Gene Logic Inc v. Cho Kyu Bock
Claim Number: FA0112000103042
The Complainant is Gene Logic, Inc., Gaithersburg, MD (“Complainant”) represented by Jason I. Hewitt, of Morgan, Lewis & Bockius LLP. The Respondent is Cho Kyu Bock, Sungnam Kyonggi, SOUTH KOREA (“Respondent”) represented by Stephen H. Sturgeon, of Sturgeon & Associates, PC.
The domain name at issue is <genelogic.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 the Panelist in this proceeding.
G. Gervaise Davis III, Esq., is the single Panelist, in accordance with the STOP Policy.
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 14, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.
On December 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 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 28, 2002.
On February 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed G. Gervaise Davis III, Esq., as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
GENE LOGIC is the owner of the GENE LOGIC trade name and mark. GENE LOGIC owns the following U.S. and foreign trademark and service mark registrations for and applications for registration of the GENE LOGIC mark:
GENE LOGIC uses the GENE LOGIC marks in connection with the development of technology in the genomics field, bioinformatics systems and database products for use in pharmaceutical, biotechnology, diagnostic and agricultural product research and development, and related good and services set forth in the applications and registrations for the GENE LOGIC marks. Complainant is a leading provider of genomics related technology information in the United States and throughout the world, including in South Korea. News articles discussing GENE LOGIC’s presence in South Korea were attached to the Complaint. In addition to the GENE LOGIC marks, Complainant has substantial common law rights in the GENE LOGIC mark.
Complainant also maintains a web site located at www.genelogic.com. The web site promotes the comprehensive goods and services provided by Complainant, and provides news and information in the genomics industry.
Complainant’s GENE LOGIC marks are relatively well known, both in the U.S. and internationally, within Complainant’s specific field of science and in the general business community as illustrated by numerous articles available on the Internet. (See, e.g., articles at the following URL’s: http://www.ornl.gov/hgmis/publicat/hgn/v10n1/11skbsof.html; www.businessweek.com/2000/00_02/b3663231.htm; www.salon.com/health/feature/2000/05/01/gene_logic/; www.pharmalicensing.com/news/adisp/992563918_3b2952ce385b3; technews.netscape.com/investor/news/newsitem/0-9900-1028-7794714-0.html)
Complainant alleges that Respondent’s registration of the domain name <genelogic.biz> violates Complainant’s rights in the GENE LOGIC mark and name because (i) the domain name is identical to or confusingly similar with Complainant’s GENE LOGIC Marks; and, to the knowledge and belief of Complainant, based on reasonable online searches and other facts set forth herein (ii) Respondent does not have any legitimate interest in the <genelogic.biz> domain name; and (iii) Respondent registered and/or is using the <genelogic.biz> domain name in bad faith.
To Complainant’s knowledge and belief, Respondent has no legitimate interest in or to the <genelogic.biz>domain name. Complainant was not able to locate any publicly available information regarding the Respondent. Among other things, Complainant attempted to locate information regarding Respondent in the Dun & Bradstreet database and on the Internet via the Yahoo! and Alta Vista search engines. None of Complainant’s attempts to locate information regarding the Respondent, or, for that matter, Bionic System, revealed any activities by the Respondent under the name GENE LOGIC. Printouts of search results from Complainant’s attempts to conduct such investigations on the Yahoo! and AltaVista search engines were attached to the Complaint.
Respondent does not appear to operate any business, offer any goods or services, or otherwise use in commerce the name GENE LOGIC. To that end, Complainant states its investigation supports the conclusion that Respondent has no legitimate interest in or to the <genelogic.biz> domain name.
Moreover, the Complainant has not licensed or otherwise permitted the Respondent to use the GENE LOGIC marks, or any other trademark owned by GENE LOGIC. The Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the GENE LOGIC marks.
