Delaware Capital Formation Inc. v. Dongil Song
Claim Number: FA0201000103969
The Complainant is Delaware Capital Formation Inc., Wilmington, DE (¡°Complainant¡±) represented by James D. Jacobs, of Baker & McKenzie. The Respondent is Dongil Song, Gwanjui, KOREA (¡°Respondent¡±).
The domain name at issue is <DOVER.biz>, registered with Netpia.com.
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.
Moon Sung Lee 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 January 20, 2002; the Forum received a hard copy of the Complaint on January 24, 2002.
On January 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the ¡°Commencement Notification¡±), setting a deadline of February 13, 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 February 8, 2002.
Further, Complainant filed an additional submission on February 13, 2002, and Respondent filed an additional submission on February 14, 2002, to the Forum. Each additional submission mentioned in the foregoing was submitted within the appropriate deadline provided for under paragraph 7 of the Forum¡¯s Supplemental Rules and timely received by the Forum. Accordingly, this Panel will take into consideration each of the additional submissions.
Respondent asserts in Respondent¡¯s additional submission that this administrative proceeding should take place in the Korean language pursuant to Rule 11(a) of the STOP Rules. Rule 11(a) of the STOP Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. In principle, since the Registration Agreement for the domain name <DOVER.biz> is in Korean, this administrative proceeding should also be conducted in Korean. However, under STOP Rule 11(a), the Panel may consider the totality of the circumstances involved in the administrative proceeding and may determine that the administrative proceeding be conducted in a language other than the language of the Registration Agreement. In this administrative proceeding, Respondent fully understood the contents of the Complaint submitted by the Complainant and submitted a rational Response to the Complaint. In other words, it appears that Respondent has no problem in understanding English documents and in such case, the Panel does not think that the right of Respondent to defend against the accusation of Complainant will be infringed by conducting this administrative proceeding in the English language. Furthermore, at the onset of this administrative proceeding, Respondent filed Respondent¡¯s Response while objecting in no manner to Complainant¡¯s Complaint being in the English language. For this reason, we consider Respondent to have given his consent to this administrative proceeding being held in the English language. Therefore, this Panel thinks that this administrative proceeding can be conducted in the English language. Accordingly, this decision is also drafted in the English language.
On March 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Moon Sung Lee as the single Panelist.
Complainant requests that the domain name be transferred from the Respondent to Complainant.
The <DOVER.biz> domain name is identical to Complainant¡¯s DOVER mark.
Respondent has no rights or legitimate interests in the <DOVER.biz> domain name.
Respondent registered and used the <DOVER.biz> domain name in bad faith.
Complainant is engaging in reverse domain name hijacking on the basis that it has trademark rights to <DOVER>, which is a generic name. In order to acquire the <DOVER.biz> domain name, Complainant used an agent in Korea who requested that Respondent transfer the domain name, <DOVER.biz>, to such agent without disclosing the true identity of the transferee, Complainant.
Respondent has legitimate interests to the <DOVER.biz> domain name.
Respondent did not register or use the <DOVER.biz> domain name in bad faith.
C. Additional Submissions
In Complainant¡¯s additional submission, Complainant asserted certain claims in additional to the claims that Respondent has no legitimate rights to the <DOVER.biz> domain name and that Respondent registered and used the <DOVER.biz> domain name in bad faith.
Complainant is a subsidiary of Dover Corporation and has registered twelve trademarks in the United States including DOVER, DOVER used together with a certain design, and also combinations of various other words and designs, the first of which was registered in 1962. Dover Corporation was incorporated in 1947 and its shares of stock are traded on the New York Stock Exchange. Dover Corporation is a multi-billion dollar diversified manufacturer of a wide range of proprietary products and components for industrial, manufacturing, and commercial use throughout the world. Dover Corporation has facilities in 42 countries, with 3 affiliates in Korea. Dover Corporation recorded a sales amount of US$45 million in Korea during the year 2000. To its Korean affiliates alone, it recorded a sales amount of US$5.2 million.
Complainant requested Respondent to transfer the <DOVER.biz> domain name to Complainant through its agent, Young Yoon Lee, who did not disclose Complainant¡¯s identity to Respondent. Respondent offered to transfer the <DOVER.biz> domain name to Young Yoon Lee for KRW 10 billion (approx. US$7.6 million). Respondent explained to Young Yoon Lee that Respondent contemplated engaging in the business of webhosting, internet shopping mall, and deluxe e-mail address rental services catered towards American and British consumers and that, if the price for transferring the <DOVER.biz> domain name was higher than the amount of profit that Respondent expected to gain from using the <DOVER.biz> domain name, then Respondent would be willing to transfer the domain name.
