Sega Corporation v. jsy
Claim Number: FA0204000110789
Complainant is Takemi Suzuki Sega Corporation, Tokyo, Japan (“Complainant”) represented by Leslie C. McKnew, of Brobeck Phleger & Harrison LLP. Respondent is jsy, Incheon, SOUTH KOREA (“Respondent”).
The domain name at issue is <sega.biz>, registered with Hangang Systems, Inc.
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.
Judge Irving H. Perluss (Retired) is the 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 April 23, 2002; the Forum received a hard copy of the Complaint on April 25, 2002.
On April 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 15, 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 May 13, 2002.
A timely Additional Submission from Complainant was received on May 17, 2002.
On May 30, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss (Retired) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
1. Sega Corporation (formerly Kabushiki Kaisha Sega Enterprises, dba, Sega Enterprises and also known as Kabushiki Kaisha Sega), bases its STOP Complaint for the <sega.biz> domain name on the well-established worldwide rights owned by Sega Corporation and its affiliated entities (collectively referred to as “Sega”) to the famous and distinctive SEGA® marks and names. In the United States, Sega owns numerous trademark registrations for marks that are comprised of or include the term SEGA in connection with a wide variety of goods and services, including but not limited to, computer game hardware, software and peripherals, video game programs, machines and peripherals, clothing, telecommunication services, online gaming services, entertainment services, computer services, toys, and arcade game machines.
2. Sega also uses its SEGA® marks and names, and owns various trademark registration and pending applications for its SEGA® marks, throughout the world, including in countries throughout Europe, Asia, South America, and Latin America, as well as in Australia and Canada for, among other things, video and computer game hardware, software and peripherals. In South Korea, the country where Respondent is located, Sega owns numerous trademark registrations for its SEGA® mark.
3. The subject domain name <sega.biz> is identical to (or substantially identical to) Sega’s corporate name and trade name, and the numerous SEGA® trademarks, service marks, and domain names owned exclusively by Sega.
4. Respondent has no rights or legitimate interest in the <sega.biz> domain name. Respondent has a demonstrated pattern and practice of registering Internet domain names to which it has no rights, and its registration of the <sega.biz> domain name is no different. Specifically, Respondent was awarded thirty (30) domain names including <exxon.biz> (which is comprised of Exxon Corporation’s registered mark EXXON); and <disney.biz> (which is comprised of Disney Enterprises, Inc.’s. registered mark DISNEY).
5. Respondent’s numerous <.biz> domain name registrations demonstrate that Respondent is engaged in a pattern and practice of stockpiling domain names to which it has no right or legitimate interest, presumably, with the hope of selling those domain names to the rightful trademark owners or other cybersquatters for a high price. The subject domain name <sega.biz> is merely another domain name that Respondent obtained in pursuing its domain stockpiling pattern and that, like the other domain names it was awarded, Respondent has no rights or legitimate interest in the <sega.biz> domain name.
6. There is no evidence that Respondent ever has had any rights in a trademark or service mark that is comprised of the distinctive term “SEGA.” Respondent did not file an IP Claim for the <sega.biz> domain name.
7. Respondent has never used, or undertaken any legitimate preparations to use, the <sega.biz> domain name in connection with a bona fide offering of goods or services.
8. Respondent registered the subject domain name long after Sega established its rights in its family of SEGA® marks and names in the United States, South Korea and elsewhere in the word. Sega began using its SEGA® marks and names at least as early as 1976. The earliest Respondent could have registered the subject domain name would have been in August 2001, which is twenty-five years after Sega established its rights in its distinctive and famous SEGA® marks and names.
9. Respondent registered the subject domain name <sega.biz> in bad faith. Respondent has engaged in a pattern and practice of registering <.biz> domain names that are comprised of third parties’ marks and generic terms, such as the <sega.biz>, <exxon .biz>, and <disney.biz> domain names, among others.
10. Respondent registered the <sega.biz> domain name despite receiving clear and unequivocal notice of Sega’s established rights in its famous and distinctive SEGA® mark and name. Pursuant to the <.biz> registry’s policy of notifying an applicant of IP Claims that have been submitted for the requested domain name, Respondent received notice of Sega’s IP Claim, which provided detailed information regarding Sega’s long-standing and established rights in its famous and distinctive SEGA® marks and names. Respondent, however, ignored Sega’s rights and proceeded to register the disputed subject domain name, which infringed upon Sega’s established trademark rights. Respondent’s knowing decision to register the <sega.biz> domain name despite being fully aware of Sega’s established rights evidences Respondent’s bad faith intent to trade on Sega’s goodwill.