For these reasons, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue. (STOP Rule 3(c)(ix)(2); STOP ¶ 4(a)(ii)). Complaint also claims that Respondent registered the domain name <genelogic.biz> in bad faith (STOP Rule 3(c)(ix)(3); STOP ¶ 4(a)(iii)) to:
(a) create an impression of an association with the Complainant;
(b) create an impression of an association with the goods and services offered by the Complainant;
(c) attract business from the Complainant;
(d) prevent the Complainant from reflecting the GENE LOGIC mark in the .biz TLD;
(e) generally disrupt Complainant’s business; and/or misleadingly divert members of the public.
Respondent contends that while Complainant makes certain statements with respect to claimed trademark rights in the words Gene Logic in certain parts of the world for certain limited services, Complainant has not provided proof that the words have been used by Complainant extensively in all parts of the world. Although Complainant has provided news articles making reference to the Complainant’s use of the words in South Korea, Complainant has not provided convincing proof of the extensiveness of the usage in South Korea. Respondent argues that the registration of words in a small number of countries should not enable a complainant to have exclusive rights to the words and all domain names containing those words throughout the world.
Respondent argues that the Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name, which it failed to do; and that the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, but seeks here to provide evidence to prove that Respondent does have legitimate rights in the domain name.
Respondent does he claims, in fact, have rights in the domain name for purposes of STOP Rule 3(c)(ix)(2); STOP Policy ¶ 4(a)(ii)] since Respondent has satisfied the conditions of section (i) above by engaging in the preparation for the use of the domain name in connection with a bona fide offering of goods and services and also that Respondent has been commonly known by the domain name, even if it had acquired no trademark or service mark rights before any notice of the dispute,
Respondent provided evidence of what he claims was the preparation for the use of the domain name in connection with a bona fide offering of goods and services through an affidavit, signed by himself and notarized, providing as follows:
The Respondent has been planning a business by the name of Bionic System, Inc. since December of 1999. In association therewith he has performed research and development in Germany. His research activities have been related to the Bionics/Bionik fields, such as Genetic Algorithm, Evolutionary Strategy, Artificial Intelligence Techniques, since 1983 in Berlin, supported by the German Science Foundation.
Respondent is currently working with Bionics, Genetic Algorithms, Artificial Intelligence Techniques at the University as a professor, based on Exhibits submitted.
He has recently established a new Bio Venture Company related to these business fields and also related to research and development of a complete new computer architecture and its application.
Respondent argues that the name Gene Logic or Gene, Logic is a common word, simple scientific or technological terminology and not a specific commercial trade mark like other famous trademarks. Accordingly, Respondent asserts that it could not belong to a single person or a company alone. In the scientific field of computer science and engineering or electrical engineering, the word Gene and Logic are very common.
Respondent states in his affidavit as follows:
“Actually I had idea and intention to establish a business named with words by Genetic, Logic, EvoLogic, and Evotech etc. since return travel to my home country from Germany since 1990. However, unfortunately, according to Korean Law, at this time a University Professor was not legitimate and not allowed to found a company directly. We have also our own culture and philosophy, not like Professors and Faculty staffs in USA or other country. Since beginning of the year 2000, Researcher and Professors were allowed to found his own firms or join to management of commercial company as staff or manager.
So thus the use of the name “Gene Logic” for my business purpose is not with “Bad Faith” in our free Internet Cyber Space, further the Complainant company name was not well known during that time (Internet website developing period during last decade). Actually in Berlin Germany I have the business idea with word “ Gene and/or Logic” earlier than the Complainant, so thus I would like to strongly request to transfer promptly the other “Domain Names - *.com and *.net etc. to Respondent because I have also registered and the owner of the domain name “GeneLogic.CO.KR”.”
Respondent also faults the Complainant for not registering “their domain Gene Logic.biz” earlier than Respondent, in spite of the fact they had an opportunity to do so.
