DECISION

STMicroelectronics, Inc. v. Park Hyunsuk a/k/a STMicro.com

Claim Number:  FA0301000143711

PARTIES

Complainant is STMicroelectronics, Inc., Carrollton, TX, USA (“Complainant”) represented by Molly Buck Richard of Thompson & Knight LLP. Respondent is Park Hyunsuk a/k/a STMicro.com, Seoul, Korea (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stmicro.com>, registered with Onlinenic, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 31, 2003; the Forum received a hard copy of the Complaint on February 3, 2003.

On February 10, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <stmicro.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@stmicro.com by e-mail.

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 March 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <stmicro.com>, is confusingly similar to Complainant’s STMICROELECTRONICS mark.

2. Respondent does not have any rights or legitimate interests in the <stmicro.com> domain name.

3. Respondent registered and used the <stmicro.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has established in this proceeding that it holds marks for STMICROELECTRONICS registered with the United States Patent and Trademark Office (“USPTO”), including Reg. Nos.1,526,566 (registered February 28, 1989), 2,356,498 (registered June 13, 2000) and 2,605,445 (registered August 6, 2002). Complainant also holds numerous international marks, including trademark registrations in South Korea where Respondent is located. Complainant registered the <stmicroelectronics.com>, <st.com> and <stm.com> domain names.

Respondent registered the <stmicro.com> domain name August 5, 2001. Respondent is using the disputed domain name to redirect Internet users to <etour.com>, a portal to pornographic websites.

DISCUSSION

Paragraph 15(a) of the 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the STMICROELECTRONICS mark through registration with the USPTO and international trademark registrations.

The domain name registered by Respondent, <stmicro.com>, is confusingly similar to Complainant’s STMICROELECTRONICS mark because the disputed domain name simply deletes the word “electronics” from Complainant’s mark. A deletion of a word from an identifiable mark that is owned by another makes the disputed domain name confusingly similar. See Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Seventh Summit Ventures, FA 133621 (Nat. Arb. Forum Dec. 31, 2002) (finding that the deletion of the word LINES from Complainant’s mark does not prevent a finding of confusing similarity, as the dominant feature of the domain name remains the relevant portion of Complainant’s DELTA AIR LINES mark); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent did not submit a Response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, Respondent failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the <stmicro.com> domain name to divert Internet traffic to a portal that leads to pornographic websites, which is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Respondent has not come forward with any proof and no evidence in the record suggests any facts to establish that Respondent is commonly known by STMICRO or <stmicro.com>. The fact that Respondent registered the <stmicro.com> domain name is not sufficient absent additional evidence that Respondent is commonly known by STMICRO or <stmicro.com>. Therefore, Respondent has failed to establish rights or legitimate interests in the diputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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 Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the <stmicro.com> domain name to divert Internet users to a portal that leads to pornographic websites. Panels have consistently held that the use of a confusingly similar domain name in this manner is evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <stmicro.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: March 21, 2003.

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