11. Apart from Respondent’s receipt of Sega’s IP Claim, Respondent clearly was aware of Sega’s established rights in its famous and distinctive SEGA® mark and name, and Respondent’s only motivation for registering the subject domain name was to profit unlawfully from the goodwill and reputation represented by Sega’s coined SEGA® marks and names.
1. The disputed domain name <sega.biz> is not identical to Complainant’s marks, because there are many persons who relate to the word <sega.biz> in various fields and in various languages around the world.
2. Respondent is one of the persons who relate to the word <sega.biz>. He is working in a small company which has the company name “Seongsu Gagong” and his father is the president of the company. The company was established in 1997 and registered in Seongdong” tax office in 1998. Its main business is processing or manufacturing related with shoe products. In actuality, Respondent’s family managed the business from the 1980’s but it was a home industry.
3. “Seongsu” and “Seongdong are the administrative district names in Seoul in South Korea, and “Gagong” is a Korean word which means processing or manufacturing. Thus “SEGA” is just a simplified character form of “SEongsu GAgong.”
4. Respondent has rights and a legitimate interest in the disputed domain name. This is because Respondent had a membership identification and password with his registrar (Hangang Systems), and his credit card number and personal information were opened at <.biz> domain registration periods. Thus, he became a domain registration applicant in his needed or favorite fields like others. Some of Respondent’s family and friends wanted to register domains for the purpose of their needs but some of them did not want to disclose the personal information, or were not familiar with computer use and the registration process. Thus, Respondent executed their needs or lent his identification and password. Accordingly, most of the domains registered in Respondent’s name have other real owners, each of whom has his needs and reasons.
5. Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, before notice of the dispute. Thus, creating the site <worldbench.hihome.com> evidences demonstrative preparation to use for a bona fide offering of goods or services. This site is being made and tested for three months for “Seongsu Gagong,” and will mainly offer leather products.
6. Respondent’s privacy is being invaded through the sale of his domain information by NeuLevel, Inc.
7. Respondent denies:
(a) that there are circumstances indicating that Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor for Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(b) that Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(c) that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
C. Additional Submissions
Complainant made a timely additional submission. Its contentions therein are as follows:
1. Respondent first attempts to defend his improper registration of the <sega.biz> domain name by asserting that his family’s leather business is named Seongsu Gagong and that he intends to use the <sega.biz> domain name for a company website. These assertions, even if true, offer no support for Respondent’s registration of the subject <sega.biz> domain name. The “Seongsu Gagong” designation affords no rights to the <sega.biz> domain name since on its face it is entirely different from the <sega.biz> domain name.
Moreover, the fact that SE and GA happen to be the first two letters of the two admittedly separate and unrelated words “Seongsu” and “Gagong” does not establish any rights in the well-known SEGA® mark and name, or any rights to the <sega.biz> domain name. There is no evidence – nor could there be – that anyone associates the words “Seongsu Gagong” with SEGA, or vice versa.
In making his argument, Respondent admits that his family’s company is not named SEGA. Respondent fails to offer any evidence or even to make any representations establishing that Respondent’s family’s company has ever been known as SEGA, or ever has used the term SEGA for a bona fide offering of goods or services.
Additionally, the website that Respondent claims he is developing for Seongsu Gagong (which is located at <worldbench.hihome.com> does not include the term SEGA, nor does it even display the “Seongsu Gagong” designation (except in the copyright notice at the bottom of the site).
2. Respondent engaged in a pattern of registering domain names to which he has no rights, and that he at the very least was a key contributor to the wrongful acts of others for whom the domain names allegedly were acquired. Such actions, in addition to the fact that he admittedly intends to use the <sega.biz> domain name for a commercial purpose and that he continued with the registration despite being fully aware of Sega’s established rights in its famous and distinctive SEGA® marks and name, demonstrate bad faith and compels the transfer of the domain name to Complainant Sega Corporation, its rightful owner.
3. The remaining contentions made by Respondent are irrelevant, i.e., invasion of privacy; that the other people in the world may have rights to the terms that are related to the subject name; and whether Complainant owns other domain names that include the SEGA® marks and 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.”
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.
STOP Policy ¶4(a)(i)
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.
Unlike domain name disputes brought under the UDRP, STOP claims require that the disputed domain name be identical to a trademark or service mark in which the Complainant holds rights. A domain name that is merely confusingly similar to a mark cannot be transferred through a STOP claim (although the holder of a non-identical but similar mark could bring a UDRP complaint when the domain name eventually clears any other pending STOP complaints). See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 3002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy 4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>).