Respondent further provides an affidavit signed by Mr. Moon Hi Han, the President of Korea Bio Venture Association (KOBIOVEN) and the past President of Korea Research Institute of BioScience and Bio Technology http://www.kribb.re.kr/ stating as follows:
1. I know that Mr. KYU BOCK CHO has been preparing for operating the business by the name of Bionic System Inc. since 1999 of Dec. 20. He has engaged in the following activities as a part of the concerned business development, and some examples is named here as follows:
- Development of Software Simulation System for Complex Biological System:
- Application based on Evolutionary Computation Principle, such as Genetic Algorithm (GA), Evolutionsstrategie, Genetic Programming, and others.
- Industrial Application of GA to Optimizing Problems.
- Development of complete new system based Innovative ideas, and Breakthrough of conventional technological barrier, etc.
- MEMS (Micro-ElectroMechanical Systems), Artificial Life and Bionics (Industry Application of Neuro-Fuzzy Theory, Chaotic Theory, Chaotic Engineering, Fractal Engineering)
2. Recently he has founded a start-up company in 1999, “Bionic System Inc. (http://www.genelogic.biz/ / http://www.bionik.biz/)”, located at “Seoul Digital Industrial Complex” in Gurogongdan, Seoul that named by Ministry of Industry and Resource. The company is a kind of R&D oriented Venture Company. Their research and development interests include business field of Bionics, Biometrics, bioMEMS and Bioinformatics. He is also an acting regular member of our KOBIOVEN (http://www.kobioven.co.kr/) Association, which is founded in 2000. Currently in our association, about five hundred bio ventures and related companies have been registered.
3. Presently Prof. Cho’s activities are including education and developing the Bionics principle based or related industry applications, such as Natural Evolution based Systems, such as Genetic Algorithm, AI Techniques etc. So far as I was informed, Dr. Cho has also registered several Internet domain names for the construction of his business websites.
4. As my opinion the name “Gene logic or Gene, Logic is a common word, simple scientific or technical terminology, and not a specific commercial trade mark like famous product, “Champagne” or “Cognac”. So thus I believe that the use of the name “Gene Logic” for his business purpose is not with “Bad Faith” in this regards in our free Internet world society. Probably in Berlin Germany he might have the business idea with word “ Gene and/or Logic,” he has also registered the domain name “GeneLogic.CO.KR”.
Respondent also provided an affidavit signed by Won Chul Yoon, who is responsible for website construction and web-hosting activities at WHOIS.CO.KR, indicating that he was aware the Respondent has, since December 20, 1999 has been preparing for operating a business by the name of Bionic System Inc., and more recently has been considering establishing a home page under the names “GENLOGIC.BIZ and BIONIK.BIZ”, and “GENELOGIC.CO.KR”.
Complainant has only alleged that “reasonable efforts resulted in no bona fide reason for Respondent to register [the domain name]” and that it is “reasonable to infer that Respondent registered the genelogic.biz domain name to…” Respondent argues that “reasonable efforts” and “inferences” do not constitute proof that is sufficient to take away Respondent’s valuable domain name.
Although the Complainant has the burden of proving bad faith and the Respondent does not have the burden of proving that there is not bad faith, Respondent argues that it can and has provided evidence to prove that there was not bad faith on his part.
Respondent points out that the STOP Rule 3(c)(ix)(3); STOP Policy ¶ 4(a)(iii) provides that certain circumstances shall be evidence of bad faith. It says:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Arguing that Respondent does not have a burden of proof in this matter, Respondent submits that this evidence, nonetheless, proves that none of the foregoing circumstances exist in this situation:
1. Neither Respondent nor any of his associates have registered or acquired the domain name in question for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is alleged to be the owner of a trademark or service mark in the Gene Logic or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
2. Neither Respondent nor any of his associates have registered the domain name in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name. Furthermore, neither Respondent nor any of his associates have engaged in a pattern of such conduct.
3. Neither Respondent nor any of his associates have registered the domain name for the purpose of disrupting the business of the Complainant or any competitor.
