Gene Logic Inc v. Cho Kyu
Bock
Claim Number:
FA0112000103042
PARTIES
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.
A.
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.
B.
Respondent
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.
DECISION
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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