to
prevent Complainant from registering the disputed domain name and generally to
disrupt Complainant’s business. On the material
before the Panel, there is
nothing inconsistent with Complainant’s assertions and the Panel accepts them.
Accordingly Complainant has established this element.
DECISION
The Panel directs that the domain name
<bea.biz> be transferred to Complainant and determines that
subsequent challenges under the STOP Policy against this domain name shall
not be permitted.
Alan L. Limbury Esq., Panelist
Dated: 21 June 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/930.html