4. By using the domain name in question, neither Respondent nor any of his associates have attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainant's alleged mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a web site or location.
5. Furthermore, as additional support for Respondent’s position in this domain name dispute, we point out that neither Respondent nor any of his associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark.
6. Neither Respondent, his company, his business activities nor any of his associates have ever sold or attempted to sell any domain name.
Respondent claims that in situations like the instant case, UDRP decisions have held that when no proof of bad faith is presented by the Complainant, the Complainant fails to establish the element of bad faith. For example, in the case of WPP GROUP PLC v. WPP AF-0530 (eResolution Jan. 21, 2000) a the decision states that [emphasis added]:
There has been absolutely no evidence presented by Complainant before the Panel to show one of the circumstances set out above or any other circumstance of bad faith…. The Complainant has therefore failed to establish this element.
Based on this argument, Respondent contends there has not been any conclusive evidence presented by Complainant to show one of the listed circumstances or any other circumstance of bad faith, so that the Complainant has failed to establish the required element because Complainant has failed to prove that there was bad faith either at the time of registration or in the current use of the domain names.
Notwithstanding the heroic efforts of counsel for Respondent to present his client’s extremely weak case favorably, the Panel finds that (1) the mark and the domain are identical except for the “.biz” extension; (2) nothing in the argument or affidavits of Respondent and his associates establishes that Respondent had any rights or legitimate interests in the domain name <genelogic.biz> at the time he registered it, or for that matter at this time; and (3) for the reasons expressed in the Discussion, the Panel is of the opinion that there is a reasonable basis for finding that Respondent registered the domain name in question for the purpose of taking advantage of the world-wide notoriety of Complaint’s well known trademark in the very same field of business that Respondent proposes to engage in. The latter purpose is sufficient to establish “bad faith” registration under the STOP Policy because of the unique manner in which the STOP Policy functions.
Paragraph 15(a) of the STOP Policy 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) that the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that 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.
IMPORTANT NOTE: The Panel deems it absolutely critical to this and future decisions under the .biz STOP Policy to point out one major difference between the factual and legal situation under the traditional UDRP decisions versus the .biz STOP cases. In a traditional UDRP case, the registrant does not have any legal obligation to conduct a trademark search before registering the domain name. Because of this fact, it is possible that the Respondent can in good faith be unaware of a potential conflict between the domain name and an existing trade or service mark. (It should be noted that there are one or two recent cases that have attempted to create a Panel-made legal requirement to do a trademark search or be found in bad faith per se, a requirement not found in the URDP Rules. This Panel believes these cases are wrong. See, for example, Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 2, 2002).
The only obligation a traditional ICANN/UDRP registrant has is to certify in the application for the domain name that the registrant does not believe that the registration and use of the domain name will infringe on the rights of others. This certification can be made, in good faith, even if there are known trademarks existing that use the same words as the domain, since there are many situations under the trademark laws of the world where more than one person can use the same words without infringing other registered marks. There are, of course, also cases where the registrant would be in bad faith in making this certification under the UDRP, such as where he or she knew that a registered mark existed which would likely be confused since the domain name and the registered mark were going to be used in substantially the same field of use or business, and there was a high likelihood of confusion, or where the domain name was being selected specifically because of its similarity to the registered trademark, such as by a competitor or potential competitor.
