Intel Corporation v. TongYang Life Insurance Co.
Claim Number: FA0204000110788
Complainant is Intel Corporation, Santa Clara, CA, USA (“Complainant”) represented by Bobby A Ghajar, of Howrey Simon Arnold & White. Respondent is TongYang Life Insurance Co., Seoul, KOREA (“Respondent”).
The domain name at issue is <intel.biz>, registered with Registration Technologies, Inc.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed James P. Buchele as the single Panelist. The undersigned Panelist 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.
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 April 23, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
The <intel.biz> domain name is identical to Complainant’s INTEL mark.
Respondent has no rights or legitimate interests in the <intel.biz> domain name.
Respondent registered the <intel.biz> domain name in bad faith.
Respondent has failed to submit a Response in this proceeding.
Complainant was founded in 1968 as a semi-conductor company involved in the design and manufacture of memory chips. Since 1969, Complainant has continuously offered and sold products and services under the INTEL mark. Over the years, Complainant has expanded its business from manufacturing semi-conductors to developing, manufacturing and selling a variety of Internet, networking, communication and computing products. As the world’s largest semi-conductor manufacturer, Complainant is well known worldwide.
Complainant has numerous registrations with the United States Patent and Trademark Office for the INTEL mark. The earliest registrations for the INTEL mark are Reg. No. 914,978 issued on June 15, 1971 and Reg. No. 938,772 issued July 25, 1972.
Respondent registered <intel.biz> on March 27, 2002 and has developed no use for the domain name.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
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.
Complainant has established its rights in the INTEL mark through registration with the United States Patent and Trademark Office and subsequent continuous use.
Respondent’s <intel.biz> domain name is identical to Complainant’s INTEL mark both visually and phonetically, but for the inconsequential addition of “.biz.” Therefore, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights to and interests in the INTEL mark and Respondent has not submitted a Response in this proceeding. Therefore, the Panel may presume Respondent has no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent has offered no evidence that it holds rights in a mark identical to the <intel.biz> domain name pursuant to STOP Policy ¶ 4(c)(i). Thus, the Panel finds that no such rights or legitimate interests exist. See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).
Due to the fame Complainant’s INTEL mark enjoys, it can be inferred that Respondent registered the <intel.biz> domain name with the intent to capitalize on the goodwill of the INTEL mark by attracting Complainant’s customers by way of causing confusion with Complainant’s mark. Such behavior does not constitute a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic attempt to attract Internet users via Complainant’s famous GRAMMY mark, therefore, Respondent had no rights or legitimate interests); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence on the record and Respondent did not come forward to offer any evidence that it is commonly known by INTEL or <intel.biz>. Respondent is only known to this Panel as TongYang Life Insurance. Furthermore, Respondent was not a licensee of Complainant’s, nor is Respondent authorized to use the INTEL mark in any way. Therefore, Respondent has not met the requirements of STOP Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent was on notice of Complainant’s rights in the INTEL mark at the time it registered the <intel.biz> domain name due to the fame of the INTEL mark, the mark’s registration on the Principal Register of the United States Patent and Trademark Office, and the unique STOP procedure. Respondent’s registration of <intel.biz>, despite notice of Complainant’s right, constitutes bad faith. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).
Due to the notoriety of Complainant’s INTEL mark, any use by Respondent of <intel.biz> would constitute an attempt to attract Internet users by creating a likelihood of confusion with Complainant’s INTEL mark. Therefore, Respondent’s registration constitutes bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the <intel.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.
James P. Buchele, Panelist
Dated: June 25, 2002
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