Delaware Capital Formation Inc. v. Dongil
Song
Claim Number: FA0201000103969
PARTIES
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.
A.
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.
B.
Respondent
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).
DECISION
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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