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Generic Top Level Domain Name (gTLD) Decisions |
START-UP TRADEMARK
OPPOSITION POLICY
DECISION
Cisco Technology Inc. v.
Netfuture
Claim Number:
FA0204000110850
PARTIES
Complainant is Cisco
Technology Inc., San Jose, CA, USA (“Complainant”) represented by Leslie
C. McKnew, of Brobeck Phleger & Harrison. Respondent is Netfuture, Seoul, KOREA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue
is <cisco.biz>, registered with Gabia, Inc.
PANEL
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.
R. Glen Ayers served 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 25, 2002; the Forum received a
hard copy of the Complaint on
April 27, 2002.
On May 6, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of May 28, 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 28, 2002.
Complainant’s Additional
Submission was timely received and determined to be complete on May 31, 2002.
On June 8, 2002,
pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers as the single
Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant Cisco
Technology, Inc., contends under “the Start Up Trademark Opposition Policy”
(“STOP”), that Respondent Netfuture,
a South Korean entity, has improperly
registered <cisco.biz>.
Under STOP, it asserts that the name, except for “.biz” is identical to
trademarks which date back as far as 1984.
Cisco asserts that the
Respondent has no rights in the name and offers evidence that it has never used
the name, has no such rights
from Complainant, and has made a practice of
registering “.biz” domain names which are comprised of famous marks, such as
LevisÔ
and CasioÔ.
As to bad faith, Cisco
asserts the registration of trademark names and Respondent’s receipt of notice
of Cisco’s rights in the name. Cisco
also asserts that Respondent certainly
knew of its rights at the time it registered the domain name.
B. Respondent
Respondent does not
dispute the identity of the trademark and the domain name.
Respondent
states that it has been a reseller of Cisco products; the purpose of the domain
“was to construct an online shopping mall
exclusively selling” Cisco products.
Respondent asserts that
it had no “bad faith” and had no intention of selling the domain name. It only wished to sell Cisco systems.
C. Additional
Submissions
Cisco timely filed its
“Additional Submission.” Cisco asserts
that Respondent’s alleged sales of Cisco products in the past and alleged
intent to sell those products in the future
ignores the fact that it made no
such sales efforts using the domain name prior to the filing of the Complaint. Cisco also asserts that the registration of
the mark as a domain name remains improper, even if the Respondent had the
intent to use
the domain to market Cisco products. Cisco goes on to assert that the Response fails to dispute any of
the controlling facts in the STOP Complaint.
STOP
requires three findings:
i. The domain name is identical to a
trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or
legitimate interests in respect of the domain name;
iii. The domain name has been registered or
is being used in bad faith.
Here, Complainant has
established all three elements. First,
Respondent does not dispute that its domain name and trademark “Cisco” are
identical.
Cisco has also shown
that Respondent has no rights in the name and Respondent has failed to rebut
the prima facie case made by Cisco.
Under STOP Policy ¶4(a)(ii) and ¶4(c), the Respondent has failed to
demonstrate that it “is the owner or beneficiary of a trademark
identical to
the domain name.;” or, that it has used the domain name or made “demonstrable
preparations for use” before notice of
the dispute; or, that it has been
commonly known by the domain name even if it has no trademark rights.
All Respondent says is
that it was a distributor of Cisco products and intended to use the domain name
to sell Cisco products. This sort of
defense has been routinely rejected by Panels under both STOP and UDRP. See, e. g., Peachtree Software v.
Scarponi,, FA 102781 (Nat. Arb. Forum Mar. 4, 2002).
Finally, Complainant
Cisco’s pleadings are sufficient to show bad faith under STOP Policy ¶¶
4(a)(iii) and 4(b). Although there is
no evidence that Respondent has offered any name for sale, the registration of
well-known marks by Respondent allows
an inference of bad faith. See STOP Policy ¶4(b)(ii) and Peachtree
Software, cited above.
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.”
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
demonstrated rights in the mark; the domain name is identical, and Respondent
does not dispute this issue.
Respondent’s Rights or
Legitimate Interests
As Complainant has
demonstrated that Respondent has no has rights or legitimate interests in the
name; Respondent has failed completely
to show that it has any rights in the
name.
Registration or Use in Bad Faith
The
name was certainly registered in bad faith.
While there has been no apparent use of the name, the registration of
this very famous name, a trademark with which the Respondent
was clearly
familiar prior to registration, along with the registration of other famous
marks as “biz” domain names permits the Panel
to find bad faith even if the
Respondent has made no use of the marks and has made no attempt to market this
or any other domain
name based upon a famous mark.
DECISION
The domain name shall be
transferred to Complainant; subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
R. Glen Ayers, Panelist
Dated: June 23, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/933.html