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Generic Top Level Domain Name (gTLD) Decisions |
Intel Corporation v. TongYang Life
Insurance Co.
Claim Number: FA0204000110788
Complainant
is Intel Corporation, Santa Clara,
CA, USA (“Complainant”) represented by Bobby
A Ghajar, of Howrey Simon Arnold
& White. Respondent is TongYang Life Insurance Co., Seoul,
KOREA (“Respondent”).
The
domain name at issue is <intel.biz>,
registered with Registration
Technologies, Inc.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James P. Buchele
as the single Panelist. The undersigned Panelist 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.
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 23, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 7, 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”).
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.
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
The
<intel.biz> domain name is identical to Complainant’s INTEL mark.
Respondent
has no rights or legitimate interests in the <intel.biz> domain
name.
Respondent
registered the <intel.biz> domain name in bad faith.
B.
Respondent
Respondent
has failed to submit a Response in this proceeding.
Complainant was founded in 1968 as a
semi-conductor company involved in the design and manufacture of memory
chips. Since 1969, Complainant has
continuously offered and sold products and services under the INTEL mark. Over the years, Complainant has expanded its
business from manufacturing semi-conductors to developing, manufacturing and
selling
a variety of Internet, networking, communication and computing
products. As the world’s largest
semi-conductor manufacturer, Complainant is well known worldwide.
Complainant has numerous registrations
with the United States Patent and Trademark Office for the INTEL mark. The earliest registrations for the INTEL
mark are Reg. No. 914,978 issued on June 15, 1971 and Reg. No. 938,772 issued
July 25, 1972.
Respondent registered <intel.biz>
on March 27, 2002 and has developed no use for the domain name.
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 established its rights in the INTEL mark through registration with the
United States Patent and Trademark Office and
subsequent continuous use.
Respondent’s
<intel.biz> domain name is identical to Complainant’s INTEL mark
both visually and phonetically, but for the inconsequential addition of “.biz.” Therefore, the Panel finds that STOP Policy
¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights
to and interests in the INTEL mark and Respondent has not submitted a Response
in this proceeding. Therefore, the
Panel may presume Respondent has no such rights or interests in the disputed
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ 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).
Respondent has offered no evidence that
it holds rights in a mark identical to the <intel.biz> domain name
pursuant to STOP Policy ¶ 4(c)(i).
Thus, the Panel finds that no such rights or legitimate interests
exist. 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).
Due to the fame Complainant’s INTEL mark
enjoys, it can be inferred that Respondent registered the <intel.biz> domain
name with the intent to capitalize on the goodwill of the INTEL mark by
attracting Complainant’s customers by way of causing
confusion with
Complainant’s mark. Such behavior does
not constitute a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). See William L.
Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21,
2002) (finding the Respondent’s
“intent to trade [on] the goodwill of Complainant’s mark, by attracting
Internet users confused as to the
likely affiliation between Complainant and
Respondent’s website” indicated the Respondent had no rights or legitimate
interests pursuant
to STOP Policy ¶ 4(c)(ii)); see also Nat’l Acad.
Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic
attempt to attract Internet users via Complainant’s famous GRAMMY mark,
therefore, Respondent
had no rights or legitimate interests); see also 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 and
Respondent did not come forward to offer any evidence that it is commonly known
by INTEL or
<intel.biz>.
Respondent is only known to this Panel as TongYang Life Insurance. Furthermore, Respondent was not a licensee
of Complainant’s, nor is Respondent authorized to use the INTEL mark in any
way. Therefore, Respondent has not met
the requirements of STOP Policy ¶ 4(c)(iii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and
never applied for a license or permission from Complainant to use the
trademarked name); 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.
Respondent was on notice of Complainant’s
rights in the INTEL mark at the time it registered the <intel.biz>
domain name due to the fame of the INTEL mark, the mark’s registration on the
Principal Register of the United States Patent and
Trademark Office, and the
unique STOP procedure. Respondent’s
registration of <intel.biz>, despite notice of Complainant’s
right, constitutes bad faith. See
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 Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive
notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also
Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4,
2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it
registered the
disputed domain name, because Respondent received notice of
Complainant’s IP Claim. Respondent’s
registration of the disputed domain name despite this notice when Respondent
had no right or legitimate interest in the
domain name is evidence of bad
faith”).
Due to the notoriety of Complainant’s
INTEL mark, any use by Respondent of <intel.biz> would constitute
an attempt to attract Internet users by creating a likelihood of confusion with
Complainant’s INTEL mark. Therefore,
Respondent’s registration constitutes bad faith pursuant to STOP Policy ¶
4(b)(iv). See Fluor Corp. v.
Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the
Respondent’s <fluor.biz> domain name was identical to the
Complainant’s
FLUOR mark, Internet users would likely believe an affiliation between the
Respondent and Complainant); see also Pillsbury Co. v. Prebaked
Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding
registration of a domain name identical to Complainant’s mark to be in bad
faith
under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and
Complainant).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
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 <intel.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.
James P. Buchele, Panelist
Dated: June 25, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/950.html