BEA Systems Inc. v. Park Sung Jo
Claim Number: FA0204000110843
Complainant is BEA Systems Inc., San Jose, CA, USA (“Complainant”) represented by Ronit M Alcheck, of Brobeck Phleger & Harrison. Respondent is Park Sung Jo, Seoul, SOUTH KOREA (“Respondent”).
The domain name at issue is <bea.biz>, registered with Netpia.
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.
Alan L. Limbury Esq., 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 April 25, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 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 by the Forum to be complete on May 13, 2002.
On 31 May 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury Esq. as the single Panelist.
The substance of the Response was as follows:
“I can not understand, read and write English correctly. And the language of the Registration Agreement was Korean.
STOP rule 10.2 , rule 11.1 and 11.2 said that:
In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
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, subject to the authority of the Provider or the Panel, as the case may be, to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
Please allow to change of language of the administrative proceeding from English to Korean.
On 3 June 2002 the Forum informed the Panel that the Forum, as the Provider, has chosen to proceed using English as the language for this administrative proceeding as provided for under STOP Rule 11, noting that all STOP Respondents have already conducted much of the registration process in English. The process included NeuLevel's English language notification of the IP Claim and specific instructions concerning proceeding with the application despite the existence of such a claim. Respondents had to affirmatively respond to this notification and request that the application proceed despite the presence of an IP Claim. These steps were conducted in English.
On 4 June 2002 the Panel gave the following direction:
“Pursuant to STOP Rule 11(a), the Forum has determined that the language of the proceeding shall be English. The Panel therefore rejects the Respondent's request that the language of the proceeding be changed from English to Korean. Under STOP Rules 10(a) and 10(b), the Panel is prepared to afford the Respondent a further 14 calendar days (until June 18, 2002) within which to file a Response in the English language. The time for the Panel's decision will be extended accordingly in due course.”
No Response in the English language was filed by 18 June 2002 or at all.
Transfer of the domain name from Respondent to Complainant.
Complainant is the registered proprietor in the United States, Korea and numerous other countries of the famous trademark BEA in connection with computer software, custom software development services and other related services. The disputed domain name, <bea.biz> is identical to that mark.
Respondent has no rights or legitimate interest in the disputed domain name because
· he does not operate any business, offer any goods or services or otherwise use the domain name in commerce;
· Complainant has not licensed Respondent to use its mark; and
· passive holding cannot demonstrate legitimacy.
The disputed domain name was registered in bad faith because
· it was registered long after Complainant established its rights in its BEA mark in the United States, Korea and elsewhere;
· Respondent has reserved at least 42 <.biz> domain names comprising the well-known names of cities and organizations, despite having no apparent rights to any of the marks identified in those domain names; and
· under the STOP Policy, Respondent received an email specifically informing him that Complainant had filed an Intellectual Property claim and providing him 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 “so that the .biz applicant could be under no illusions about the likelihood of a contest over the registration of the mark or who [sic] to contact if there were any question in his or her mind.” See Gene Logic, Inc. v. Cho Kyu Bock, FA 103042 (Mar. 4, 2002). This notice precludes any possibility of registration in good faith of the <bea.biz> domain name.
These facts compel the conclusion that Respondent registered the disputed domain name primarily to create an association with Complainant’s mark, to attract business from Complainant, to prevent Complainant from registering the disputed domain name and generally to disrupt Complainant’s business.
No substantive Response was filed.
Complainant is entitled to the relief which it seeks.
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 be filed only when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property claim form. Therefore, every STOP proceeding, properly brought, 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.
Failure to file a substantive response
The Panel draws two inferences where a Respondent has failed to submit a substantive Response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: see Reuters Ltd v. Global Net 2000, Inc. (WIPO D2000-0441). See also Hewlett-Packard Co. v. Full System (FA 94637); David G. Cook v. This Domain is For Sale (FA 94957) and Gorstew Jamaica v. Travel Concierge (FA 94925).
Here, Respondent must have received and responded to communications in English in order to register the disputed domain name. Although claiming not to understand, read or write English correctly, Respondent managed to do so perfectly well in the brief Response that was filed, confined as it was to a reasoned request for the proceeding to be conducted in English. The Respondent having failed to take advantage of the further opportunity extended to him by the Panel to file a substantive Response in the English language, and in the absence of any request on the part of Respondent for a further extension of time, the Panel finds that Respondent must be taken to have understood and to have conceded the correctness of Complainant’s assertions and the inferences to be drawn from them.
Complainant has exhibited copies of trademark registration details for its mark BEA. The Panel is satisfied on this score. The disputed domain name is identical to Complainant’s mark.
Respondent must be taken to have conceded Complainant’s assertions. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: see Do The Hustle, LLC v. Tropic Web (D2000-0624) and the cases there cited.
Since Respondent has made no such showing, the Panel finds that Complainant has established this element.
Respondent must be taken to have conceded Complainant’s assertions, in particular that Respondent had notice of Complainant’s Intellectual Property claim before he registered the disputed domain name and that Respondent registered the disputed domain name primarily to create an association with Complainant’s mark, to attract business from Complainant, to prevent Complainant from registering the disputed domain name and generally to disrupt Complainant’s business. On the material before the Panel, there is nothing inconsistent with Complainant’s assertions and the Panel accepts them.
Accordingly Complainant has established this element.
The Panel directs that the domain name <bea.biz> be transferred to Complainant and determines that subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Alan L. Limbury Esq., Panelist
Dated: 21 June 2002
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