HBN-Teknik A/S v. Park Sung Jo
Claim Number: FA0204000110844
Complainant is HBN-Teknik A/S, Ringsted, Denmark (“Complainant”) represented by Steen Andersen. Respondent is Park Sung Jo, Seoul, Korea (“Respondent”).
The domain name at issue is <hbn.biz>, registered with Hangang Systems, Inc.
Tom Arnold was appointed sole Panelist in the captioned case, on about June 20, 2002.
The undersigned Tom Arnold certifies that he has acted independently and impartially and to the best of his or her 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 25, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 6, 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”).
A timely Response in the nature of a Motion that the proceedings be conducted in English, was received and determined to be complete on May 13, 2002.
That Motion was denied, but with a designation of a new time for Response on the merits of July 26, 2002. That Response was timely received.
On July 26, Complainant responded to the Response on the merits with a translation
into English of previously sent enclosures, and a comment about the unfairness of
Respondent’s allegation of “complainant is a domain name hijacker”. These materials which I received from Complainant July 26 are not relevant to the merits of this decision but I have read them.
5. FACTS, PARTIES’ CONTENTIONS
HBN-Teknik A/S was registered July 10, 1974, twenty-eight years ago, in the Danish Commercial Register under reg no. 64.644 when the company was formed. [But there is no allegation that HBN standing alone or HBN-Teknik was ever registered as a trade or service mark that identifies a specific and brand of product or service.]
Since July 10, l974, the name HBN and HBN-Teknik have actively been used as identification of the company and the company’s products. [Identification of the "company and the company products" as a generic group, is not a trade or service mark usage under the law.] Promotion sheets and advertisements were attached to the Complaint which are illustrative of the product line. [But they are mostly undated and shy on showing classic trade/service mark type usage vs. company promotion. I failed to find among the evidentiary papers submitted any service mark use of "HBN", i.e., a use where the service was a nameable, identifiable service identified by the brand "HBN".]
“HBN-Teknik is part of the BPW Group with a total turnover of approx. 450 mill USD…” [That allegation is ambiguous as to whether that is HBN total turnover or the total turnover of BPW. The total turnover of BPW is irrelevant. But I conclude that I can not accept that allegation as preponderance-of-the-evidence proof of turnover facts for HBN, namely that BPW has the approx. 450mill turnover. If Complainant should think of attempting to rely upon an unregistered mark in the form of a common law mark, the dollar value of promotion of the mark, the times/dates of such promotions, and the names of the product/service branded with the mark, the sales of those products/services, would all have been relevant and important, but there is no evidence on those points. This biases against a proper reliance upon common law marks and the Complainant’s IP rights which are registered.]
A domain name <hbn.dk> was registered on March 11, l997, now more than five years ago,
and since then has been used as the active, official website for HBN-Teknik. [Query, is a domain name registration a “trademark” or a “service mark” within the meaning of the STOP Policy/Rules? Since domain names commonly are descriptive or generic terms, it is clear that the mere fact of a domain name registration does not pass as being a ¶4(a)( i ) "trademark or service mark."]
More than 90% of the products manufactured by HBN-Teknik are sold in several major European countries. The typical customers are truck and trailer manufacturers, among which are Volvo, Iveco, Scania og Krone.
A major investigation of the Respondent’s visibility and existence did not lead to the conviction that the Respondent has undertaken steps to visualize and use HBN as a name, trademark, service mark, or in an other way carry out acts to identify himself with the name HBN. The Respondent also did not register other domain names containing the string HBN, as for instance <hbn.kr>.
Complainant graciously offered to answer any questions that I might have. I appreciate that of course. But the process does not provide for the neutral Panel to start a round of questions to one or both parties, wherein of course the second party would be wanting to respond to any new information or arguments provided by the first one to answer a question. In a process using only written communications, that kind of interchange is just not practical. Where the parties are responsible for creating a record and briefing the facts and issues, the streamlined nature of STOP and the UDRP prevents me from holding oral arguments or asking questions of the parties where I find the evidence is inadequate or deficient.
B. RESPONDENT’S CONTENTIONS
Respondent advises that he specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name.
Respondents points out that Complainant does not have a trademark or service mark for the domain name HBN, and Complainant’s company name. [We would all agree, I think, that
HBN-Teknik A/S is not identical to HBN standing alone.
