KT Corp. v. Jeoung-woon Choi
Claim Number: FA0204000112422
Complainant is KT Corp., Seongnam, KOREA (“Complainant”) represented by Kijoong Kim, of Dong-suh International Law Office. Respondent is Jeoung-woon Choi, Incheon, KOREA (“Respondent”).
The domain name at issue is <hanmir.biz>, registered with Hangang Systems, Inc.
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 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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 July 16, 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.
The <hanmir.biz> domain name is identical to Complainant’s HANMIR mark.
Respondent has no rights or legitimate interests in the <hanmir.biz> domain name.
Respondent registered the <hanmir.biz> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns a registered trademark with the Korean Intellectual Property Office for the HANMIR mark. Complainant, formally known as Korea Telecommunication Corporation, started its business in 1981.
Complainant uses the HANMIR mark in connection with its Internet search website, which offers on-line shopping and on-line auction services. Complainant began using the HANMIR mark with its related services in September 1999.
Complainant has spent an extensive amount of time, effort and money in promoting the HANMIR mark and associated services. Complainant is one of the biggest information and communication corporations in Korea grossing 11.5 trillion won in 2001. Consequently, Complainant and the HANMIR mark are very well-known in Korea.
Respondent registered the <hanmir.biz> domain name on March 27, 2002 and has made no apparent use or development of the domain 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.”
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 established its rights to the HANMIR mark through registration with the Korean Intellectual Property Office and subsequent continuous use.
Respondent’s <hanmir.biz> domain name contains Complainant’s entire HANMIR mark with only the inconsequential addition of “.biz.” Hence, Respondent’s domain name is identical to Complainant’s mark.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such 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 Respondents’ 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’s investigation revealed that no entity owns a trademark identifying different designated goods similar to its HANMIR mark in Korea, which is where Respondent is located. Respondent does not refute Complainant’s assertions and failed to come forward with any evidence that affirmatively shows it holds rights in a trade or service mark that is identical to the <hanmir.biz> domain name. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
There is no evidence of demonstrable plans to use the <hanmir.biz> domain name by Respondent. Furthermore, Complainant’s HANMIR mark has gained a substantial amount of notoriety and fame in Korea. Thus, it can be inferred that any use of the domain name by Respondent would mislead Internet users as to an association with Complainant. See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum Mar. 21, 2002) (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also 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)”).
Due to the fame and notoriety that the HANMIR mark has achieved in Korea it is unlikely that Respondent, a Korean resident, could be commonly known by HANMIR or <hanmir.biz>, as required to overcome the burden of STOP Policy ¶ 4(c)(iii). Furthermore, there is no evidence on the record that satisfies the STOP Policy ¶ 4(c)(iii) burden in favor of Respondent. Therefore, Respondent has no rights or legitimate interests in the <hanmir.biz> domain name. See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark prevented Respondent from being commonly known by <grammy.biz>); see also 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Prior to registering the domain name Respondent was aware of Complainant’s business and rights in the HANMIR mark, given Complainant’s established reputation in Korea. Furthermore, Respondent had notice of Complainant’s rights given the unique nature of the STOP IP Claim procedure. Therefore, Respondent’s registration, despite knowledge of Complainant’s rights in the HANMIR mark, constitutes bad faith. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <hanmir.biz> domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
Sandra Franklin, Panelist
Dated: July 29, 2002
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