Although Respondent created the <DOVER.biz> site, the contents of the <DOVER.biz> site consists of nothing more than a table of hyperlinks to a third party site, which was constructed by hijacking the source codes from the site, <mybestsite.co.kr>. Furthermore, although Respondent claimed to Young Yoon Lee that Respondent planned to cater the <DOVER.biz> site to American and British consumers, almost the entire <DOVER.biz> site is in the Korean language.
Respondent registered the domain name <DOVER.biz> on November 19, 2001.
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.
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.
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.
There is no issue that the domain name <DOVER.biz> is identical to the trademark DOVER, the trademark rights to which belong to Complainant.
Respondent cannot establish any of the 3 requirements under STOP Policy 4(c) and therefore, cannot establish any right or legitimate interest to the domain name <DOVER.biz>.
Although Respondent has asserted that Respondent planned and was preparing to engage in the business of webhosting, internet shopping mall, and deluxe e-mail address rental services using the domain name <DOVER.biz> before Respondent received notice of the commencement of this administrative proceeding, Respondent has failed to establish proof of such assertions. The only objective evidence that Respondent planned to use the domain name <DOVER.biz> for business purposes is the <DOVER.biz> site, which merely consists of a single page containing a table of hyperlinks to a third party site, which was constructed by hijacking the source codes from the site, <mybestsite.co.kr>. Therefore, Respondent has failed to establish Respondent¡¯s use of, or demonstrable preparations to use, the <DOVER.biz> site in connection with a bona fide offering of goods or services (STOP Policy 4(c)(ii)). Furthermore, although Respondent claimed that Respondent planned to use the <DOVER.biz> site to engage in business catered mainly towards American and British consumers (See affidavit of Young Yoon Lee, Exhibit 6), most of the <DOVER.biz> site is in the Korean language.
Considering these various factors, Respondent has not constructed the <DOVER.biz> site in order to provide a bona fide offering of goods or services, but merely to use as materials in support of Respondent¡¯s assertions made during this administrative proceeding.
Therefore, Respondent has no right or legitimate interest to the domain name <DOVER.biz>.
Dover Corporation has affiliates in 42 countries throughout the world, including 3 affiliates in Korea where Respondent resides. Further, Dover Corporation has recorded annual sales of US$45 million in Korea, and annual sales of US$5.2 million to its 3 Korean affiliates alone. Therefore, at the time that Respondent registered the domain name <DOVER.biz>, Respondent knew or should have known that the DOVER trademark belonged to Dover Corporation or its affiliates. In such case, the registration of the domain name <DOVER.biz> will be considered bad faith. See Victoria¡¯s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001).
Furthermore, Respondent attempted to transfer the domain name <DOVER.biz> at a price of KRW 10 billion, which is significantly more than the documented out-of-pocket costs directly incurred by Respondent in connection with the domain name <DOVER.biz>. Because Respondent attempted to sell the domain name <DOVER.biz> to Young Yoon Lee rather than Complainant, STOP Rule 4(b)(i) does not directly apply. For this reason, Respondent asserts that Complainant has no legitimate grounds for its claims against Respondent. However, not only is the price for the transfer of the domain name <DOVER.biz> at KRW 100 billion significantly more than the documented out-of-pocket costs directly incurred by Respondent in connection with the domain name <DOVER.biz>, this Panel thinks that the price also significantly exceeds the profit which Respondent may have earned by engaging in the business contemplated by Respondent (of course, Respondent has failed to establish that Respondent in fact planned to engage in such business). In other words, Respondent has attempted to earn an unreasonable and exorbitant amount of profit through the domain name <DOVER.biz> and, although this, without more, would not necessarily be determinative of bad faith, it at least establishes that Respondent has no legitimate interest to the domain name <DOVER.biz>. See generally Wembley Nat¡¯l Stadium Ltd. v. Thomson, D2000-1233 WIPO Nov. 16, 2000).
Accordingly, it is ordered that the domain name <DOVER.biz> be transferred from Respondent to Complainant.
Moon Sung LEE, Panelist
Dated: April 3, 2002
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