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Generic Top Level Domain Name (gTLD) Decisions |
Topp Construction Services, Inc. v. Ho
Kyoung Trading Co., Ltd.
Claim Number: FA0407000292873
PARTIES
Complainant
is Topp Construction Services, Inc. (“Complainant”),
represented by Mark Garzia, 2058 Chichester Avenue, Boothwyn, PA
19061, USA. Respondent is Ho Kyoung Trading Co., Ltd. (“Respondent”),
7115-1, Taepyeong 1-dong, Sujeong-gu, Seongnam-si, Gyeonggi-Do, 461-824, KOREA.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <topp.com>,
registered with DomainCA (KICA).
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Dr. Kyung-Han
Sohn Esq, Chair
Honorable
Nelson A. Diaz, Panelist
Honorable
Hong Oo Baak, Panelist
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 2, 2004; the Forum received
a hard copy of the Complaint
on August 17, 2004.
On
August 18, 2004, DomainCA (KICA) confirmed by e-mail to the Forum that the
domain name <topp.com> is
registered with DomainCA (KICA) and that the Respondent is the current
registrant of the name. DomainCA (KICA)
has verified that Respondent is bound by the DomainCA (KICA) 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
August 25, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
14, 2004 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@topp.com by e-mail.
A
timely Response was received and determined to be complete on September 7, 2004.
Complainant
submitted an additional submission in English on September 13, 2004. The Forum received the Korean version of the
Additional Submission on September 16, 2004, which was after the deadline.
In
response to Complainant’s untimely additional submission, Responded submitted a
timely additional submission, which the Forum received
on September 17, 2004.
On October 6, 2004, pursuant to
Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Kyung-Han Sohn, Honorable Nelson
A. Diaz, and Honorable Hong Oo Baak
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant is in the business of construction
services in Pennsylvania, USA. Complainant owns the U.S. registered trademark /
service
mark TOPP, which issued on July 30, 2002.
Complainant asserts that the primary portion of the
domain name in questions is “top,” which is identical to the primary word in
Complainant’s
corporate name and is identical to the literal portion of
Complainant’s registered mark “TOPP.”
Complainant also asserts that, since at least as early
as August 1, 1991, Complainant has used the trademark or service mark TOPP
in
commerce in connection with rental of construction equipment and construction
services in the U.S.
Complainant asserts that Respondent does not have any
rights or legitimate interest in the domain name. Complainant contends that
the
word “topp” does not have meaning in the Korean language and the only purpose
for Respondent registering the domain name <topp.com> is to direct
wary and unsuspecting English-speaking web-users to Respondent’s website.
With respect to the issue of “bad faith” registration
and use, Complainant maintains that Respondent has attempted to sell the domain
name to Complainant at an exorbitant price. Complainant also asserts that
Complainant’s trademark rights are being undermined and
eroded by the existence
of Respondent’s domain name, and Complainant has been injured by the loss of
sales and confusion surrounding
the <topp.com> domain name.
B.
Respondent
Respondent is carrying out manufacturing, retail, and
service businesses and the product categories handled include clothing product
manufacturing, online information provision, and consulting.
Respondent asserts that it had registered the domain
name before Complaint had acquired the trademark. According to Respondent, <topp.com>
was registered on September 23, 1999, the appropriate domain registration fees
were paid, and it is currently registered on DomainCA.com,
which is a
registration agency of Korea.
Respondent contends that it has legitimate interests
in the domain name. According to Respondent, <topp.com> is one of
various trademark that are being used currently by Respondent, and the web site
<topp.com> is designed for the purpose of selling and publicizing Respondent’s
clothing products and will provide entertainment-related information.
Respondent is currently waiting for trademark and service mark registration.
Respondent further argues that it registered and uses
the domain name in good faith. Respondent previously used it as a parking site
for the upcoming opening of a nightwear website and is now using it as a site
for the sale and publicity of nightwear and lounge
wear produced under the
ThinkHot and Topp.com brands. Respondent asserts that it had applied for
trademarks and service marks multiple
times over the last five years to the
Korean Intellectual Property Office (“KIPO”) in order to use TOPP or topp.com
as trademarks
or brands and has publicly notified this in order to receive the trademark
registration. Respondent registered the domain name <topp.com> in
order to use it as company trademark and trade name and as a site for the
provision of entertainment-related information and online
consulting and is
using it for these same purposes. Respondent further asserts that the products
of the company of Complainant and
the products of Respondent have no similarity
to each other and therefore Respondent could not possibly cause sales losses for
Complainant.
Respondent maintains that it could not have known about the
existence of Complainant before registering <topp.com> and so did
not register it in order to sell it.
C.
Additional Submissions
Complainant, in its Additional Submission, maintains
that rights in a mark should not be determined by a race to register a domain
name.