The word HBN is a common abbreviation, and Respondent cites over half a dozen domain registrations using “hbn” accompanied by dot com, net, org, info, uk, au, hr.
Respondent does not know the company HBN-Teknik A/S.
Respondent has a business "Health Business Network", whose initials make up “HBN” and he registered “HBN” for that reason.
Complaint is a reverse domain name hijacker because he does not have trademark or service mark rights for HBN.
6. DISCUSSION AND FINDINGS
A. LMITATIONS ON THIS PROCESS
The UDRP and STOP rules define similar processes devoted to benign low cost and fast-tract time savings. Those benign features are at the sacrifice of some important procedures in aid of justice such as discovery, cross examination, oral hearings, and reply briefs which are commonly available in court dispute resolution processes. UDRP and STOP are clearly not intended to resolve all disputes relating to domain names.
In many if not most cases the parties inadvertently do not provide responsible evidence on some points which are of considerable interest to the Tribunal and yet the Tribunal must decide the case without knowledge of what to it are material facts. Those are a few of the reasons that this decision is not final, and a much more thorough (and costly) process for a re-determination of this decision is afforded in the courts if a party feels so inclined.
Let me observe another point applicable to a goodly percentage of ICANN cases. Given the narrowness of the STOP process, one party often has the burden of proof on some point as to which it has no knowledge of some fact possessed by the other party. Sometimes each party is in that position, or maybe neither. In either of those events, suppose the Complainant, instead of letting itself be controlled by anger whereby (s)he files a claim first expecting to talk later (which doesn't often happen), picks up the phone and calls the Respondent in a spirit of friendly collaborative inquiry, invites his adversary to see whether they can work out something on the phone that is better than what an arbitration or law suit could provide. --And also quicker and cheaper. They may want to get their lawyers into a little project of developing a list of questions, and getting them into a new phone call the next day, or something like that.
Then let them look first at the business realities. Suppose that by reason of one party being in auto parts and the other in health care, or one being in business in far east Asia and the other in Europe or South Africa, etc., there is near certainty that they will never be direct competitors. It is virtually certain they can find a compromise agreement that is better than fighting legal claims in court or other proceedings.
I've even talked folks into such deals as, “Mr. Complainant, you draft two proposed settlement agreements, one including a transfer of the domain name and one including no transfer of the domain name. Make them both as fair as you can. Then Mr. Respondent, you will be permitted to chose either or neither.” That process often begets a quick selection of one proposal that settles the dispute. When the parties are basically in good faith recognition of a conflict they did not maliciously generate, it always provides a revelation of the other guy's priorities by which constructive negotiation to find ways to accommodate them, usually follows.
If one is truly a bad faith cybersquatter, he is not likely to concede his motivations or a weakness in his case and is likely to tell sham stories, frustrating the chance of settlement. But so many cases involve only good faith business people who can resolve their problem better/quicker/cheaper by talking about it than by filing a claim, that everybody ought to give strongly favorable consideration to a preliminary phone call before filing a claim, particularly when as so often happens, a party has the burden of proof on a point it can't get evidence upon without discovery that the ICANN rules don't provide for.
In most cases this decision is controlled almost exclusively by STOP Policy ¶¶ 4(a)(i), (ii) and (iii). Section 4(a) makes it clear that the Complainant has the burden of proof of the recited three elements. Section 4(c) provides three ways for a Respondent to demonstrate its rights or legitimate interests in a domain name. These rules differ from the prior UDRP rules in what may often be unimportant details, but which are sometimes critical to a given case.
The vital 4(a) paragraphs of the STOP rules, reciting what Complainant must show, read as follows:
4(a) In order to obtain an order that a domain name be transferred, the Complainant must prove
( i ) The [Respondent’s] domain name is identical to a trademark or service mark
in which the Complainant has rights; AND
(ii) You [Respondent] have no rights or legitimate interests in respect of the
domain name; AND
(iii) The domain name has been registered or is being used in bad faith.
Note two of the changes in these STOP rules by comparison with UDRP Policy and Rules. In the paragraph ( i ) the requirement is solely "identity". The alternative of "or confusingly similar" has been deleted in the adaptation of the former UDRP rules to the STOP process. And in the last line, where the UDRP rules said “and” making it necessary for a Complainant to prove that both registration and use were in bad faith, the new STOP rules change the “and” to the “or” I have highlighted, making it necessary only that Complainant show one of those two facts.