Under the STOP Policy, on the other hand, in anticipation of possible contests over the use of a domain that potentially infringed an existing trademark, the framers of the STOP Policy provided an elaborate procedure whereby the owners of registered marks could file an advance “IP Claim” with NeuLevel or other registrars indicating their trademark claim and the details concerning existing intellectual property rights, which IP Claim filing is later used as the basis for a temporary hold on any new .biz registration before accepting it, during the STOP period created by the Rules. Where such an IP Claim was filed, the registrar sends an email to any new applicant for the matching name specifically informing him or her that an existing IP Claim is on file and providing details as to the exact mark, the owner, and a description of the goods and services covered by the claimed mark, and complete contact information for the owner so that the .biz applicant could be under no illusions about the likelihood of a contest over the registration of the mark or who to contact if there were any question in his or her mind. If the .biz applicant nonetheless decides to go forward with the application, he or she has to do so under the STOP Rules after acknowledging this potential conflict, in spite of the potential for litigation, and with complete knowledge of the exact mark and the precise reasons there may be a conflict between the domain and the claimed mark. This situation is completely different than the original UDRP/ICANN rules, which contain no such provisions. This Notice may, in the proper case, almost preclude any possibility of registration in good faith of a domain name under facts and circumstances like the instant case.
As the Panel understands the STOP procedures, the “Notice of a .biz Intellectual Property Claim” that the potential registrant receives in every .biz case, where there is a pre-filed IP Claim, is this unmistakable warning of the existence of a conflict over intellectual property rights:
“According to our records you have applied for the above listed .BIZ domain name. The purpose of this E-mail is to formally notify you that the domain name for which you applied matches one or more Intellectual Property (IP) Claims that were received by the .BIZ Registry. In other words, one or more intellectual property owners believe that they have intellectual property rights in the domain name for which you have applied. You should be aware that if you choose to continue the application process, your domain name registration may be challenged under several Internet Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm.” [Quoting one actual, standard email Notice sent to a potential .biz registrant.]
This written Notice is followed by detailed instructions on how to proceed, in spite of the IP Claim, and several pages of details on the nature of the existing claim, the owner, the field of use, and the contact information. Only after reading all this, and electing to proceed anyway, can the .biz registrant complete his or her application for the domain name.
Thus, in the instant case of Respondent Cho Kyu Bock and his selection of the domain <genelogic.biz>, he did so with full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business. For some reason neither the Complainant nor the Respondent refer or allude to this very critical factor in this case. Significantly also, Respondent does not complain that he did not receive this warning notice, or that it was defective in some manner. The Panel therefore must assume this process was carried out, and that Respondent was fully aware of the nature and existence of Complainant’s rights under the IP Claim procedure but elected to proceed anyway. This is hardly evidence of good faith registration of the domain name in question on these facts.
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 asserts that it has rights in the GENE LOGIC mark because it owns both United States and other international trademark registrations for the mark. GENE LOGIC is covered by United States Patent and Trademark Office Registration No. 2,320,466, Japanese Registration No. 4,382,796, and European Community Registration No. 00100445. Furthermore, the <genelogic.biz> domain name is identical to Complainant's GENE LOGIC mark. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names). Thus, Complainant has established to the satisfaction of the Panel its rights in the mark at issue and the fact that it is identical to the domain name except for the “.biz” extension.
Respondent attempts to argue that the terms Gene and Logic are generic or descriptive words that both Respondent and Complainant work with. We disagree, in that, the words “Genelogic” seem to this Panel to be exactly the sort of mark that is normally held to be a suggestive mark, in that nothing about it explicitly describes what Complainant does, but it does suggest the area of research and activities that any one in the field of genomics would be interested in. As such, it is a particularly apt term for a strong trademark.
The Panel also notes that if an Internet search is done using almost any of the usual search engines (often a good test of genericness or descriptive terms), there are almost no references on the Internet that do not directly relate to or concern activities of the Complainant. Out of some 8,290 hits on the Google search engine, for example, almost every single hit relates to Complainant or its activities over the past few years. None of the hits that the Panel saw in this search related in any way to Respondent or his activities, and in fact, a search on his name turned up no hits on Google.
Complainant asserts that there is no evidence that Respondent owns a trademark or service mark for GENE LOGIC and therefore Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not established any right or interest it may possess). The Panel agrees that Complainant has demonstrated that Respondent has no such rights, and notes that Respondent’s evidence, taken at the most favorable view of what was presented, has failed to make any showing of his rights or interest in the name.