Complainant also argues that case law supports
Complainant’s position that the Panel should not consider the top-level domain
(“.com”)
but merely the second-level domain (the “topp” portion) and in that
regard, the use of this second-level domain was identical to
that of both the
registered and common law trademarks.
Complainant asserts that Respondent is not using the
term TOPP as a trademark to notify the public of the origin of goods or
services.
Respondent, in its Additional Submission, asserts that
rejection for registration by the KIPO is evidence that Respondent did not
register the domain <topp.com> in bad faith. Respondent also
maintains that it is using TOPP as a trademark to notify the public origin of
sleeping clothing or
any other clothing products.
Respondent also takes issues with Complainant’s
assertion that Respondent failed to explain its email wherein it offered to
sell the
domain name for US $50,000. Respondent maintains that it never
contacted Complainant first and has never proposed a sale of the domain
name.
FINDINGS
The Panel finds
that Complainant has not established that the domain name <topp.com>
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights, that Respondent has rights or
legitimate interests in
the domain name, and that the domain name was not registered and is not being
used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
The Panel finds
that Complaint’s TOPP registration does not grant Complainant rights under the
Policy because Respondent’s registration
of the <topp.com> domain
name predates Complainant’s registration of the TOPP mark. The domain name <topp.com>
was registered on September 23, 1999, whereas Complainant’s trademark or
service mark TOPP was registered on October 22, 2002. Complainant asserts that its common law rights in the TOPP mark
predates Respondent’s right in the domain name since at least as early
as
August 1, 1991. Complainant has used
the trademark or service mark TOPP in commerce. However, Complainant has not established that the TOPP mark has
acquired secondary meaning in the relevant marketplace before Respondent
registered the <topp.com> domain name. In this case, the registered mark does not hold a presumption that
it is inherently distinctive and has acquired secondary meaning
because only a
registered mark has the presumption that it has acquired secondary meaning at
the time of registration with the U.S.
Patent and Trademark Office (USPTO),
which, in this case, is about 3 years after registration of the domain name.
Accordingly, without
other supporting evidence, the trademark or service mark
registration is not sufficient to prove that the TOPP mark has acquired
secondary meaning in the relevant marketplace before Respondent’s registration
of the domain name. See Weatherford
Intl, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that
prior UDRP precedent did not support a finding of common law rights in a
mark
in lieu of any supporting evidence, statements or proof, e.g., business sales
figures, revenues, advertising expenditures, number
of consumers served,
trademark applications or intent-to-use application); See also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (The
Panel ruled that “under U.S. trademark law, registered marks hold a presumption
that
they are inherently distinctive and have acquired secondary meaning,” when
Complainant registered the mark with USPTC before Respondent
registers its
domain name.).
Furthermore, the Policy applies to abusive
registration of domain names, and the Panel finds that Respondent’s
registration was not
abusive because it could not have known of Complainant’s
mark at the time of registration. See Phoenix
Mortgage Corp. v. Toggas,
D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily
implies that Complainant’s rights predate Respondent’s
registration . . . of
the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase
Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark
user to challenge a domain name registration, which predates Complainant’s
trademark rights, is “obviously contrary to the intent of the Policy and to
trademark law generally”).
Complainant asserts that the Panel should not consider
the top-level domain (“.com” in this instance) but merely the second-level
domain (the “topp” portion) pursuant to Experience Hendrix, L.L.C. v.
Hammerton, D2000-0364
(WIPO Aug. 2, 2000) (finding that Respondent had actual knowledge at the
time it registered the domain of the use and rights of Complainant in the name
JIMI HENDRIX and used the domain name only for sale) and, in that regard, the
use of this second-level domain is identical to that
of the trademark. However, this case is distinguishable from Hendrix
in that a correlation does not exist between Complainant’s goods and services
and those of Respondent. Respondent is not in the similar
business with
Complainant whereas Respondent in Hendrix was registered in the name of
a fan club, not being a true “fan club” existing at the domain name or
providing any traditional fan
club services, but being nothing more than a
sales promotion site selling vanity e-mail addresses. Respondent engaged in
distinctly
different industries from Complainant, which, therefore, would not
cause consumers to be confused.
Moreover, even if the Panel was to conclude that the
domain name <topp.com> is identical pursuant to Hendrix, Complainant
must be able to meet two other prongs, and the Panel found that Complainant
fails to prove two other prongs for the reason
below.