B. Uncertainty about Complainant’s registration
The specific trade/service mark rights, if any, in the l974 registration of the Complainant company was not shown by the party with the burden of proof to have been registered explicitly as a “trademark” or “service mark” or brand name for nameable products or services, which is the point of the applicable rule. No trade/service mark rights appear to have been conveyed by that registration. Accordingly, I must conclude that the 1974 registration referred to by Complainant must be some sort of registration of the company and not a registration of the trademark or service mark HBN standing alone which passes the “identical” requirement discussed below. If it was rather a registration of a trade or service mark HBN-Teknic, that does not pass the “identical “ test discussed below. I conclude that there is no evidence that HBN alone was either registered or developed into a common law, unregistered mark identifying nameable products explicitly.
First I note that Complainant registered about five years ago a domain name <hbn.dk>. Note that 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” or "equivalent" to a legal mark (save for the suffix and “www” both of which I disregard) 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, 2002) (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>.
Query: Does this reconcile completely with Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001)(where the generic top-level domain (“gTLD”).biz was held irrelevant when determining whether a domain name and mark are identical, just as gTLDs such as “com” and “net” are disregarded in UDRP cases). I think not. I am persuaded that Princeton Linear is the better law on its point.
I next address is whether Complainant has (“owns”) the requisite “trademark” or “service mark”. Construction of this rule has established that a so-called common law trademark will suffice—the mark does not have to be a registered mark—but even so the language clearly does not read convincingly to cover prior domain names, company names or trade names in which an individual or corporation may do business, without that company name having be made into a registerable brand name.
I find that Complainant has not proved that it has or owns a registered trademark or service mark for either HBN or HBN-Teknic.
Also, I find that Complainant has proved that it does business as and under the trade name of HBN-Teknik. In a scattered pattern it may also use HBN as a sort of nick name for the company name and for all products made by the company, but I see no effort to develop that it is a common law trade/service mark. I think it is true that neither Denmark nor Korea use the concept of common law trade/service marks like so many of the English heritage countries do. But in English heritage countries, the general rule is that each unregistered common law trade mark (used as a brand-name in association with and identifying nameable tangible products) and each service mark (used as a brand name in association with and identifying particular nameable services, and indeed tied to specific nameable services as their brand name) require a style of use whereby the public develops a sense of the brand significance of the subject term. That brand significance is by trademark lawyers and court opinions often called a “secondary meaning” of the term which the public begins to become aware of after substantial public use of the subject term in clear association with a given product or service.
I have no evidence of the quantity of promotion of any unregistered trade or service mark, no indication of a pattern of established connection between the mark as used and the particular nameable product identified by a brand name, no indication of quantity of promotion of the mark or quantity of goods/serves sold under the mark. All that leaves a hole in the required evidence from Complainant if he tries to rely on unregistered trade/service marks, in that the rule that controls us does not read on the company or trade name not tied by the nature of its advertising or use on a nameable product or with services, to those nameable services as branded with the alleged mark.
Any aware and inquiring person must wonder if that differentiation is not false, because the company name used in advertising a service or a product differs from a trade mark or service mark used in similar advertising by the thinnest of logic margins. If common law trade marks are good enough, then why not trade names, including assumed names by which companies and individuals may do business?
I did not hear all of the arguments during the drafting of the STOP rules or the UDRP predecessor rules. I don’t know for absolute certain whether it was intentional or an oversight that “trade name” was not included along with trade marks and service marks. But the second enactment in STOP without change on this point where there was change of other points, makes the paragraph appear to be intentionally as it is now. Finally, it is not my privilege unnecessarily to legislate anew in this decision.
Recall my elsewhere observation as to why "domain name" is not included along with "trademark and service mark" in ¶4(a) ( i). But clearly it is not. Hence the previously registered domain name for "hbn" is not determinative.
The Complaint must be dismissed for lack ownership of adequate disclosure of marks used in the classic form of a trademark or a service mark for a particular nameable product or service, for common law recognition, and lack of statutory of the marks as marks by contrast with business names..