Here, the evidence establishes conclusively that the Complainant has at least eleven registrations with the United States Patent and Trademark Office for the mark SEGA® which are identical to the domain name <sega.biz>, and the Panelist so finds and concludes.
STOP Policy ¶4(a)(ii)
STOP Policy ¶4(c) functions similarly to UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or legitimate interests in a domain name.
Under STOP policy ¶4(c), the Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
Respondent has submitted no evidence whatever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the Panelist finds and concludes that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent contends that he has made demonstrable preparations to use the subject domain name in connection with a bona fide offering of goods. He asserts his family’s leather business is named “Seongsu Gagong” and that he intends to use the <sega.biz> domain name for a company website.
The Panel has difficulty in finding Respondent’s assertion to be credible.
Moreover, that SE and GA happen to be the first letters of the two admittedly separate and unrelated words “Seongsu” and “Gagong” does not establish any rights in the well-known SEGA® mark and name, or any rights to the <sega.biz> domain name. There is no evidence that anyone associates the name “Seongsu Gagong” with SEGA.
In addition, Respondent has admitted that his family’s company is not named SEGA.
Lastly, the website that Respondent claims he is developing for Seongsu Gagong (which is located at <worldbench.hihome.com> does not include the term SEGA, nor does it display the “Seongsu Gagong” designation (except in the copyright notice at the bottom of the site).
Accordingly, the Panel finds and concludes that Respondent does not fall within ¶4(c)(ii). There have been no demonstrable preparations to use the subject domain name for a bona fide offering of goods.
Thus, Respondent does not have a legitimate interest or rights to the subject domain name.
STOP Policy ¶4(a)(iii)
STOP Policy ¶4(b) provides four non-exclusive examples of circumstances that, if proven, will satisfy the bad faith requirement of STOP Policy ¶4(a)(iii).
To establish bad faith under the STOP Policy, a Complainant need only prove either registration or use of the domain name in bad faith, not both as the UDRP requires.
STOP claims differ from UDRP claims in one very significant and fundamental way. Unlike the UDRP, under STOP when a registrant (Respondent) registers a domain name for which an IP Claim was previously filed, the registrant is notified of the potential for trademark infringement before being allowed to proceed with the registration. One Panel has recognized that registration of a domain name despite such notice in appropriate circumstances, could “almost preclude any possibility of registration in good faith of a domain name. . . .” Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding bad faith where Respondent registered the <genelogic.biz> domain name “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”).
In the Panel’s view, Complainant has gone much further and has established Respondent’s bad faith registration under STOP Policy ¶4(b)(ii).
Under UDRP ¶4(b)(ii), a Complainant may demonstrate Respondent’s bad faith by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark(s), provided Respondent has engaged in a pattern of such conduct. Under STOP Policy ¶4(b)(ii), the Complainant may similarly prove bad faith by showing the Respondent registered the domain name for the purpose of preventing Complainant from registering domain names reflecting its mark(s). However, under the STOP provision, there is no “pattern” of conduct requirement. Thus, Panels have found bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at issue and no prior history of trademark infringement was established. See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent’s knowledge of Complainant’s mark and Respondent’s lack of rights or interest in the mark).
But here, the Panel finds substantive evidence and, thus, concludes that Respondent has engaged in a pattern of conduct (even though a “pattern” is not required) for the purpose of preventing Complainant and others with registered trademarks from requesting domain names that reflect their marks. Indeed, the proof is that this is a classic case of cybersquatting with the almost conclusive presumption of the acquisition of domain names for sale.
Complainant has demonstrated that Respondent was awarded thirty <.biz> domain names, some of which are comprised of third parties’ registered trademarks, such as the <exxon.biz> domain name (which is comprised of Exxon Corporation’s registered mark EXXON) and the <disney.biz> domain name (which is comprised of Disney Enterprises, Inc.’s registered mark DISNEY). Respondent contends that he registered these names for family and friends. Nevertheless, he engaged in a pattern of registering domain names to which he had no rights, and he, at the very least, was a key contributor to the wrongful acts of others for whom the domain names allegedly were acquired.
Respondent has requested the Panel to investigate and to consider the alleged violation of his privacy rights by a registrar. The Panel does not have authority to consider such a charge, but, if authorized, he would conclude that Respondent’s privacy rights were not violated. Registration of domain names is a public matter, just as is the registration of trademarks.
Based on the above findings and conclusions, it is decided that the domain name <sega.biz> registered by Respondent jsy, shall be and the same is transferred to the Complainant Takemi Suzuki Sega Corporation.
JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: June 11, 2002
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