Touchpoint, Inc. v. Kyounguk Kang
Claim Number: FA0112000102840
The Complainant is Touchpoint, Inc., Emeryville, CA, USA (“Complainant”). The Respondent is Kyounguk Kang, Seoul, KOREA(“Respondent”).
The domain name at issue is <touchpoint.biz>, registered with YesNIC, Co., Ltd.
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.
Bruce E. Meyerson 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 December 12, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.
On December 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 16, 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 January 14, 2002.
On February 11, 2002 pursuant to STOP Rule 6(b), the Forum appointed Bruce E. Meyerson as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant Touchpoint, Inc. is the holder of a registered trademark for “Touchpoint Marketing.” Complainant is engaged in the advertising business—promoting the goods and services of other businesses, principally companies engaged in telecommunications, entertainment and financial services. Complainant contends that the Respondent is attempting to steal Complainant’s trade name and is not engaged in any business corresponding to the domain name. Thus, Complainant believes that Respondent may be using the domain name in order to prevent the Complainant from “reflecting the mark in a corresponding domain name.”
Respondent denies that it has acted in bad faith. Respondent claims that the word “Touchpoint” is a generic term, particularly in the area of “Customer Relationship Management” where it is used commonly. Respondent asserts that he attempted to start a business recently using the word “Touchpoint” but for “internal” reasons it has not begun operations.
Complainant has not demonstrated the necessary distinctiveness or secondary meaning in the word “Touchpoint,” standing alone, such that Complainant has “rights” in the word to exclude others from its use as a 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.”
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.
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.
Although Complainant holds a trademark for the words “Touchpoint Marketing” it holds no mark for the word “Touchpoint.” And, although it is possible for two generic terms—touch and point—to achieve trademark status by acquiring sufficient level of secondary meaning in the relevant community, in this case Complainant has not demonstrated such distinctiveness or secondary meaning.
Thus, despite the fact that Respondent’s clam of rights or legitimate interests appears somewhat marginal, Complainant has failed to demonstrate rights in the word “Touchpoint” so as to exclude all others from the use of that term as a domain name.
Accordingly, it is not necessary to consider the remaining elements which Complainant must prove.
The Complaint is dismissed.
Bruce E. Meyerson, Panelist
Dated: February 20, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page