The next question is identity of the disputed domain name and the prior mark (assuming there is a “mark” via equivalence between the disputed domain name and some Intellectual Property right in Complainant. Many cases have established that the suffixes like “dot com”, “dot biz”, “dot uk”, are for the purposes of the “identity” requirement in UDRP not to be considered part of the mark or domain name. I both agree with the logic behind that precedent and think that precedent should be influential here. Recall I previously found insufficient evidence of the use of HBN alone as a trade or service mark, by contrast with as a nickname for a company. HBN was not connected to specific nameable products or services with sufficient clarity to constitute the usage or registration of a legal “mark”. So I measure this issue as HBN (the domain name) v. HBN-Teknik (the Complainant’s nearest thing to a mark by its usage, and conclude hardly “identical” in a Rule which was changed from its predecessor almost identical rule by the deletion of allowing either “identical” or “confusing similarity” to allowing only “identical”. “Similar” was excluded by amendment which we must accordingly give weight to.
If there had been no such legislative history, while not considering the suffix as relevant I would have found this decision much more difficult. But in light of that history I must find that Complainant has not made out its required case for “identity” of domain name and a legal mark, HBN-Teknik, though of course there would have been identify if the HBN alone had it been shown to have been registered or to have acquired the secondary, brand meaning which may support a common law trademark.
The second provision in 4(a) is
“(ii) You [Respondent] have no rights or legitimate interests
respect of the domain name; AND
Complainant did not carry any burden of proof on this point because it did not have discovery is the fast-track process we are in; I don’t know what it would have shown if it had had discovery, though apparently it would have known of Respondent’s business name and its initials.
A difficulty with rendering a decision on this issue is that Respondent’s evidence makes no reference to when it used its business name, in what form was it used before what audiences at what time, in what quantity, involved in what quantity of sales. But with his unrebutted total denial of knowledge of Complainant, it is hard for a bad faith registration or use by Respondent to be found, and I do not so find. This finding too supports a decision on behalf of Respondent.
Then the third thing a Complainant must prove, is that “the domain name has been registered or is being used in bad faith” by the Respondent.
I have no evidence of use of the domain name by Respondent at all, so I can’t find bad faith in the use.
As to registration, Respondent says that the reason he selected his HBN domain name is because of his business Health Business Network whose initials are HBN. He also says that he did not know of Complainant. Respondent’s not knowing of Complainant has some special credibility owing to the fact that the two businesses are in entirely different lines of commerce and half way around the world from each other. So Respondent seems not likely to have known of Complainant’s trade name, trade name initials, or alleged trademark or service mark; his allegation is credible.
With no discovery in the STOP process Complainant was of course unable to rebut that allegation, unable to prove whether it could have been so that Respondent’s choice of company name reported to us was really a sham to justify HBN, etc. so it must be found as a fact in this case. With no knowledge of Complainant or any marks owned by Complainant, I don’t see any likelihood that there could have been bad faith in the registration of the domain name.
Having found several reasons to decide with Respondent, I shall not address the relevance of the significant number of domain registrations which incorporate HBN.
Finally, the allegation by Respondent of reverse domain name hijacking by Complainant. We all tend to look at our cases through our own confidence in what we know and can speculate from what we know. If I had not known any of what Respondent presented, and had speculated without knowledge of his business or its initials, I would have felt justified in filing a claim and letting the chips fall where they may. The difference between business names and nicknames used in promoting a business, and a trademark or service mark is a nice one that I suggest over half of the lawyers in the industrialized nations of the world, including over half of the lawyers in the United States, don’t know about and would give little credence to even if it had at one time been explained. Thus I conclude that from the Complainant’s point of view, there was no bad faith in the bringing of this claim.
I have among others, made findings such as
- that trade names of Companies or individuals (as distinguished from trade marks
and service marks which have been so used as brand names, as to have
become recognized by the public as brand names for a particular nameable
product or service) are not within the very limited scope of the STOP
- that Complainant has failed to carry its burden of proof that it owns/owned
a trade or service mark,
-and failed to carry its burden of proof that any mark it may have owned
is identical to the <hbn.biz> (or hbn.biz) domain name in dispute,
-and that Respondent had no rights or legitimate interests in respect of the
domain name <hbn.biz> or <hbn.biz>,
-and that the domain name <hbn.biz> was not proved to be either registered
or used in bad faith.
I direct that Complainant’s Complaint be dismissed and that Complainant take nothing.
And I direct that Complainant has not been proved to be a reverse domain name hijacker,
whereby that claim, if it should be deemed to have been properly made, is also dismissed. Further challenges shall be permitted.
Tom Arnold, Sole Panelist
August 11, 2002
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