Paragraph 4(c) of the Policy sets out circumstance,
but without limitation, which can establish the holder’s rights to or
legitimate
interests in the domain name. These circumstances are as follows:
(i)
before any notice to the holder of the dispute, the holder’s use of, or
demonstrable preparations to use, the domain name or a name
corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(ii)
the holder (as an individual, business, or other organization) has been
commonly known by the domain name, even if the holder has
acquired no trademark
or service mark rights; or
(iii)
the domain name holder is making a legitimate noncommercial or fair use of
the domain name, without intent for commercial gain to
misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
In arguing that Respondent lacks legitimate rights or
interests, Complainant asserts without benefit of evidence that Respondent has
used the domain name at issue to direct wary and unsuspecting web-users to
Respondent’s website. However, Respondent has stated that
it has been using the
domain name to point a website on which it offered products and services since
1999. As such Respondent has
shown that before notice of this dispute, which
did not occur until 2003, Respondent had used the domain name in connection
with
a bona fide offering of goods or services. Here good faith is a key
element in determining whether there was bona fide use under
the Policy. See
Warm Things, Inc., Inc. v. Weiss,
D2002-0085 (WIPO April 18, 2002) (finding that Respondent had rights or
legitimate interests in a domain name when its registration
of that domain name
occurred before Complainant had established rights in its alleged mark). Here, the Panel
finds that Respondent was not using the domain name in question to sell
products that were competitive to that of
the Complainant’s products. Rather
Respondent was offering products “totally unrelated” to the mark “TOPP.” Moreover Complainant’s trademark was issued
after Respondent registered the domain name. As such, Respondent does have a legitimate
interest in the domain name where Complainant applied for registration of the
mark after Respondent
registered the domain name. Accordingly, the Panel concludes
that Respondent
has rights and legitimate interests in the domain name because it registered
the <topp.com> domain name before Complainant registered the TOPP
mark, and Complainant has not demonstrated that its rights existed before the
domain
name registration.
The Panel finds that there is no evidence of bad faith
registration, because Respondent’s domain name registration predates
Complainant’s
registration of the TOPP mark. See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000)
(finding no bad faith where Respondent registered the domain name in question
before application
and commencement of use of the trademark by Complainant); see
also Interep Nat'l Radio Sales, Inc.
v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no
bad faith where Respondent registered the domain prior to Complainant’s use of
the mark). Respondent could not have known about the existence of Complainant before
registering the domain name <topp.com> because Complainant has
failed to show it is well known at the time of registration.
Complainant asserts that Respondent has already
attempted to sell the domain name to Complainant at an exorbitant price.
However,
Complainant made the first offer to sell the domain name and therefore
the Panel cannot determine whether Respondent’s use is in
bad faith. See Pocatello Idaho Auditorium Dist. v.
CES Marketing Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[W]hen a Complainant indicates
a willingness to engage in a market transaction
for the name, it does not violate
the policy for a [Respondent] to offer to sell for a market price, rather than
out-of-pocket expenses.");
see also Coca-Cola Co. v. Svensson, FA
103933 (Nat. Arb. Forum Feb 27, 2002) (finding that Respondent was not acting
in bad faith when it engaged in discussions to
sell its domain name
registration to Complainant after Complainant initiated the discussion).
Also, there is no evidence that Respondent intended to
usurp Complainant’s good will.
Complainant business is totally different from that of Respondent.
Although Complainant asserts that Complainant’s trademark rights
are being
undermined and eroded by the existence of Respondent’s domain name and
Complainant has been injured by the loss of sales
and confusion surrounding the
<topp.com> domain name, the mere contention, without benefit of supporting
evidence, is not sufficient to meet the second prong of the policy.
Complainant also asserts that Respondent is not using
the term TOPP as a trademark and nowhere on Respondent’s website does it associate
the term TOPP with its nightgowns or other items of clothing that it
sells. However, it is not required that
the holder of a domain name must offer goods or services bearing mark which
matches the domain name.
See Choice Courier Sys. Inc. v. Kirkendale, D2002-0483 (WIPO July 23, 2002) (stating that “there is no
requirement that the user of a domain name must offer goods or services
bearing
a mark which matches the domain name) (italics added); see also Asphalt Research Tech., Inc. v. Anything.com,
D2000-0967 (WIPO Oct. 2, 2000) (finding that Complainant has failed to prove
that the domain name <ezstreet.com> was registered
and is being used in
bad faith or held passively for use by Respondent in bad faith).
The Panel finds that Complainant’s efforts to establish common law rights are
genuine, finding that Complainant’s actions are not an abuse of the
administrative
process. See Credit
Suisse Group v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23,
2002) (finding no Reverse Domain Name Hijacking where “the Panel consider[ed]
the Complaint
to have been misconceived rather than brought in bad faith”);
see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001)
(noting that a finding of reverse domain name hijacking requires bad faith on
Complainant’s part,
which was not proven because Complainant did not know and
should not have known that one of the three elements in Policy ¶ 4(a) was
absent). Accordingly, the Panel declines to enter a finding of reverse domain name
hijacking.
DECISION
Having
failed
to establish all three
elements required under the ICANN Policy, the Panel concludes that relief shall
be DENIED.
Accordingly, it is Ordered that the <topp.com>
domain name be REMAINED with Respondent.
Kyung-Han Sohn, Chair
Honorable Nelson A. Diaz, Panelist
Honorable Hong Oo Baak, Panelist
Dated: November
1, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1467.html