The Panel took great pains to include here the details of Respondent’s evidence of his claimed rights or legitimate use to the name, since the Respondent’s information and affidavits, in and of itself, demonstrates that Respondent has never used the name in question, merely thought about the possibility of using it, among other names, and took no steps to use it other than registration of the domain name – after being forcefully advised by the registrar under the STOP Rules that another company in the same field of science was using the mark and claimed exclusive rights to its use.
As there is no evidence that Respondent is commonly known as <genelogic.biz>, Respondent has not demonstrated that it has rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); 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).
We think that to establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used. The Panel cannot determine from the submissions when Respondent actually registered the same name under the country code .KR, although this was apparently only recently. While Respondent is correct that the burden is on Complainant to make an initial showing that Respondent has no rights to the name, the burden then shifts to Respondent to explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict. Here, because of the STOP Notice procedure, Respondent was on notice before completing registration of the domain name that it was claimed by another in the same field. Respondent cannot, and does not, therefore, meet this burden.
As the Panel explains in some detail at the outset of this Discussion, the Rules and Policy of the STOP process are unique and materially different from the traditional UDRP situation because of the fact that IP Claims could be registered in advance of the .biz registration process by a trademark owner, which was done in this case by Complainant. Based on that fact alone, Respondent was on clear and unequivocal notice that there were known international trademarks, using the words in this domain name, that belonged to a direct or potential competitor of some considerable reputation at the time he attempted to register this domain name. The Panel believes it strains credulity to believe that an established genomic scientist of any nation, especially one working in a prestigious institution outside of his own country and in Europe, would not have recognized the name of Gene Logic, Inc. when presented with evidence of its claim to the mark and warned of a potential serious conflict over the name he selected as a domain name.
Respondent, for reasons best known to him, chose to ignore this warning and his direct knowledge of a strong conflict with the marks of a potential or actual competitor. He does not explain why, other than to argue that since the words were used in his chosen field of science, he was entitled to use them for a domain name since he was operating in a different country. Unfortunately, under these unique circumstances, the Panel believes this suggests strong circumstantial evidence of bad faith registration for the purpose of trading on the likely confusion between his company and Complainant. It is highly unlikely that Respondent was unaware that the Internet is an international system, and that near identical Internet domain names used by competitive companies in different countries would likely create confusion. Had Respondent made a showing that he had actually been using this name in a business or that he had made significant preparations for its use prior to notice of the conflict, this Panel might be more sympathetic to this argument. Here the coincidences are simply too strong.
Circumstantially, it appears that Respondent registered the disputed domain in order to attract Complainant's customers to Respondent's domain by creating a likelihood of confusion as to the sponsorship, affiliation, and endorsement of the domain. Other Panels have held such behavior evidence of bad faith pursuant to the equivalent of STOP Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).
The Panel, however, wishes to make clear that not every situation where there is a Notice of conflict under the STOP Policy would always result in this outcome. Each case should be considered on all of the facts and circumstances, since good faith is necessarily a question of intent, actual or constructive knowledge, and the likely effect of the actions of the parties. Here, the effect of this registration would be obvious to anyone with the knowledge that Respondent had to have as a scientist in this field; especially after the STOP Notice information was sent to him as a condition to his taking further steps in the registration of the conflicting domain name. There is here, admittedly, no objective evidence of an attempt to sell the domain name or to prevent the Complainant from using it, so that the evidence of bad faith is circumstantial and pragmatic. Given the limitations of the no-hearing nature of the STOP arbitration, there is, in the judgment of this Panel, no other basis on which a case like this could be decided within the constraints of the STOP Policy. The Panel believes this is a fair result in a difficult case.
The Panel therefore finds for the Complainant and against Respondent, and in accordance with Paragraphs 10 and 15 of the STOP Policy directs that the domain name <genelogic.biz> be transferred to Complainant forthwith.
G. Gervaise Davis III, Esq., Single Panelist
Dated: March 4, 2002
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