National Aeronautics and Space Administration v. Ko Suk Ju
Claim Number: FA0204000110865
Complainant is National Aeronautics and Space Administration, Washington, DC, USA (“Complainant”) represented by John Mannix. Respondent is Ko Suk Ju, KyongsangNam Do, KOREA (“Respondent”).
The domain name at issue is <nasa.biz>, registered with Yesnic Co. Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin 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 30, 2002.
On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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.
On June 7, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single Panelist.
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.
1. Respondent’s <nasa.biz> domain name is identical to Complainant’s NASA mark.
2. Respondent has no rights or legitimate interests in the <nasa.biz> domain name.
3. Respondent registered the <nasa.biz> domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant’s NASA mark has been established by congressional statute and regulation, common law use and foreign trademark registration (e.g., Britain and Northern Ireland Reg. No. 2067457B issued April 10, 1996 and Italy Reg. No. 00794878 in 1997).
By an Act of Congress of the United States, the National Aeronautics and Space Administration (NASA) was established on July 29, 1958 (42 U.S.C. 2451). The words incorporated in the acronym are protected from misuse by any person in accordance with 42 U.S.C. 2459b, section 311 of the “National Aeronautics and Space Act of 1958.”
Respondent registered the contested domain name on March 27, 2002 and has yet to establish a purpose for the domain or develop an affiliated website.
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 used the NASA mark on various goods and services since 1958. NASA and the NASA insignia have been used, and continue to be used, on a number of materials, educational and functional. Complainant has established that it has rights in the NASA mark through congressional enactment, registration and subsequent continuous use since Complainant’s formation in 1958. Complainant need not register in the U.S. the federally protected mark for it to have rights in the NASA mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
Respondent’s <nasa.biz> domain name incorporates Complainant’s mark in its entirety. Therefore, Respondent’s domain name is identical to Complainant’s NASA mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s 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).
Complainant has established that it has common law rights in the disputed domain name because it has used the NASA mark extensively since its congressional formation in 1958. Complainant’s NASA mark is a prominent internationally recognized mark due to Complainant’s significant achievements, such as, International Space Station, Space Shuttle Discovery, Hubble Space Telescope, Mars Missions, Skylab, among others. Respondent has not come forward to proffer any evidence that it has rights in the NASA mark anywhere in the world. Complainant’s investigation and search of the U.S. Patent and Trademark Office’s online database revealed that Respondent has no applications or registrations on file for the NASA mark. Therefore, Respondent has no rights or legitimate interests in the <nasa.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).
Respondent has failed to make use of the contested domain name and has also failed to provide this Panel with any evidence establishing a valid course of business under the <nasa.biz> domain name. Therefore, Respondent’s registration of the <nasa.biz> domain name is not in connection with a bona fide offering of goods and services under STOP Policy ¶ 4(c)(ii). Failure to provide evidential confirmation as to the use of the disputed domain name leads to the inference that one does not exist. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant); see also Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Additionally, it can be inferred that Respondent’s planned use of a domain name identical to Complainant’s mark would be to divert Internet users interested in Complainant’s services to Respondent’s website; this also violates the STOP Policy. See 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, nor has Respondent come forward to establish that it is commonly known by the <nasa.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is only known to this Panel as Ko Suk Ju. Furthermore, one would be hard-pressed to find a person who could show rights or legitimate interests in a historical mark that has existed since 1958. The famous nature of Complainant’s mark prevents Respondent from claiming that it has been commonly known by an identical mark. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent had constructive notice of the NASA mark when it registered the domain name by virtue of the STOP registration procedure, foreign trademark registrations and international fame of the NASA mark. Therefore, it can be inferred that Respondent registered the domain name for the purpose of preventing Complainant from registering its NASA mark exhibiting bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also 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 interests in the mark). Respondent was aware that it was intentionally infringing upon Complainant’s mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Additionally, due to the aforementioned international fame associated with Complainant’s mark, Respondent was constructively aware of Complainant’s NASA mark and the opportunities available to those affiliated with it. The <nasa.biz> domain name is identical to Complainant’s NASA mark resulting in the likelihood that Internet users will believe that there is some affiliation between Respondent and Complainant; notwithstanding the fact that Respondent had no authorization to make use of Complainant’s mark. Registration of the <nasa.biz> domain name, despite its being identical, is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since Respondent will inevitably attract unsuspecting Internet users seeking Complainant’s website based on the goodwill associated with its famous mark. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Start-Up Trademark Opposition Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <nasa.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
Sandra Franklin, Panelist
Dated: June 18, 2002
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