Cisco Technology Inc. v Netfuture

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Cisco Technology Inc. v. Netfuture

Claim Number: FA0204000110850

PARTIES

Complainant is Cisco Technology Inc., San Jose, CA, USA (“Complainant”) represented by Leslie C. McKnew, of Brobeck Phleger & Harrison. Respondent is Netfuture, Seoul, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cisco.biz>, registered with Gabia, Inc.

PANEL

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.

R. Glen Ayers served as Panelist.

PROCEDURAL HISTORY

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 was received and determined to be complete on May 28, 2002.

Complainant’s Additional Submission was timely received and determined to be complete on May 31, 2002.

On June 8, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant Cisco Technology, Inc., contends under “the Start Up Trademark Opposition Policy” (“STOP”), that Respondent Netfuture, a South Korean entity, has improperly registered <cisco.biz>. Under STOP, it asserts that the name, except for “.biz” is identical to trademarks which date back as far as 1984.

Cisco asserts that the Respondent has no rights in the name and offers evidence that it has never used the name, has no such rights from Complainant, and has made a practice of registering “.biz” domain names which are comprised of famous marks, such as LevisÔ and CasioÔ.

As to bad faith, Cisco asserts the registration of trademark names and Respondent’s receipt of notice of Cisco’s rights in the name. Cisco also asserts that Respondent certainly knew of its rights at the time it registered the domain name.

B. Respondent

Respondent does not dispute the identity of the trademark and the domain name.

Respondent states that it has been a reseller of Cisco products; the purpose of the domain “was to construct an online shopping mall exclusively selling” Cisco products.

Respondent asserts that it had no “bad faith” and had no intention of selling the domain name. It only wished to sell Cisco systems.

C. Additional Submissions

Cisco timely filed its “Additional Submission.” Cisco asserts that Respondent’s alleged sales of Cisco products in the past and alleged intent to sell those products in the future ignores the fact that it made no such sales efforts using the domain name prior to the filing of the Complaint. Cisco also asserts that the registration of the mark as a domain name remains improper, even if the Respondent had the intent to use the domain to market Cisco products. Cisco goes on to assert that the Response fails to dispute any of the controlling facts in the STOP Complaint.

FINDINGS

STOP requires three findings:

i. The domain name is identical to a trademark or service mark in which the Complainant has rights;

ii. The Respondent has no rights or legitimate interests in respect of the domain name;

iii. The domain name has been registered or is being used in bad faith.

Here, Complainant has established all three elements. First, Respondent does not dispute that its domain name and trademark “Cisco” are identical.

Cisco has also shown that Respondent has no rights in the name and Respondent has failed to rebut the prima facie case made by Cisco. Under STOP Policy ¶4(a)(ii) and ¶4(c), the Respondent has failed to demonstrate that it “is the owner or beneficiary of a trademark identical to the domain name.;” or, that it has used the domain name or made “demonstrable preparations for use” before notice of the dispute; or, that it has been commonly known by the domain name even if it has no trademark rights.

All Respondent says is that it was a distributor of Cisco products and intended to use the domain name to sell Cisco products. This sort of defense has been routinely rejected by Panels under both STOP and UDRP. See, e. g., Peachtree Software v. Scarponi,, FA 102781 (Nat. Arb. Forum Mar. 4, 2002).

Finally, Complainant Cisco’s pleadings are sufficient to show bad faith under STOP Policy ¶¶ 4(a)(iii) and 4(b). Although there is no evidence that Respondent has offered any name for sale, the registration of well-known marks by Respondent allows an inference of bad faith. See STOP Policy ¶4(b)(ii) and Peachtree Software, cited above.

DISCUSSION

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.

Complainant’s Rights in the Mark

Complainant has demonstrated rights in the mark; the domain name is identical, and Respondent does not dispute this issue.

Respondent’s Rights or Legitimate Interests

As Complainant has demonstrated that Respondent has no has rights or legitimate interests in the name; Respondent has failed completely to show that it has any rights in the name.

Registration or Use in Bad Faith

The name was certainly registered in bad faith. While there has been no apparent use of the name, the registration of this very famous name, a trademark with which the Respondent was clearly familiar prior to registration, along with the registration of other famous marks as “biz” domain names permits the Panel to find bad faith even if the Respondent has made no use of the marks and has made no attempt to market this or any other domain name based upon a famous mark.

DECISION

The domain name shall be transferred to Complainant; subsequent challenges under the STOP Policy against this domain name shall not be permitted.

R. Glen Ayers, Panelist

Dated: June 23, 2002